Ford Motor Company v. Texas International Property Associates
Claim Number: FA1009001347379
Complainant is Ford Motor Company ("Complainant"), represented by Amy C. Leshan of Brooks Kushman P.C., Michigan, USA. Respondent is Texas International Property Associates ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powerstrokedeisel.com>, registered with Compana, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 20, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <powerstrokedeisel.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@powerstrokedeisel.com. Also on September 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant owns the exclusive rights to its POWER STROKE mark and uses it in connection with the manufacture, marketing, and distribution of its POWER STROKE diesel engines.
Complainant operates the website <powerstrokediesel.com>.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its POWER STROKE mark (including Reg. No. 2,075,967, issued July 1, 1997).
Respondent is not authorized to use the POWER STROKE mark.
Respondent registered the <powerstrokedeisel.com> domain name on January 30, 2005.
The disputed domain name resolves to a website which offers a search engine and links to third-party websites, including those of Complainant’s business competitors.
Respondent receives click-through or similar fees derived from the visits of Internet users to those websites.
Respondent’s <powerstrokedeisel.com> domain name is confusingly similar to Complainant’s POWER STROKE mark.
Respondent does not have any rights or legitimate interests in the domain name <powerstrokedeisel.com>.
Respondent registered and uses the <powerstrokedeisel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registrations with a national trademark authority are sufficient to establish its rights in the POWER STROKE mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations). Complainant holds numerous trademark registrations with the USPTO for its POWER STROKE mark (e.g., Reg. No. 2,075,967 issued July 1, 1997).
Respondent’s <powerstrokedeisel.com> domain name is confusingly similar to Complainant’s POWER STROKE trademark. The disputed domain name contains Complainant’s entire mark, removes the space between the two words, adds the misspelled, but descriptive, term “deisel” (which is also included in Complainant’s official website), and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the removal of a space from a complainant’s mark and the addition of a descriptive term and a gTLD render the disputed domain name confusingly similar to the famous mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <powerstrokedeisel.com> domain name is confusingly similar to Complainant’s POWER TRAIN mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <powerstrokedeisel.com> domain name. Once a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case under this head of the Policy. And, owing to Respondent’s failure to respond to the Complaint filed herein, we may properly infer that Respondent does not have rights to or legitimate interests in the contested <powerstrokedeisel.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to the allegations in a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, ands Respondent does not deny, that Respondent is not authorized to use the POWER STROKE mark. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Texas International Property Associates,” which does not resemble the contested domain name. There is no other evidence in the record to indicate that Respondent is commonly known by the <powerstrokedeisel.com> domain name. Accordingly, Respondent has not shown that it is commonly known by the disputed domain name so as to have established rights to or legitimate interests in 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 a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s assertion that Respondent uses the <powerstrokedeisel.com> domain name to redirect Internet users seeking Complainant’s website to Respondent’s website, which features a search engine and links that resolve to the websites of businesses competing with Complainant. This diversion, which from the circumstances we may comfortably presume results in the receipt of click-through fees by Respondent, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non commercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use of a contested domain name 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), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to websites that may be of interest to a complainant’s customers, presumably receiving “click-through fees” in the process).
Respondent’s registration of the <powerstrokedeisel.com> domain name is also evidence of typo-squatting because, in forming the contested domain name, Respondent evidently takes advantage of a common misspelling of Complainant’s mark. Typo-squatting permits us to infer that said respondent lacks rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s <wwwdinersclub.com> domain name, a typo-squatted version of a complainant’s DINERS CLUB mark, was evidence that that respondent lacked rights to or legitimate interests in the disputed domain name); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is a serial cyber-squatter by virtue of its previous pattern of the registration and use of domain names which are confusingly similar to famous marks. See Piolin Productions, Inc. v Texas International Property Associates – NA NA, FA 1306690 (Nat. Arb. Forum Mar. 31, 2010); see also AccountNow, Inc. v Texas International Property Associates - NA NA, FA 1307538 (Nat. Arb. Forum Mar. 19, 2010). Respondent’s pattern of registration and misuse of disputed domain names constitutes evidence of bad faith registration and use of the instant domain name pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) where a respondent previously registered domain names incorporating well-known third party trademarks); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of complainants).
Respondent uses the disputed domain name to misdirect Internet users who are seeking Complainant’s official website to Respondent’s own website, which displays links to the websites of Complainant’s business competitors. Such use is disruptive of Complainant’s business and is evidence that it has registered and uses the contested domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the websites of a complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent attempts to gain commercially by creating confusion with the <powerstrokedeisel.com> domain name that is confusingly similar to Complainant’s POWER STROKE mark and Complainant’s <powerstrokediesel.com> website. Internet users are likely to be misled as to the possibility of a relationship between Complainant and the disputed domain name. Respondent likely profits from this confusion when Internet users click through the links displayed at the disputed domain name. Respondent’s attempt to gain by its creation of such confusion is in bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002):
By use of …[the contested domain name]… to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).
See also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally under this head of the Policy, Respondent takes advantage of the confusion created among Internet users who likely reach Respondent’s website after misspelling or mistyping Complainant’s official <powerstrokediesel.com.> website, which incorporates its famous POWER STROKE mark. This typo-squatting use is in bad faith pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):
By engaging in typosquatting, [r]espondent has registered and used the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
See also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <powerstrokedeisel.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 3, 2010
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