Ford Motor Company v. Mel Light
Claim Number: FA1211001471554
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Mel Light (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fordextendedwarrantys.com>, <fordextendedwarranties.org>, and <lincolnextendedwarranty.org>, registered with Godaddy.Com, 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.
Debrett G. Lyons 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, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <fordextendedwarrantys.com>, <fordextendedwarranties.org>, and <lincolnextendedwarranty.org> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 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@fordextendedwarrantys.com, postmaster@fordextendedwarranties.org, and postmaster@lincolnextendedwarranty.org. 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 Debrett G. Lyons 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that the Panel deemed applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in FORD and LINCOLN and alleges that the disputed domain names are confusingly similar to the respective trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant makes and sells automobiles and provides maintenance and warranty services in relation to those vehicles.
2. Complainant owns, inter alia, United States Trademark Reg. No. 74,530 registered July 20, 1909 for FORD and Reg. No. 2,018,007 registered Nov. 19, 1996 for LINCOLN.
3. The disputed domain names were registered on June 18, 2010.
4. The domain names resolve to websites which create the impression of an official website of Complainant for the service and warranty of either FORD or LINCOLN cars.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations, the Panel is satisfied that it has trademark rights in both FORD and LINCOLN (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain names are confusingly similar to Complainant’s relevant trademarks. The disputed domain names take one or other of the trademarks and add non-distinctive elements – either the gTLD, “.com” or “.org” and the descriptive words “extended” and “warrantys” or “warranties”. None of that added matter distinguishes the domain names from the trademarks in any significant manner.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in relation to all disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “Mel Light” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of services prior to notice of the dispute. Complainant provides evidence that the domain name resolve to websites
that carries Complainant’s trademarks and other indicia suggestive to Internet users that they have reached an official website of Complainant concerned with the service and warranty of FORD or LINCOLN cars. Complainant alleges that those websites deceive customers into divulging personal information by masquerading as authorized websites of Complainant. Panel notes that the websites solicit information such as “Name,” “Email,” “Phone,” “Alt Phone,” and “Best Time To Call.” Previous panels have found that a respondent’s use of a disputed domain name for a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name (see, for example, Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006). Moreover, leaving the allegation of phishing to one side, there is no evidence that Respondent is in any way actually offering motor vehicle warranty or maintenance services and so Respondent is not engaged in a bona fide offering of any kind.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in relation to all disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. In this case there is no need to consider the possible application of the four scenarios described in paragraph 4(b) of the Policy since there is clear evidence of registration in bad faith and use in bad faith.
Complainant has provided references to many earlier UDRP cases where adverse rulings were made against Respondent (see General Motors LLC v. Domains By Proxy, Inc./ Mel Light, D2012-1517 (WIPO Sept. 10, 2012); see also General Motors LLC v. Domains By Proxy, Inc./ Mel Light, D2012-1415 (WIPO Sept. 4, 2012); see also General Motors LLC v. Mel Light/ Domains By Proxy, Inc., D2011-2176 (WIPO March 15, 2012); see also Toyota Motor Credit Corp. v. Mel Light, FA1416446 (Nat. Arb. Forum Dec. 22, 2011); see also Toyota Motor Credit Corp. v. Mel Light, FA 1393651 (Nat. Arb. Forum July 28, 2011). Panel finds that Respondent specifically targeted Complainant’s trademarks and registered the disputed domain names in bad faith. Moreover, Panel has already described the bad faith use of the domain names.
Panel finds that Complainant has established the third and final element of the Policy in relation to all disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fordextendedwarrantys.com>, <fordextendedwarranties.org>, and <lincolnextendedwarranty.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 31, 2012
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