national arbitration forum

 

DECISION

 

Ford Motor Company v. David Marvasti

Claim Number: FA1203001432719

 

PARTIES

Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein,  of Brooks Kushman P.C., Michigan, USA.  Respondent is David Marvasti (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fordsocial.com>, registered with Dotster.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.

 

On March 2, 2012, Dotster confirmed by e-mail to the National Arbitration Forum that the <fordsocial.com> domain name is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 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@fordsocial.com.  Also on March 5, 2012, 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.

 

A timely Response was received and determined to be complete on March 26, 2012.

 

Complainant submitted an Additional Submission on April 2, 2012, that was deemed to be in compliance with Supplemental Rule 7.

 

On April 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Ford Motor Company has been selling automobiles as early as 1903, and has sold cars and many other goods and services under the FORD trademark since that time.  Complainant owns a large number of U.S. and foreign trademark registrations for FORD, FORD in script, FORD in script in Oval, and variations thereof.  See Complaint, Exhibits 2 and 3.  The first such registration for the FORD mark was issued in 1909. In 2010 and 2011, Interbrand rated the FORD mark as number 50 on the list of the Top 100 Best Global Brands.   Complainant also owns the domain name ford.com, which it registered on August 31, 1988.

 

Complainant asserts that the disputed domain name, <fordsocial.com>, fully incorporates the FORD mark and is confusingly similar thereto.  It maintains that the addition of the generic term “social” does not distinguish the disputed domain name from Complainant’s mark enough to avoid a finding of confusing similarity. At no time, Complainant indicates, has it authorized Respondent to use or register the domain name.

 

Complainant further maintains that Respondent does not have rights or legitimate interests in the domain name.  Complainant notes that the disputed domain name was not registered until August 9, 2010 (see Complaint, Exhibit 1) and that such domain name resolves to an inactive site.  Respondent’s use of a confusingly similar domain name in connection with an inactive website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, Complainant asserts.  There also is no evidence that Respondent, David Marvasti, is commonly known by the disputed domain name.

 

Complainant notes that Respondent lists the disputed domain name for sale at <DomainTools.com> and <Sedo.com> for $3,000 (see Complaint, Exhibit 6) and indicates that “[i]t is a well-established principle that a respondent offering to sell a domain name can undermine a claim of legitimate interest.”

 

With respect to the issue of bad faith registration and use, Complainant points out that Respondent has engaged in a bad faith pattern of registering domain names that contain other marks.  Complainant advances evidence in Exhibit 7 to its Complaint establishing that Respondent has registered a large number of domain names incorporating the marks of other companies, including TOYOTA, VOLVO, HUMMER, PEPSI, CORONA, and NOKIA, followed by the term “social.”

 

Complainant contends that, given the worldwide fame of the FORD trademark, it is reasonable to expect that Respondent was aware of the Complainant’s marks at the time he registered the disputed domain name.  This creates a legal presumption of bad faith, Complainant asserts.

 

Respondent’s passive holding of the domain name also constitutes evidence of bad faith, Complainant argues.

B. Respondent

In his Response, Respondent asserts that he never acted in bad faith in registering the <fordsocial.com> domain name.  His intention was to build an online community for enthusiasts of FORD cars where members could exchange photos, post messages, and perform various types of online social activities.

 

Respondent contends that he has not profited from the domain name and, indeed, has lost money due to the cost of registration fees, “which is why I placed all my domain names on Sedo.com with the hope that I could recover money lost on registration fees.”

 

While asserting that the claims he acted in bad faith are “unfounded,” Respondent, “in accordance with my history of good faith practices regarding the Fordsocial.com domain,” indicates he “will transfer the domain to Ford Motor Company.”

 

C. Additional Submissions

In its Additional Submission, Complainant maintains that regardless of Respondent’s unsupported allegation regarding his intention in registering the disputed domain name, there is no evidence of any bona fide offering of goods or services.  Listing the domain name for sale does not constitute a bona fide offering of goods or services, Complainant indicates.  In addition, “[w]hether or not Respondent has yet to profit from the Domain Name is of no consequence where Respondent has a clear intent to profit from the sale of the Domain Name.”

 

FINDINGS

In view of Respondent’s agreement to transfer the domain name to Ford Motor Company, the Panel finds that it is not necessary to undertake the traditional UDRP analysis and concludes that the disputed domain name should be transferred to Complainant.

DISCUSSION

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."

 

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.

 

As noted above, Respondent, in his Response, agreed to transfer the disputed domain name to Complainant.  In view thereof, the Panel concludes it is not necessary to enter separate findings and conclusions under Paragraph 4(a) of the Policy.[1]  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

In view of the above, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fordsocial.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panelist

Dated:  April 12, 2012

 



[1] Had the Panel been required to enter such findings and conclusions, it would have concluded that Complainant had met its burden of proof on each of the three elements.

 

 

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