Ford Motor Company v. JH Kang
Claim Number: FA1507001630849
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is JH Kang (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fordcredit.co>, registered with 1API GmbH; <ford-trucks.info>, registered with Crazy Domains FZ-LLC; <fordfocusst.org>, registered with Net 4 India Limited; and <fordvans.net>, registered BigRock Solutions Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2015; the Forum received payment on July 27, 2015.
On July 28, 2015, BigRock Solutions Ltd. confirmed by e-mail to the Forum that the <fordvans.net> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 July 29, 2015, 1API GmbH confirmed by e-mail to the Forum that the <fordcredit.co> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 29, 2015, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <ford-trucks.info> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 August 7, 2015, Net 4 India Limited confirmed by e-mail to the Forum that the <fordfocusst.org> domain name is registered with Net 4 India Limited and that Respondent is the current registrant of the name. Net 4 India Limited has verified that Respondent is bound by the Net 4 India Limited 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 August 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2015 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@fordcredit.co, postmaster@ford-trucks.info, postmaster@fordfocusst.org, and postmaster@fordvans.net. Also on August 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶4(a)(i)
Complainant has rights in the following marks through its registrations with the United States Patent and Trademark Office (“USPTO”): FORD (Reg. No. 74,530, registered on July 20, 1909), FORD CREDIT (Reg. No. 3,738,195, registered on January 12, 2010) and FOCUS (Reg. No. 2,314,962, registered on February 1, 2000). Respondent’s <fordcredit.co> domain name is identical to Complainant’s FORD CREDIT mark because it is differentiated from the mark by only the removal of the space between the words of the mark and the addition of the county-code top-level domain (“ccTLD”) “.co.” Respondent’s <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names are confusingly similar to Complainant’s marks because they each contain one or more of the marks, combined with inconsequential alterations such as hyphens, generic terms, and the generic top-level domains (“gTLDs”) “.org,” “.info,” or “.net.”
Policy ¶4(a)(ii)
Respondent is not commonly known by the disputed domain names because WHOIS information for each domain name lists “JH Kang” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name resolves to either a parked page or inactive webpage. In addition, Respondent uses the <fordcredit.co>, <ford-trucks.info>, and <fordfocusst.org> domain names in an attempt to deliver malware. Further, Respondent lacks legitimate rights and interests in the <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names because it offers them for sale, and in the <fordcredit.co> domain name because it is a typosquatted version of Complainant’s own website.
Policy ¶4(a)(iii)
Respondent registered and uses the disputed domain names in bad faith because it has demonstrated a pattern of bad faith by registering multiple domains containing Complainant’s marks. Respondent uses the <fordcredit.co>, <ford-trucks.info>, <fordfocusst.org> domain names in bad faith because it uses them in an attempt to deliver malware. Respondent registered each domain name in bad faith because it did so with constructive or actual knowledge in Complainant’s rights in the FORD, FOCUS, and FORD CREDIT marks. Additionally, Respondent registered the <fordcredit.co> in bad faith because the domain name is a typosquatted version of Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the FORD, FORD CREDIT, and FOCUS marks through its registration with the United States Patent and Trademark Office (“USPTO”). Complainant registered the FORD mark (Reg. No. 74,530, registered on July 20, 1909), the FORD CREDIT mark (Reg. No. 3,738,195, registered on January 12, 2010), and the FOCUS mark (Reg. No. 2,314,962, registered on February 1, 2000). Registration with the USPTO (or a similar governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”). While Complaint does not need to prove it has rights where Respondent is located, Complainant registered the FORD and FOCUS marks in Korea. Complainant has rights in the FORD, FORD CREDIT, and FOCUS marks under Policy ¶4(a)(i).
Respondent’s <fordcredit.co> domain name is identical to the FORD CREDIT mark because it differs from the mark by only the removal of the space between the words of the mark and the addition of the ccTLD “.co.” Spaces are not allowed characters in domain names, so their absence does not mean anything under a Policy ¶4(a)(i) analysis. Likewise, a TLD is required for all domain names. Therefore, its presence must be disregarded under a Policy ¶4(a)(i) analysis. See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Respondent’s <fordcredit.co> domain name is identical to the FORD CREDIT mark under Policy ¶4(a)(i).
Respondent’s <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names are confusingly similar to Complainant’s marks because they each contain one or more of the marks, combined with alterations such as hyphens; terms, such as “trucks,” “vans,” or “st;” and the gTLDs “.org,” “.info,” or “.net.” As noted above, TLDs are irrelevant to Policy ¶4(a)(i) analysis. See 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). Adding hyphens does not affect a Policy ¶4(a)(i) analysis. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The terms “trucks,” “vans,” and “st” are all apparently generic descriptions of Complainant’s business and do not prevent a finding of confusing similarity. 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)). Respondent’s <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names are confusingly similar to Complainant’s FORD, FOCUS and FORD CREDIT marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain names. The WHOIS information for each domain name lists “JH Kang” as Registrant.
Respondent is neither affiliated with Complainant nor otherwise authorized to use Complainant’s marks. Respondent has provided no information to suggest Respondent is commonly known by these domain names. Under such circumstances, the Panel cannot find in Respondent’s favor. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Respondent is not commonly known by the <fordcredit.co>, <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the <fordcredit.co>, <ford-trucks.info>, and <fordfocusst.org> domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving websites in an attempt to deliver malware. Delivering malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Respondent fails to use the <fordcredit.co>, <ford-trucks.info>, and <fordfocusst.org> domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant claims Respondent fails to use any of the domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each of the <fordcredit.co>, <ford-trucks.info>, and <fordfocusst.org> domains resolve to parked webpages, while the <fordvans.net> domain name resolves to an inactive webpage. Failing to use a disputed domain name or allowing a domain name to resolve to a dynamic parking page with links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶4(c)(i) or ¶4(c)(iii)). Respondent fails to use the <fordcredit.co>, <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Complainant claims Respondent lacks rights or legitimate interests in the <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names because Respondent offers them each for sale. Making a general offer to sell a domain name is normally sufficient to establish a lack of Respondent’s rights or legitimate interests in that domain name under Policy ¶4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). There are no extraordinary circumstances here. Respondent lacks rights or legitimate interests in the <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent offers the <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names for sale. Such general offers to sell are sufficient to establish bad faith under Policy ¶4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale). Respondent has offered the <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names for sale in bad faith pursuant to Policy ¶4(b)(i).
Complainant claims Respondent registered and uses the disputed domain names in bad faith because it has demonstrated a pattern of bad faith by registering multiple domains containing Complainant’s marks. While this may be true, Policy ¶4(b)(ii) also requires Complainant be prevented from reflecting its marks in a domain name. Complainant has not shown this because it isn’t true. There is insufficient evidence to show Respondent’s bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent uses each of the disputed domain names to intentionally attract Internet users for commercial gain by creating a likelihood of confusion in regards to Complainant’s association with the websites. Respondent attempts to deliver malware through each of these domain names, presumably for some kind of benefit to Respondent. The delivery of malware to constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)). Respondent uses the <fordcredit.co>, <ford-trucks.info>, and <fordfocusst.org> domains in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the FORD, FORD CREDIT and FOCUS marks because of the worldwide fame Complainant’s marks have. Actual knowledge of another’s marks allows a finding of bad faith registration and use under Policy ¶4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Complainant’s marks are so well known, it is inconceivable Respondent did not know of their existence before registering these domain names. It follows Respondent registered and uses the <fordcredit.co>, <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <fordcredit.co>, <ford-trucks.info>, <fordfocusst.org>, and <fordvans.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 22, 2015
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