Ford Motor Company v. Boomerang Enterprises Inc.
Claim Number: FA1009001344311
Complainant is Ford Motor Company ("Complainant"), represented by Amy C. Leshan of Brooks Kushman P.C., Michigan, USA. Respondent is Boomerang Enterprises Inc. ("Respondent"), represented by Ian V. O'Neill of Holland & Hart LLP, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com>, registered with NETWORK SOLUTIONS, LLC.
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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2010; the National Arbitration Forum received payment on September 1, 2010.
On September 1, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com> domain names are registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 2010 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@fiestaarmrest.com, postmaster@fiesta-armrest.com, postmaster@fiestaarmrest.net, postmaster@fiesta-armrest.net, postmaster@fordfiestaarmrest.com. Also on September 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 September 23, 2010.
Complainant’s Additional Submission was received on September 27, 2010 and deemed to be in compliance with Supplemental Rule 7.
On October 4, 2010, the Panel received Respondent’s Additional Submission and determined that the Additional Submission does comply with Supplemental Rule 7.
On October 6, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following assertions:
- The disputed domain names fully and significantly incorporate Complainant’s trademark FIESTA, or Complainant’s trademarks FORD and FIESTA and are therefore identical to and confusingly similar to Complainant’s trademark
- Complainant is the owner of numerous trademark applications and registrations for FORD and FIESTA in the United States and worldwide. FORD and FIESTA are well-known trademarks worldwide. The term “armrest” is generic.
- The disputed domain names <fiestaarmrest.com>, <fiesta-armrest.com>, <firestaarmrest.net> and <fiesta-armrest.net> resolve to a page of Respondent’s website showing images, text and video related to the FORD FIESTA vehicle. Respondent’s website also advertises products of Complainant’s competitors. The disputed domain name <fordfiestaarmrest.com> directs Internet users to a parking page.
- Respondent does not have any rights or interests in the disputed domain names because it is not affiliated with Complainant and its use of the FIESTA and FORD marks is unauthorized.
- Respondent’s actions meet the bad faith criteria outlined in Paragraph 4(b) of the UDRP. Upon information and belief Respondent had actual knowledge of Complainant’s rights to the FORD and FIESTA trademarks at the time that Respondent registered the disputed domain names. Respondent was not authorized to use or register the disputed domain names. Respondent uses the disputed domain names to intentionally attract Internet users to its website creating a likelihood of confusion with the FORD and FIESTA trademarks as to source, sponsorship, affiliation, and endorsement of Respondent’s website and of the goods offered at the site.
- Respondent intentionally and willfully misrepresented to its registrar that the registration of the disputed domain names did not interfere with or infringe upon the rights of any third parties and that the Disputed domain name was not being registered for any unlawful purpose.
- Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name.
B. Respondent
Respondent makes the following assertions:
- The disputed Domain Names were registered and used by Respondent with the encouragement and implied consent of Complainant, and not in bad faith.
- Complainant is attempting to use UDRP to attempt to force a quick resolution to a much larger, more complex legal dispute between the parties.
- Complaint should be denied because Complainant has failed to uphold its burden under Paragraph 3(ix) of the Rules and the factual and legal questions raised by the current dispute between Respondent and Complainant far exceed the narrow scope of the UDRP.
- Respondent is an official Ford-approved vendor
- There has been a business relationship between Complainant and Respondent
Respondent and Complainant have been in discussion for the possibility of Respondent’s manufacturing a compatible armrest for Complainant’s Fiesta vehicle. In the context of these discussions and after a meeting, Respondent registered the domain and during the following months developed its armrests. During this period of time, Respondent and Complainant have been in contact. On information and belief, for Respondent, Complainant was at all times aware that Respondent was expanding significant time, money and resources creating professional quality content for the Domain Names
On November 2009, Complainant informed Respondent it had decided not to enter into an agreement for Respondent to manufacture a licensed armrest for the Fiesta vehicle on behalf of Complainant. However, Complainant encouraged Respondent to pursue its marketing efforts, reassured Respondent that it could offer its armrest as an after-market product to be sold directly to Complainant’s dealers and part suppliers, offered to introduce Respondent to its Mexico and Asia entities, directed Respondent to confirm that Respondent will pursue the production and marketing of its product as an after-market product. Complainant stated that if Respondent’s marketing efforts and product were successful on secondary market Complainant could reconsider its decision.
Respondent pursued its efforts and prepared a whole marketing campaign comparable to that previously executed for Astra vehicle using the domain name <fiestarmrest.com>, all marketing channels used by respondent were including a disclaimer stating it is not affiliated with complainant
In June 2010, Complainant informed Respondent that it had decided to license a third party to manufacture a licensed armrest to compete with Respondent’s product. Respondent explained that he would not have launched such marketing campaign if he had knew this decision earlier
After that, Respondent was informed that Complainant now considers the disputed domain names to infringe upon its trademarks FORD and FIESTA. Respondent then removed the contents identified by Complainant as source of concern, deactivate the domain name <fordfiestaarmrest.com>, disabled the content available at <fiestarmrest> and <fiesta-armrest> redirect traffic to its own <boomco.com> domain name.
- It is not clear that Respondent’s domain names are confusingly similar to Complainant’s marks.
Complainant does not distinguish between the domain name containing the FORD mark and the domain names containing only the FIESTA mark. Complainant’s mark FIESTA does not cover Respondent’s products. At the time the Domain Names were registered Complainant had abandoned its previous trademark registration for FIESTA covering such products.
- Respondent has a legitimate interest in the domain names.
Respondent registered and operates the Domain Names in connection with a bona fide offering of after-market armrests that are compatible with Complainant’s Fiesta vehicle.
Respondent registered the domain names only in reliance with Complainant’s express suggestion that such marketing would be appropriate and desired by Complainant.
The disputed domain names resolve to Respondent’s website in response to Complainant’s request.
Respondent does not offer products of Complainant’s competitors on its website but only its own products compatible with products sold by other companies than Complainant. To access to these other products, the internet users would have to move into the website. There is no bait and switch because replacement products, specifically armrests, are only compatible with specific vehicles.
- Respondent neither registered or used the domain names in bad faith.
Respondent cannot disrupt Complainant’s business and misdirect Complainant’s Internet traffic since Complainant has indicated it has no intention of producing an after market armrest for its Fiesta vehicle but has rather permitted a third party vendor to independently market a competing products.
Respondent was not oblivious of Complainant’s marks when Respondent registered the disputed domain names but was simply attempting to comply with Complainant’s suggestion to adopt the same marketing strategy as for Astra site.
Respondent does not use the disputed domain names to confuse internet users as to its relationship with complainant since the website have a clear disclaimer in this respect.
Respondent did not misrepresent the registrar.
Complainant changed its position only after Complainant authorized a Respondent’s competitor to manufacture a competing product and the domain names had acquired value as a result of Respondent’s marketing campaign.
At the time the domain names were registered, Complainant had actively abandoned the registration for the FIESTA trademark.
Respondent does not corner the market since it has only registered 2 domain names fiestaarmrest et fiesta-armrest in <.com> and <.net>. Other gTLDs are available for these names.
- UDRP is only intended for cases of abusive registration, the present situation involves other legal issues and the appropriate venue for this litigation is a court of law. Complaint should thus be denied.
- Complainant’s complaint constitutes reverse domain name hijacking.
C. Additional Submissions
In its additional submission Complainant makes the following assertions:
- UDRP is the appropriate forum for the dispute
- Respondent is not authorized to use Complainant’s trademarks.
There is no evidence Complainant authorized respondent to register the disputed domain name or was aware of their existence until recently
-Respondent was a Ford vendor 5 year ago but does not currently supply Complainant’s product. Even if it was still supplying Ford products, it does not convey an authorization to use Complainant’s trademarks. Respondent is not otherwise licensed by Ford to use Ford trademarks in connection with any products or services.
It is common practice for Complainant to permit manufacturers of after sales product to inspect their products, it does not evidence an authorization to use its trademarks
- The disputed domain names include FORD and FIESTA in their entirety.
Complainant cannot be deemed as having abandoned its FIESTA mark because of the non renewal of US Trademark FIESTA 1,116,349. Complainant had filed another US trademark for FIESTA in 2007 before the domain names were registered and is the owner of prior trademark registrations for FIESTA outside the United States. These elements should suffice to evidence Complainant’s has rights in the mark FIESTA pursuant to the policy
- Respondent does not have any legitimate interests in domain names
Complainant has set out a prima facie case by asserting that it has not in any way permitted Respondent to use its trademarks and Complainant’s assertion is sufficient to shift the burden to Respondent.
Respondent is not making a fair or noncommercial use of the Domain Names, is not generally known by the Domain Names and the use to which the Domain Names are being put in the corresponding website is commercial and not a bona fide offering of goods and services since it trades unfairly on Complainant’s trademark.
The situation is not a reseller situation. Respondent is not offering Ford-branded goods or services and Respondent is not using the Domain Names only to cover Ford branded goods. Respondent is not authorized by Ford to use Ford trademarks in connection with Respondent’s goods. Respondent used the Domain Names to direct Internet users to its own website to sell its own products for other brands and for a parking page. This constitutes evidence of illegitimate use of the Domain Names
Respondent is not known by the name constituting the Domain Names
Deactivation of the <fordfiestaarmrest.com> is contrary to supporting a claim of bona fide offering of goods and services or a legitimate noncommercial or fair use according to the Policy.
- There is Respondent’s bad faith
Previous Panels have concluded to domain name registration and use in bad faith in similar situation
Respondent did not provide evidence he was authorized to register the disputed domain names.
The disclaimer is not sufficient to prevent the initial confusion created by the disputed domain names due to the fact they reproduce Complainant’s trademarks.
Complainant’s complaint does not constitute reverse domain name hijacking.
In its additional submission, Respondent makes the following assertions
- Complainant has failed to establish that Respondent does not have a legitimate interest in the domain names
Use of Complainant’s trademarks by Respondent is not unlawful and simply constitutes nominative fair use
Respondent uses the Domain Names only to promote and sell Respondent’s accessory armrest product which is specifically designed to work only with Fiesta vehicle. As such the only was to descriptive Respondent’s armrest product is by reference to the vehicle in which it may be legally installed. Such use has consistently been held to constitute nominative fair use which is legal, non infringing and bona fide. This is especially true in the automobile industry. Respondent had no alternative but the use of Complainant’s trademark.
Respondent only use Fiesta mark Respondent has ceased any and all use of Complainant’s Ford mark and volunteered to assign its rights in the <fordfiestaarmrest.com> domain name to Complainant.
Respondent has done nothing to suggest links with Complainant
According to Complainant’s own admission, in order for Respondent’s use to not be in connection with a bona fide offering, Respondent’s use would need to be illegal and unlawful. The assessment of whether such use corresponds to nominative fair use belongs to Court jurisdiction, UDRP is thus inappropriate.
Respondent deactivates <fordfiestaarmrest.com> domain name to attempt to resolve this matter amicably
- Complainant has failed to establish that Respondent registered and used the disputed domain names in bad faith.
The presence of the disclaimer prevents a bad faith finding. Complainant only provided selective quotes. The interpretation of the parties’ behavior is factual issues that exceed the issues UDRP is intended to solve.
- Complainant’s additional comments confirm that the factual and legal questions make the UDRP inappropriate as a forum for resolving the present legal dispute.
The presence of an express or implied contract between the parties should be determined by a court of law. Complainant provided Respondent with a non standard access to its FIESTA vehicle.
Respondent does not obtain click through revenues from the Disputed Domain Names.
Respondent does not offer or promote goods of Complainant’s competitors.
Respondent’s disclaimer is sufficient to avoid confusion.
The complaint constitutes domain name hijacking since Complainant knew Respondent did not register the domain names in bad faith and would not be using them in bad faith.
The Panel finds that Complainant has proven all three elements set out in Paragraph 4 (a) of the policy in relation to all the Domain Names. The Panel orders the transfer of all the Domain Names to 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.
Preliminary issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent, Boomerang Enterprises Inc., asserts that it manufactures after-market automotive parts and is an official Ford-approved vendor. Respondent provides its Ford Vendor Number: EN6NA. According to Respondent, Respondent and Complainant entered into discussions regarding the possibility of Respondent manufacturing an armrest compatible with Complainant’s FIESTA vehicle. Respondent claims that it visited Complainant’s corporate headquarters to discuss a business relationship. Respondent contends that Complainant asked if Respondent could develop a website to market the armrest product, and, based on the question, Respondent registered the disputed domain names. Respondent argues that it developed a marketing strategy along with the armrests, and provided notice of its progress to Complainant. Respondent asserts that Complainant provided Respondent with FIESTA CAD data to assist Respondent’s design of the armrest. According to Respondent, Respondent and Complainant discussed potential alternative design concepts, reviewed additional CAD data, and discussed the possibility of offering Respondent’s armrest as an official licensed accessory. After these discussions took place, Respondent alleges that Complainant notified Respondent that it had decided not to enter into an agreement for Respondent to manufacture a licensed armrest, but that Complainant encouraged Respondent to continue to market and develop the armrest, reassured Respondent that it could offer the armrest as an after-market product to Complainant’s dealers, offered to introduce Respondent to Complainant’s Mexico and Asia affiliates, and directed Respondent to confirm everything in writing. Respondent also argues that Complainant further stated that if Respondent’s marketing efforts and products were successful, Complainant could reconsider licensing Respondent’s armrest product. Respondent contends that it believed that it was acting properly when it launched its marketing campaign, including the use of the disputed domain names. Respondent argues that the UDRP process is inappropriate to resolve issues of promissory estoppel, unjust enrichment, negligent misrepresentation causing financial loss in a business transaction, and tortious interference with contractual relationships. Respondent reiterates these issues in its Additional Submission.
In Complainant’s Additional Submission, Complainant, Ford Motor Company, argues that Respondent’s claims of Complainant’s encouragement are unsupported. Complainant asserts that Respondent does not provide evidence that Complainant authorized Respondent to register the disputed domain names. Complainant claims that, while Respondent has a vendor number, that Complainant issued Respondent’s vendor number five years ago and that Respondent does not currently supply products or services to Complainant. Complainant contends that the encouragement that Respondent argues it relied upon is the same encouragement that Complainant gives to all suppliers of aftermarket products. In Complainant’s Additional Submission, Complainant argues that the UDRP process is an appropriate forum for this case. Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case.
Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
Here, Complainant made assertions following the criteria set out in the Policy, and the present Panel considers having jurisdiction to render a decision in respect of the disputed Domain Name.
Complainant has sufficiently established rights in its FORD and FIESTA marks. Complainant provides evidence of Complainant’s trademark registration with the United States Patent and Trademark Office (“USPTO”) for its FORD mark (e.g., Reg. No. 74,530 issued July 20, 1909). Complainant asserts that it owns a trademark registration for its FIESTA mark with the USPTO (Reg. No. 3,838,225 filed February 9, 2007; issued August 24, 2010), and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,027,121 filed March 25, 1974; issued February 15, 2005). In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel found that a trademark registration with the USPTO was sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Similarly, in The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006), the panel determined that a complainant had established rights through its trademark registration with the UKIPO. Moreover, in Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), the panel concluded that the filing date of a trademark registration is the effective date of a complainant’s rights. Based on past precedent and Complainant’s trademark registrations, the Panel may find that Complainant has established rights in its FORD and FIESTA marks for the purposes of Policy ¶ 4(a)(i).
Complainant alleges the <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com> domain names are confusingly similar to Complainant’s FORD and FIESTA mark. The Panel finds that the <fiesta-armrest.com> and <fiesta-armrest.net> domain names combine Complainant’s FIESTA mark with a hyphen, the generic term “armrest,” and the generic top-level domain (“gTLD”) “.net” or “.com.” The Panel further finds that <fiestaarmrest.com> and <fiestaarmrest.net> domain names make similar additions to Complainant’s FIESTA mark, except for the addition of a hyphen. The Panel determines that the <fordfiestaarmrest.com> domain name combines Complainant’s FORD and FIESTA marks with the generic term “armrest” and the gTLD “.com.” Previous panels have determined that the addition of a hyphen, a generic term, a second mark of a complainant, and a gTLD all fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel thus concludes that Respondent’s <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com> domain names are confusingly similar to Complainant’s FIESTA mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names. Complainant claims that no authorization was given to Respondent to use its FIESTA or FORD marks in the disputed Domain Names and Respondent refers to encouragement from Complainant but provided no evidence of such an authorization. Respondent is not commonly known by the <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com> domain names. The WHOIS information identifies the registrant of the disputed domain names as “Boomerang Enterprises Inc.,” which the Panel determines to be dissimilar to the disputed domain names. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels concluded that the respondents were not commonly known by the disputed domain names as the respective complainants had not authorized the respondents to use the marks and the WHOIS information was not similar to the disputed domain names. Similar to Tercent Incorporated and Braun Corporation, the Panel holds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Prior panels in Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) and Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), held that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name when a respondent uses a disputed domain name to resolve to a website featuring products of a complainant’s competitors. The disputed domain names <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, and <fiestaarmrest.net> resolve to Respondent’s website which also promote products for Complainant’s competitors products. The Panel thus concludes that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, and <fiestaarmrest.net> under Policy ¶ 4(c)(iii).
The domain name <fordfiestaarmrest.com> was deactivated after Complainant contacted Respondent and resolves presently to a parked page of Respondent’s registrar and Respondent claims it is not getting click through revenues. The determination of the existence of such revenues is beyond the Panel jurisdiction and the Panel will make no findings on such issue. However, the Panel finds that even if there is no longer an active use of this Domain Name by Respondent to direct Internet users to its web pages, the use of this domain name still does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [inactive 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [inactive 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).”).
The Panel further notes in its additional submission page 2, Respondent indicates having ceased all use of Complainant’s FORD mark and volunteered to assign its rights in the FORDFIESTAARMREST.COM domain to Complainant.
Based on this precedent, the Panel concludes that Respondent’s use of the <fordfiestaarmrest.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(a)(iii).
Respondent also asserts that its use of the Domain Names constitute nominative fair use.
However, as hold by the Panel in Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc. FA1001001303230, “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.”
The Panel finds that the Disputed Domain Names create initial confusion as to the source of the website. Because they include Complainant’s trademarks, Internet users are likely to visit Respondent’s website and the litigious parking page. Even if Respondent’s website include a disclaimer, confusion and diversion of Internet traffic will have already occurred (Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc. FA1001001303230).
Furthermore, the use of the disputed Domain Names by Respondent is only a recent use.
It is beyond this Panel’s jurisdiction to determine the exact nature of the links between Complainant and Respondent. However, the facts and documents brought to Panel’s attention evidence no formal contractual links between Complainant and Respondent involving the disputed domain names. Respondent is not a reseller of Complainant’s products but a reseller of products intended for Complainant’s goods. Respondent’s use of the disputed domain names may thus not be justified with regards to Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO June 11, 2001), and DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO Nov. 7, 2001).
Based on the foregoing, the Panel concludes that Respondent’s use of all the disputed Domain Names does not constitute a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(a)(iii).
Respondent is using the <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, and <fiestaarmrest.net> domain names to resolve to its own website which also promotes products for Complainant’s competitors featuring advertisements to Complainant’s competitors. The Panel finds that Respondent is disrupting Complainant’s business by redirecting Internet users interested in Complainant’s products to a website promoting products intended for Complainant’s competitors. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The domain name <fordfiestaarmrest.com> was deactivated by Respondent after being contacted by Complainant. Complainant has claimed that this Domain Name resolves to a page of commercial links of the “pay per click” type.
In the presence of parking page, the Panel considers that it may be presumed that Respondent commercially gains from Internet users’ confusion as to all of the disputed domain names, and, therefore, the Panel may hold that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Respondent claims earning no revenues from this page. As previously stated, the Panel will not make any findings on the existence of such revenues. Nonetheless, the deactivation of the Domain Name <fordfiestaarmrest.com> does not prevent a finding of bad faith by the present Panel according to the circumstances of the case.
The Panel notes that Respondent has volunteered to assign its rights in the <fordfiestaarmrest.com> domain name to Complainant.
Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the FIESTA and FORD marks. Respondent has developed a product intended for Complainant’s FORD FIESTA vehicle. This Panel thus finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
In Complainant’s Additional Submission, Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer. Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds Policy Paragraph 4(a)(iii) has been satisfied.
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fiesta-armrest.com>, <fiesta-armrest.net>, <fiestaarmrest.com>, <fiestaarmrest.net>, and <fordfiestaarmrest.com> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: October 20, 2010
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