Ford Motor Company & its wholly-owned subsidiary Ford Motor Company of Canada Limited v. SHIRLEY RANDALL
Claim Number: FA2204001993537
Complainant is Ford Motor Company & its wholly-owned subsidiary Ford Motor Company of Canada Limited (“Complainant”), represented by Joseph T. Kucala, Illinois, USA. Respondent is SHIRLEY RANDALL (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myfordbenefits.us>, registered with NameSilo, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2022; the Forum received payment on April 24, 2022.
On April 25, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <myfordbenefits.us> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2022 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@myfordbenefits.us. Also on April 25, 2022, 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 May 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The named Complainants in this matter Ford Motor Company and its wholly-owned subsidiary Ford Motor Company of Canada Limited are related companies. The Ford Motor Company is the parent company of Ford Motor Company of Canada Limited. The Panel therefore finds that the nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity.
A. Complainant
Complainant contends as follows:
Complainant is a prominent automobile manufacturer.
Complainant has rights in the FORD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <myfordbenefits.us> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the FORD mark in its entirety and adds the terms “my” and “benefits” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no legitimate interests in the <myfordbenefits.us> domain name. Respondent has not provided evidence that it owns a trademark reflected by the at-issue domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent any rights in the FORD mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as affiliated with Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <myfordbenefits.us> domain name in bad faith. Respondent registered the domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent registered the at-issue domain name in order to participate in phishing. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the FORD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in FORD.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the FORD trademark.
Respondent uses the at-issue domain name to address a website intent on facilitating fraud.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the FORD mark pursuant to Policy ¶ 4(a)(i) through its registration of FORD with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains Complainant’s FORD trademark prefixed with the term “my” and sufixed with suggestive term “benefits,” with all followed by the generic “.us” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s FORD mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s at-issue domain name is confusingly similar to Complainant’s FORD trademark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also, also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
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 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Shirley Randall” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <myfordbenefits.us> domain name. The Panel therefore concludes that Respondent is not commonly known by <myfordbenefits.us> for the purposes of Policy ¶ 4(c)(iii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”).
Respondent’s <myfordbenefits.us> domain name is used to address a website dressed to appear as if it is sponsored by or affiliated with Complainant. The website is adorned with Complainant’s trademark and logo and pretends to be a genuine Ford website aimed at informing and interacting with former/active Ford employees regarding company benefits. The website includes sections such as “Login,” “About Us,” “Benefits,” and “Contact Us” and the <myfordbenefits.us> homepage displays information about Complainant and its official <myfordbenefits.com> website using screenshots of the genuine website. The domain name is also associated with mail exchanger or MX records which are necessary to host email at <myfordbenefits.us>. The presence of MX records indicates Respondent’s desire to accept and send email under the <myfordbenefits.us> domain name. Email to and from <myfordbenefits.us> may be used to further confound third-parties into falsely believing they are dealing with Complainant regarding their FORD benefits. Respondent’s use of the at-issue domain name to pass itself off as Complainant and deceive third parties into falsely believing they are interacting with Complainant demonstrates neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name).
Respondent uses the domain name and its associated website’s interactive facility to extract private personal information from website visitors. Respondent’s phishing endeavor additionally shows Respondent’s lack of rights and lack of legitimate interest in <myfordbenefits.us>. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above, Respondent used the at-issue domain name in connection with a phishing scheme. To wit, Respondent cloaked as Complainant deceives <myfordbenefits.us> website visitors into believing that they are dealing with Complainant so they will give up private sensitive information to Respondent. Respondent’s use of the at-issue domain name in furtherance of fraud shows Respondent’s bad faith registration and use of the <myfordbenefits.us> domain name under Policy ¶ 4(a)(iii)). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent has suffered multiple adverse UDRP decisions involving conduct similar to that which Respondent exhibits in the instant dispute. See Ford Motor Company v. Shirley Randall et al., Case No. D2022-0306, (WIPO March 30, 2022) (ordering transfer of the domain names www.myfordbenefits.biz, www.myfordbenefits.bid, www.myfordbenefits.org and www.usfordbenefits.com); see also, AdvancedMD, Inc. v. Shirley Randall, Case No. FA2202001984335 (Forum Mar. 17, 2022). Doing so shows a pattern of domain name abuse and indicates Respondent’s bad faith regarding the instant dispute under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the FORD mark when it registered <myfordbenefits.us> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s previous registration of domain names confusingly similar to Complainant’s FORD mark; and from Respondent use of the domain name to pose as Complainant and phish for private data as discussed elsewhere herein. Respondent’s registration and use of <myfordbenefits.us> with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (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 usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfordbenefits.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 20, 2022
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