Ford Motor Company v. Site Control2
Claim Number: FA0811001234522
Complainant is Ford Motor Company (“Complainant”), represented by Andrew
N. Downer, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <powerstroke.com>, registered with Dotregistrar.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@powerstroke.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <powerstroke.com> domain name is identical to Complainant’s POWER STROKE mark.
2. Respondent does not have any rights or legitimate interests in the <powerstroke.com> domain name.
3. Respondent registered and used the <powerstroke.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ford Motor Company, founded in 1903, has manufactured cars and trucks for sale throughout the world. Complainant entered into a partnership with Navistar, Inc. in 1982 for the production of diesel engines, which were redesigned and branded under the POWER STROKE name in 1994. Complainant has continuously used this mark for such engines since this time, and has registered the POWER STROKE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,075,967 issued July 1, 1997; and Reg. No. 2,943,718 issued April 26, 2005).
Respondent registered the disputed <powerstroke.com> domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has successfully asserted its rights in the
POWER STROKE mark through registration of the mark with the USPTO under Policy
¶ 4(a)(i).
Respondent’s disputed <powerstroke.com>
domain name contains Complainant’s POWER STROKE mark, though it differs from
the mark in two ways: (1) the space between the words has been removed; and (2)
the generic top-level domain “.com” has been added. The Panel finds that neither alteration is
meaningful under the Policy, and that therefore the disputed domain name is
identical to the mark under Policy ¶ 4(a)(i).
See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding
<vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA
904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s
<abt.com> domain name is
identical to Complainant’s ABT mark since addition of a generic top-level
domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed
domain name. Based upon the allegations
made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶
4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the
Complaint, the Panel may presume that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
However, the Panel in its discretion chooses to examine the record to
determine whether Respondent has any rights or legitimate interests
pursuant to the factors outlined in Policy ¶ 4(c). See
AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interest in the subject domain names.”);
see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see
also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
The WHOIS information lists Respondent as “Site
Control2.” Moreover, Complainant
specifically alleges that it has not provided Respondent with a license or
other authorization to use Complainant’s mark in a domain name or in any
fashion. Therefore, without evidence to
the contrary, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests
in a disputed domain name where there is no evidence in the record indicating
that the respondent is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Complainant asserts that Respondent’s disputed domain name
resolves to a website that displays links for Complainant and Complainant’s
competitors. The Panel presumes that
Respondent receives click-through referral fees for displaying these
advertisements. The Panel aligns itself
with previous precedent which holds that such a use fails as a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert
Internet users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v. Albloushi, FA
888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention
of rights and legitimate interests in the <bravoclub.com> domain name
because the respondent was merely using the domain name to operate a website
containing links to various competing commercial websites, which the panel did
not find to be a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that promotes Complainant’s direct competitors though click-through advertising. The Panel infers that Respondent primarily intended to disrupt Complainant’s business to obtain referral fees based on such advertisements, which is evidence that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent intentionally created a
likelihood of confusion as to Complainant’s affiliation or endorsement of the
disputed domain name and the corresponding website in order to garner commercial
benefit via referral fees. Therefore,
the Panel finds that Respondent engaged in bad faith registration and use under
Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also Univ. of
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <powerstroke.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 26, 2008
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