Ford Motor Company v. David Cox
Claim Number: FA1203001437143
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is David Cox (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newfordvans.com>, registered with Tucows, 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 29, 2012.
On March 29, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <newfordvans.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@newfordvans.com. Also on March 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 19, 2012.
On April 24, 2012, Complainant filed an Additional Submission in compliance with Supplemental Rule 7.
On April 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges:
· Complainant is the holder of the FORD mark, which it began using in 1903.
· Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its FORD mark (e.g., Reg. No. 1,574,366 registered January 2, 1990).
· Complainant holds multiple trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 459,576 registered June 9, 1925).
· Respondent’s <newfordvans.com> domain name is confusingly similar to Complainant’s FORD mark.
· The disputed domain name resolves to a website containing images and advertisements for Complainant’s vehicles and the vehicles of Complainant’s competitors.
· Respondent is not commonly known by the <newfordvans.com> domain name.
· Respondent holds multiple domain names that contain the trademarks of third parties.
· Respondent uses the <newfordvans.com> domain name to intentionally attract Internet users to the website by creating confusion as to Complainant’s association with the disputed domain name in order to take advantage of Internet users searching for Complainant on the Internet.
· Respondent had actual and constructive knowledge of Complainant’s FORD mark.
B. Respondent
Respondent alleges:
· Respondent uses the <newfordvans.com> domain name in association with a group of Complainant’s dealerships in the United Kingdom.
· Respondent refers five to ten orders a month to Complainant’s dealerships and receives a commission from the dealerships.
· Respondent does not attempt to create confusion as to Complainant’s association and the website states that all vehicles are invoiced and delivered by Complainant’s dealer.
· Respondent always tells Internet users that it represents Complainant’s dealers and markets vehicles on their behalf.
· Respondent has never received a complaint.
· Respondent must use the FORD mark in the <newfordvans.com> domain name and on the website in order to accurately reflect the advertised vehicles.
Respondent failed to submit a Response compliant to the Rules and Supplemental Rules in this proceeding.
C. Additional Submissions
Complainant filed an Additional Submission in which it provided more information about previous communications with the Respondent. Complainant alleges that UK Ford dealers have no authority to grant anyone else rights to use Ford trademarks and that Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services. Finally, Respondent argues that it is of no consequence whether or not Respondent is turning a significant profit from the disputed domain name.
Complainant, Ford Motor Company, is a Delaware corporation, active in the automobile industry. The Complainant is the holder of various trademarks consisting of or containing the FORD sign, which it uses in relation to its activities in the automobile industry. These trademarks include the FORD trademark registered with the USPTO under Reg. No. 1,574,366 on January 2, 1990 and the FORD trademark registered with the UKIPO under Reg. No. 459,576 on June 9, 1925.
Respondent registered the disputed domain name, <newfordvans.com> with Tucows on March 25, 2007. The disputed domain name refers to a webpage on which the FORD trademarks are shown, as well as images of Ford vans and vans of the Complainant’s competitors, that Respondent appears to be offering for sale.
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.
Complainant claims that it established rights in its FORD mark under Policy ¶ 4(a)(i). Prior panels have allowed complainants to establish rights in a mark by providing evidence of a trademark registration with the USPTO or the UKIPO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Complainant provides the Panel with a list of its trademark registrations for its FORD mark throughout the world, including with the USPTO (e.g., Reg. No. 1,574,366 registered January 2, 1990) and the UKIPO (e.g., Reg. No. 459,576 registered June 9, 1925). Therefore, the Panel finds that Complainant holds rights in its FORD mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <newfordvans.com> domain name is confusingly similar to Complainant’s FORD mark. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Prior panels have determined that the addition of generic or descriptive terms and a generic top-level domain (“gTLD”) fails to adequately distinguish a disputed domain name from a complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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 Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Complainant argues that the <newfordvans.com> domain name contains Complainant’s entire FORD mark and combines the mark with the generic term “new,” the descriptive term “vans,” and the gTLD “.com.” Based on UDRP precedent, the Panel is of the opinion that Respondent’s <newfordvans.com> domain name is confusingly similar to Complainant’s FORD mark pursuant to Policy ¶ 4(a)(i).
According to the Panel, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <newfordvans.com> domain name. Past panels have determined that a respondent is not commonly known by a disputed domain name if the WHOIS information and the other evidence in the record do not support such a finding. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the 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 the respondent was commonly known by the disputed domain name). The WHOIS information in this case identifies “David Cox” as the registrant of the <newfordvans.com> domain name. Complainant argues that “David Cox” is not commonly known by the disputed domain name and actually operates under the “Save Money On Vans, Ltd.” name. Based on the WHOIS information and the evidence in the record, the Panel finds that Respondent is not commonly known by the <newfordvans.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent did not contend otherwise.
Complainant avers that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Prior panels have held that the advertising of a complainant’s products and the products of the complainant’s competitors at a domain name using a complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). Complainant contends that Respondent uses the <newfordvans.com> domain name to display images and information advertising Complainant’s vehicles and the vehicles of Complainant’s competitors, such as “CITROEN,” “NISSAN,” and “VAUXHALL.” The file supports such a finding. Therefore, the Panel may hold that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <newfordvans.com> domain name.
Complainant contends that Respondent registered and uses the <newfordvans.com> domain name in bad faith as a part of a pattern of bad faith registration and use. Some panels have determined that the registration of domain names containing the marks of third-parties that are not a part of the current UDRP proceeding can provide evidence that the respondent registered and uses the disputed domain name in a pattern of bad faith. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). Complainant provides the panels with a list of domain names that Respondent registered: <newvauxhallvans.co.uk>, <newtoyotavans.com>, <newfiatvans.com>, <newmercedesvans.com>, <newrenaultvans.com>, <newcitroenvans.com>, and <newivecovans.com>. According to the Panel, and although these cases have not been evaluated by a UDRP panel, this serves as a clear indication that Respondent registered and uses the <newfordvans.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <newfordvans.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to intentionally attract Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name. Past panels have concluded that the provision of advertisements for a complainant’s products and the products of the complainant’s competitors is evidence of Policy ¶ 4(b)(iv) when the respondent is compensated for those advertisements. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Complainant argues that Respondent uses the <newfordvans.com> domain name to provide information and images advertising Complainant’s vehicles and the vehicles of Complainant’s competitors. Complainant claims that Respondent commercially benefits from these advertisements. This is confirmed by Respondent, who admits receiving a commission. Furthermore, it is of no relevance whether or not Respondent is making significant profits, according to the Panel. Therefore, the Panel concludes that Respondent registered and uses the <newfordvans.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's FORD mark, it is inconceivable that Respondent could have registered the <newfordvans.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Furthermore, the activities from Respondent and the fact that the domain name includes the name of a product for which the FORD mark is known show that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel finds that this is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Flip Petillion, Panelist
Dated: May 10, 2012
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