Ford Motor Company v. PrivacyProtect.org / Domain Admin
Claim Number: FA1211001471396
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <northtownelincoln.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2012; the National Arbitration Forum received payment on November 15, 2012.
On November 16, 2012, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <northtownelincoln.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@northtownelincoln.com. Also on November 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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. 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
Complainant contends as follows:
Complainant’s business was founded in 1917, and Complainant has used the LINCOLN mark in connection with its luxury motor vehicles since 1922. The LINCOLN mark is well-recognized and has established a “favorable public acceptance.”
Complainant registered its LINCOLN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 511,662 registered June 28, 1949). Complainant also submits evidence of its other trademark registrations for the LINCOLN mark, including with the IP Australia (“IPA”) (Reg. No. 737,962 registered January 7, 2000)
Complainant owns the domain name <northtownelm.com>, whose website is operated by a Ford dealership.
Respondent registered the <northtownelincoln.com> domain name on September 11, 2006.
Respondent uses the <northtownelincoln.com> domain name to host a website that displays hyperlinks for businesses that advertise motor vehicles in competition with Complainant.
The <northtownelincoln.com> domain name is confusingly similar to Complainant’s LINCOLN mark.
Respondent does not demonstrate rights or legitimate interests in the <northtownelincoln.com> domain name, and fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent is not commonly known by the <northtownelincoln.com> domain name.
Respondent registered the domain name in bad faith due to its use of the resolving website to post hyperlinks to businesses competing with Complainant, as well as its attempt to sell the domain name. Respondent had actual knowledge of Complainant’s mark at the time it registered the <northtownelincoln.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and IPA for the LINCOLN mark.
Respondent is not authorized to use Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in the LINCOLN trademark.
Respondent is using the at-issue domain name to address a website which displays links to advertising for third party entities some of which compete in the automobile business.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the LINCOLN mark pursuant to Policy ¶ 4(a)(i) via its trademark registrations with the USPTO and with the IPA. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), (finding that the complainant’s numerous registrations for its trademark sufficed to establish the complainant’s rights in the mark).
Respondent’s <northtownelincoln.com> domain name is confusingly similar to Complainant’s LINCOLN mark. In forming the at-issue domain name, Complainant’s entire mark is prefixed with the geographic identifier “northtowne” and the generic top-level domain, “.com,” is appended thereto. Notwithstanding the differences between the resulting domain name and Complainant’s mark, the <northtownelincoln.com> domain name is nonetheless confusingly similar to Complainant’s LINCOLN trademark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “PrivacyProtect.org / Domain Admin” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See 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).
Respondent displays hyperlinks at the <northtownelincoln.com> website which are apparently used to collect click through fees. Respondent’s <northtownelincoln.com> website includes links for ads titled: The 2013 Hyundai® Line Up, Chevrolet Clearance 2012, Nissan Car Dealerships, Honda Auto Dealers, and others which reference entities that compete with Complainant’s business. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offers to sell the <northtownelincoln.com> domain name by providing a link on its <northtownelincoln.com> website to “inquire about this domain.” The link presumably facilitates making an offer to purchase the at-issue domain name from Respondent. Offering the disputed domain name for sale suggests bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Second, as mentioned above the <northtownelincoln.com> website features various links for ads and for related searches related to Complainant’s competitors. It is clear that such links are used by Respondent to generate revenue via click through fees. Significantly, Respondent uses its confusingly similar domain name to lure Complainant’s potential customers to the <northtownelincoln.com> website. Using the domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally, Respondent was undoubtedly aware of Complainant’s LINCOLN mark when it registered the <northtownelincoln.com> domain name. Complainant and its LINCOLN trademark are both very well known throughout the world. Therefore, it is inconceivable that Respondent did not have knowledge of the LINCOLN mark prior to registering the at-issue domain name. Additionally, Respondent’s use of the domain name to address a website linking to advertisements for competing third parties further suggests that Respondent had knowledge of Complainant and its LINCOLN trademark when it registered the at-issue domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Registering a domain name with prior knowledge of another’s rights therein indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <northtownelincoln.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 23, 2012
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