Ford Motor Company v. Greg Lane
Claim Number: FA1210001467377
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Greg Lane (“Respondent”), represented by Anthony S Arena of Arena Law Firm, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powerstrokerepairtampa.com>, registered with Tucows, Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2012; the National Arbitration Forum received payment on October 15, 2012.
On October 16, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <powerstrokerepairtampa.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 October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@powerstrokerepairtampa.com. Also on October 17, 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 November 16, 2012.
Complainant submitted an Additional Submission that was received, and determined to be timely, on November 21, 2012. The Panel shall consider that Additional Submission in rendering the decision as set forth below.
On November 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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, an American company that manufactures and sells automobiles and trucks, introduced into the market a new diesel-powered engine, which Complainant called the “Power Stroke” engine in 1994. Complainant poured significant money and energy into advertising and marketing that engine, such that it became an extremely well-known and respected product among truck-buying consumers.
- Complainant is the owner of the POWER STROKE mark and owns multiple trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”). Also, Complainant registered the domain name <powerstrokediesel.com>, at which it maintains a website.
- The disputed domain name, <powerstrokerepairtampa.com>, is confusingly similar to Complainant’s POWER STROKE trademark. The disputed domain name fully incorporates the mark. The additions of the generic term “repair” and the geographic term “Tampa,” do not provide meaningful distinction from Complainant’s trademark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, and Complainant has not authorized Respondent to use or register the disputed domain name.
- Respondent’s disputed domain name redirects internet users to Respondent’s website that includes text related to Complainant’s POWER STROKE diesel engines, an image of a FORD truck prominently displaying the FORD trademark image, and a copy of the FORD POWER STROKE DIESEL logo. Such use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
- Respondent’s actions trade on the goodwill of the POWER STROKE trademark and divert Complainant’s customers for financial gain.
- Respondent is not commonly known by the disputed domain name, but rather as Greg Lane. Additionally, the resolving website states, “Welcome to Greg Lane Automotive,” and the Florida Department of State Division of Corporations has a record for “Greg Lane’s Automotive/RV, Inc.” at the same address posted on the website.
- The disputed domain name was registered and is being used in bad faith. Given the nature of Respondent’s business directed to offering repair services of FORD products, Respondent’s unauthorized use of Complainant’s mark in the disputed domain name is intended to attract users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
- Respondent has used the disputed domain name with the intent to trade on the reputation and goodwill that Complainant has earned in its POWER STROKE mark and products and to enhance the commercial value of Respondent’s own services.
- Respondent’s mere registration of the disputed domain name is evidence of bad faith, as Respondent’s knowledge of Complainant’s trademark rights is demonstrated by the inclusion of the mark and images of Complainant’s products at Respondent’s website.
- Respondent failed to respond to any of Complainant’s letters or email messages that requested Respondent to transfer the disputed domain name to Complainant.
B. Respondent
- Respondent does not challenge that Complainant has rights to its mark.
- Respondent instead claims a nominative fair use of the POWER STROKE mark, which is necessary to describe the type of engine Respondent repairs.
- The addition of the words “repair” and “Tampa” are descriptive in that they indicate and are consistent with the fact that Respondent offers repair services for POWER STROKE diesel engines in Tampa, Florida.
- Respondent provides a service of repairing POWER STROKE engines and there is no effective way to advertise this service without using the POWER STROKE mark to refer to the specific type of engine he repairs.
- Respondent’s use of Complainant’s mark is a fair use, not an infringing use.
- Respondent worked for Complainant’s dealerships as a technician repairing FORD engines for approximately 17 years and earned the distinction of being a three-time FORD certified Master Technician. Respondent has repaired POWER STROKE engines since the mid-1990s.
- Respondent operates a full service motor vehicle repair facility that has been in existence and operation since April 19, 2001. Respondent has an absolute right to repair POWER STROKE engines and a legitimate interest and right to advertise that he can repair POWER STROKE engines.
- The POWER STROKE engines are complicated and, while Respondent is an expert at their repair, not many repair shops, beyond those owned by Complainant’s dealerships, can repair such engines. Conversely, Respondent is not an expert at repairing some other diesel engines, and, if he advertises without reference to the POWER STROKE engine, customers are misled into believing that Respondent is such an expert.
- In selecting the disputed domain name, Respondent used great care to make the name descriptive so that a consumer reading that name would realize the website is offering repair services for the POWER STROKE engine.
- It is clear that Respondent is not trying to hold itself out as the owner of the POWER STROKE mark. Indeed, Respondent’s website points out that he charges lower prices than Complainant’s dealerships and that customers should prefer his lower-priced services over those offered by said dealerships, thereby differentiating himself from Complainant.
- Respondent did not acquire the disputed domain name for the purpose of selling or transferring the domain name to Complainant.
- There is no evidence that Respondent was or is intending to do anything with the disputed domain name other than describe his services and promote his business. To that end, Respondent’s website states that Respondent’s company is a full service repair center that can service most makes and models.
C. Complainant’s Additional Submission
- Complainant has demonstrated its trademark rights in the POWER STROKE mark., and Respondent has conceded that the disputed domain name wholly incorporates the POWER STROKE trademark.
- Complainant’s and Respondent’s services are competitive, and Respondent concedes as much in the Response. Complainant provides POWER STROKE engines and repair services through its authorized dealerships; and Respondent provides repair services for POWER STROKE engines and “most makes and models” of vehicles.
- In arguing nominative fair use, Respondent referred to the New Kids case, but this case did not involve a disputed domain name. Nevertheless, Respondent cannot satisfy the elements necessary to establish the nominative fair use defense because Respondent used Complainant’s mark in the disputed domain name to describe Respondent’s own service, rather than Complainant’s engines.
- Respondent’s use of Complainant’s mark in the disputed domain name, coupled with its other uses of the mark on the website, goes beyond using the mark “as is reasonably necessary to identify” Complainant’s POWER STROKE engines.
- Prior panels have found that “the defense of nominative fair use is generally not well-adapted to domain names consisting of nothing more than another party’s trademark and a descriptive or generic word. The factual context of a domain name is strikingly different from the context in which the defense usually arises.
- Respondent’s use of the POWER STROKE mark in the disputed domain name does not constitute a fair use. Respondent’s use of the mark creates the impression that Respondent is sponsored by, connected with or affiliated with Complainant.
- Respondent expressly admits that it registered the disputed domain name primarily for the purpose of attracting Internet users looking for repair services for the Complainant’s POWER STROKE engine. As a result, Respondent is using the disputed domain name to divert and attract internet users to his resolving website for commercial gain by creating a likelihood of confusion with Complainant’s mark.
- The “disclaimer” found at Respondent’s website does not identify Complainant as the owner of the POWER STROKE mark or address the relationship—or lack thereof—between Complainant and Respondent. Moreover, the presence of such a disclaimer comes to internet user attention too late to mitigate confusion.
- Respondent’s registration and use of the confusingly similar disputed domain name to sell competing services for Complainant’s engines constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant is an American company that manufactures and sells automobiles and trucks, including some trucks that utilize the “Power Stroke” brand of diesel-powered engine. Complainant owns several trademarks registered with the USPTO for the POWER STROKE trademark (e.g., Reg. No. 2,075,967, registered July 1, 1997; and Reg. No. 2,943,718; registered April 26, 2005).
Respondent owns the disputed domain name, <powerstrokerepairtampa.com>, which was registered on July 6, 2011. Respondent owns a business that specializes in the repair of “Power Stroke” brand engines, and the disputed domain name redirects internet users to Respondent’s website which makes references to those services. Respondent’s repair services compete directly with services offered by dealerships that are licensed by or affiliated 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."
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.
Given the unchallenged evidence (Complaint Exhibit 2) of Complainant’s USPTO registrations, the Panel has no difficulty in confirming that Complainant has rights in the POWER STROKE trademark sufficient to satisfy the requirements of Policy ¶ 4(a)(i). See Ford Motor Co. v. Tex.Int’l Prop. Assocs., FA 1347379 (Nat. Arb. Forum Nov. 3, 2010) (“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 also SAP AG v. Davis, D2006-1011 (WIPO Oct. 4, 2006) (“The Panel finds that Complainant’s registrations with the USPTO sufficiently establish Complainant’s rights in the MYSAP and SAP NETWEAVER marks.”).
While the disputed domain name, <powerstrokerepairtampa.com>, is not identical to the POWER STROKE trademark, the Panel notes that the name fully incorporates that mark as the first, and dominant, element. Since the only differences are comprised of the additions of the descriptive word, “repair,” the geographical term, “Tampa,” and the generic top-level domain, “.com,” the Panel concludes that the disputed domain name is nonetheless confusingly similar to the trademark. In fact, in the Panel’s view, first two additions cited above, only increase potential internet user confusion because: (i) as mechanical devices, POWER STROKE engines are subject to repair; and (ii) Complainant’s products are sold in Tampa, Florida. See Land Rover v. ABC Productions, FA 1458560 (Nat. Arb. Forum Sept. 26, 2012) (finding <landroverrepairshop.com> to be confusingly similar to the LAND ROVER trademark, while observing that, “…combining a mark with generic words and a gTLD and removing the space within the mark does not change the domain name’s confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Shaw Ind. Group, Inc. v. Tex. Best Flooring Co. Inc., D2011-0462 (WIPO May 11, 2011) (finding <shawcarpetdallas.com> to be confusingly similar to the SHAW mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Accordingly, the Panel finds that Complainant has shown successfully that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Without counter from Respondent, Complainant contends that Respondent is neither affiliated with Complainant nor has been authorized by the Complainant to use its POWER STROKE trademark in a domain name. Since Complainant has also proved to the Panel that the disputed domain name is confusingly similar to that mark, the Panel finds that Complainant has advanced successfully a prima facie case that Respondent has no rights or legitimate interests in that name. So confronted, Respondent is obliged to furnish the Panel with suitable evidence that Respondent does have such rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006): see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000).
In his rebuttal to the prima facie case, Respondent does not claim that he, or the company that he owns, is commonly known as the disputed domain name. Instead, Respondent contends that he is making nominative fair use of the name, a contention akin to the criteria cited in Policy ¶ 4(c)(iii). These criteria allow for “fair use” of a disputed domain name to establish rights or legitimate interests in the same. Specifically, Respondent asserts that he is using Complainant’s trademark legitimately to describe, in the most (and, perhaps, the only) appropriate manner, the truck engine for which he is offering repair services. In submitting this argument, Respondent leans heavily on the rulings found in the United States Federal cases, New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) and Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969).
Complainant counters that New Kids, supra, and Volkswagenwerk, supra, are not applicable because they do not address rights pertaining to disputed domain names; and that another United States Federal case, PACCAR, Inc. v. TeleScan Technologies, L.L.C., 115 F.Supp. 2d 772 (E.D. Mich. 2000), should be controlling because that case did involve a disputed domain name. In rendering a UDRP decision such as this, where there is no provision for the resources necessary to conduct a full judicial proceeding, the Panel is unaccustomed to examine closely decisions rendered by national courts of law. Therefore, Complainant’s correct assertion that prior Policy panels have considered, at length, the application of nominative fair use to domain name disputes is more germane to the Panel than whether it should or should not apply directly the reasoning of one or more of those Federal rulings (as they may or may not have been addressed/modified in subsequent Federal decisions) to the case at hand.
In Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Nat. Arb. Forum Mar. 12, 2010), the learned panelist dismissed the respondent’s attempt to apply the doctrine of nominative fair use to justify ownership of the disputed domain name, <caterpillarservices.com>, with respect to the CATERPILLAR trademark. As in the instant case, that respondent claimed that it required that name to inform the public that the respondent serviced the complainant’s products. In denying the applicability of the doctrine, the panelist stated that “…the defense of nominative fair use is generally not well-adapted to domain names consisting of nothing more than another party’s trademark and a descriptive or generic word.” Other prior UDRP panels have come to similar conclusions. For example, see Takeda Pharmaceutical Co. Ltd. v. Terry Kester, FA 823235 (Nat. Arb. Forum Dec. 1, 2006) (“I find that nominative fair use does allow Respondent to use Complainant’s ROZEREM mark to indicate in advertising or informational material that Respondent sells ROZEREM; however, fair use does not go so far as to allow Respondent to use Complainant’s mark in its domain name.”); see also EPSON Europe BV v. M31 Internet Palma, S.L., D2005-0604 (WIPO Oct. 7, 2005); see also Wal-Mart Stores, Inc. v. John Clark, D2004-0636 (WIPO Oct. 15, 2004); see also Allen-Edmonds Shoe Corp. v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 2002).
On the other hand, some prior Policy panels have accepted the principal of nominative fair use in support of a respondent’s claim of rights or legitimate interests in a disputed domain name. In Steinway, Inc. v. Simon, FA 1318229 (Nat. Arb. Forum June 2, 2010), the panel allowed the doctrine to prevail where the non-affiliated respondent sold restored STEINWAY pianos under the domain name, <american-steinway.com>, but only because “…the domain name is in fact used in connection with a legitimate business in which only Steinway pianos are refurbished and resold.” [emphasis added]. See also Altec Indus., Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum) (where the panel recognized the validity of nominative fair use with respect to the disputed domain name, <usedaltecbuckettrucks.com>, under the rationale that “…Respondent has been preparing the launching of a website in which only ALTEC-branded used trucks will be sold.” [emphasis not added]). The Panel finds that those cases are not controlling in this case, because Respondent acknowledges in the Response (see also Response Exhibit 2) that his business works not solely on POWER STROKE engines but is “a full service repair center that can service most makes and models.” [emphasis added]
Based on the preceding analysis, the Panel finds that the doctrine of nominative fair use is inapplicable to the present case. The Panel believes that Respondent can refer to the for-profit repair of Complainant’s POWER STROKE diesel engine within Respondent’s own website, but cannot legitimately use that trademark in the disputed domain name as nominative fair use, or fair use in any respect. The Panel finds also that obviously Respondent is failing to make noncommercial use of that name. Moreover, because Respondent repairs vehicles manufactured by third-party competitors of Complainant under the disputed domain name, which is confusingly similar to Complainant’s trademark, the Panel concludes that Respondent is not using the name “in connection with a bona fide offering of goods or services” per Policy ¶ 4(c)(i). See Caterpillar Inc., supra; see also Takeda Pharmaceutical Co. Ltd., supra.
Accordingly, the Panel finds that Complainant has shown successfully that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent stresses his right and desire to offer consumers repair services for trucks produced by Complainant – that are powered by the POWER STROKE diesel engine – at costs lower than offered by Complainant’s licensed distributors, who also provide similar services to the public. The Panel believes that Respondent has the right to offer such services; and that Respondent may reference the POWER STROKE trademark to aggressively advertise those services at Respondent’s website. The Panel agrees that such action may legitimately disrupt Complainant’s business by depriving it of customers who may have otherwise chosen its distributors to provide such repair services. This is appropriate business competition, and thus makes Respondent a legitimate competitor of Complainant. However, the Panel also believes that the Policy restricts Respondent’s use of the disputed domain name, which incorporates fully and is confusingly similar to said trademark, to achieve Respondent’s commercial purposes through redirection to Respondent’s website. The Panel determines that such use amounts to bad faith registration and use of that name under Policy ¶ 4(b)(iii), which prohibits the registration of such a confusingly similar domain name “primarily for the purpose of disrupting the business of a competitor.” See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Aero Prod. Int’l., Inc. v. Mattress Liquidation Spec., D2002-0921 (WIPO Dec. 17, 2002) (“…I find that Respondent was acting in a manner designed to disrupt the business of a competitor…Complainant’s mark is used as bait to lead Internet users to Respondent’s…business.”).
The Panel also finds that Respondent’s argument that his website includes a disclaimer of affiliation with Complainant is not determinative in this case. As prior UDRP panels have pointed out repeatedly, such disclaimers are insufficient because internet users would have already been diverted – and the purposes of the improper trademark use achieved – before those users could heed the information included in the disclaimers. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (“…the [disputed] domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the "disclaimer." The "disclaimer" would only be seen by a consumer after he/she has already potentially been confused and exposed to the offers of Respondent for sale of goods.”); see also Estée Lauder Inc. v. Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000) (“The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion.”).
Accordingly, the Panel finds that Complainant has shown successfully that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <powerstrokerepairtampa.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: December 14, 2012
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