Ken Wilson Ford, Inc. v. J. Luke Anthony
Claim Number: FA0909001284916
Complainant is Ken Wilson Ford, Inc. (“Complainant”), represented by David
M. Carter, of Carter, Schnedler & Warnock, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kenwilsonford.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 21, 2009.
On September 17, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kenwilsonford.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2009 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@kenwilsonford.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 <kenwilsonford.com> domain name is identical to Complainant’s KEN WILSON FORD mark.
2. Respondent does not have any rights or legitimate interests in the <kenwilsonford.com> domain name.
3. Respondent registered and used the <kenwilsonford.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ken Wilson Ford, Inc., is an authorized Ford Motor Company dealer. Complainant has used the KEN WILSON FORD mark in association with the sale of Ford automobiles since 1980. Complainant produces evidence that Complainant’s business has produced sales in excess of one billion dollars since 1980, and spent ten million dollars in advertising the KEN WILSON FORD mark to the public.
Respondent registered the <kenwilsonford.com> domain name on January 4, 1999. Respondent’s disputed domain name resolves to Respondent’s commercial website offering automobile sales in direct competition with Complainant.
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 does not have a trademark registration for the KEN WILSON FORD mark with the United States Patent and Trademark Office (“USPTO”). However, trademark registration is unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts it has common law rights in its KEN WILSON FORD mark through its continuous use in commerce since 1980 and subsequent secondary meaning it has acquired through its use. Complainant produces evidence that Complainant’s business has produced sales in excess of one billion dollars since 1980, and spent ten million dollars in advertising the KEN WILSON FORD mark to the public. The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the KEN WILSON FORD mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1980. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant argues that Respondent’s <kenwilsonford.com> domain name is identical to
Complainant’s KEN WILSON FORD mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, omits spacing, and add the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the omission of spacing between the terms and the addition of
a gTLD are irrelevant in distinguishing a disputed domain name from an
established mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO
Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical
to the complainant’s mark); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the <kenwilsonford.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the
arguments made in the Complaint, the Panel finds that Complainant has
established a prima facie case in
support of its contentions. See SEMCO Prods.,
LLC v. dmg world media (
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <kenwilsonford.com>
domain name, in that the registrant is listed as “J. Luke Anthony.” Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also
Respondent’s disputed domain name
was registered on January 4, 1999 and resolves to Respondent’s commercial
website offering automobile sales in direct competition with Complainant. The Panel finds that Respondent’s use of the
disputed domain name is neither a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s]
SAFLOK mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <kenwilsonford.com> domain name to operate a website offering automobile sales in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the confusingly similar <kenwilsonford.com> domain name in order to intentionally attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s KEN WILSON FORD mark and in order to profit by offering automobile sales in direct competition with Complainant is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that ¶ 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 <kenwilsonford.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 30, 2009
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