Ferman Motor Car Company, Inc., and Ferman of Countryside, LLC v. Ryan G Foo / PPA Media Services
Claim Number: FA1407001571520
Complainant is Ferman Motor Car Company, Inc., and Ferman of Countryside, LLC (“Complainant”), represented by Robert B. Gough of Hill, Ward & Henderson, P.A., Florida, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fermanford.com>, registered with Internet.bs Corp.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2014; the National Arbitration Forum received payment on July 30, 2014.
On July 30, 2014, Internet.bs Corp. confirmed by email to the National Arbitration Forum that the <fermanford.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fermanford.com. Also on August 1, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has operated a group of automobile and motorcycle dealerships in the Tampa Bay, Florida, area, since 1895. Complainant holds a U.S. trademark registration for FERMAN in the form of a design plus words. The registration issued in 2010 and reflects a first use in commerce date of 1998.
Complainant is in the process of obtaining a Ford automobile dealership franchise, which will do business as Ferman Ford. Complainant has registered the name Ferman Ford with the Florida Department of State, Division of Corporations. Complainant’s other dealerships operate under similar names, including Ferman Acura, Ferman BMW, Ferman Chevrolet, Ferman Chrysler, Ferman Jeep Chrysler, Ferman Mazda, Ferman MINI, Ferman Nissan, and Ferman Volvo, and these dealerships generally use domain names that combine the FERMAN mark with the automobile make.
Complainant contends that the disputed domain name is confusingly similar to its FERMAN mark. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant states that the domain name resolves to a pay-per-click landing page, the links on which relate to competing automotive sales and services. Complainant accuses Respondent of having registered the disputed domain name for the sole purpose of infringing on Complainant’s mark by creating confusion in the marketplace.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant alleges that Respondent was aware of Complainant’s mark at the time the domain name was registered, based upon the similarity of the domain name to the names used by Complainant for its various dealerships, and the use of the domain name to provide pay-per-click links to competitors of Complainant. Complainant alleges further that Respondent’s intent was likely to sell the domain name to Complainant or its competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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 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.”).
In the instant proceedings, there are two 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 National Arbitration 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 Complaint describes Ferman of Countryside, LLC, as “an affiliated company” of Ferman Motor Car Company, Inc., and states that the two entities share significant ties and common interests and have entered into a license agreement regarding the use of the FERMAN name, brand, and mark. The Panel considers these connections sufficient and thus treats the two entities as a single Complainant for purposes of this proceeding.
Complainant’s trademark is comprised of a design plus words, but its dominant aspect is clearly the word FERMAN. The disputed domain name incorporates that textual aspect of Complainant’s registered trademark, appending “Ford,” which describes goods and services sold by Complainant, and the “.com” top-level domain. These additions do not substantially diminish the similarity with Complainant’s mark. See, e.g., Ted Britt Ford Sales, Inc. v. Domains By Proxy, LLC, D2013-0784 (WIPO June 26, 2013) (finding <tedbrittchevrolet.com> confusingly similar to TED BRITT); Hudson v. Cook, FA 1377844 (Nat. Arb. Forum Apr. 20, 2011) (finding <jimhudsonford.com> confusingly similar to JIM HUDSON); Quirk Works, Inc. v. Maccini, FA94963 (Nat. Arb. Forum July 13, 2000) (finding <quirkmazda.com> confusingly similar to QUIRK). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark and is identical to the name of Complainant’s Ford dealership. The evidence suggests that it was registered for the purpose of profiting by confusion with Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name that incorporates Complainant’s mark and is identical or analogous to the names of Complainant’s automobile dealerships, together with the use of the domain name to link to competing websites, presumably for Respondent’s commercial benefit, is indicative of bad faith under paragraph 4(b)(iv). See, e.g., Philpott Motors, Ltd. v. Keyword Marketing, Inc., FA1072905 (Nat. Arb. Forum Oct. 8, 2007). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fermanford.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 27, 2014
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