Ford Motor Company v. Private Whois Service
Claim Number: FA1103001375972
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fordgenuinepartsonline.com>, registered with Internet.bs Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 3, 2011; the National Arbitration Forum received payment March 3, 2011.
On March 7, 2011, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <fordgenuinepartsonline.com> domain name is registered with Internet.bs Corp and that Respondent is the current registrant of the name. Internet.bs Corp verified that Respondent is bound by the Internet.bs Corp registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2011, 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@fordgenuinepartsonline.com. Also on March 9, 2011, 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 March 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following assertions:
1. The domain name that Respondent registered, <fordgenuinepartsonline.com>, is confusingly similar to Complainant’s FORD GENUINE PARTS mark.
2. Respondent has no rights to or legitimate interests in the <fordgenuinepartsonline.com> domain name.
3. Respondent registered and used the <fordgenuinepartsonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ford Motor Company, uses its FORD GENUINE PARTS mark in connection with the promotion and sale of its automotive parts. Complainant’s FORD GENUINE PARTS mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,130,598; filed December 30, 2003; issued August 15, 2006).
Respondent registered the disputed domain name July 27, 2005. The disputed domain name resolves to a parked website containing Complainant’s FORD mark and hyperlinks to third-party websites in the automotive industry. Respondent presumably receives click-through fees from these links.
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."
Given 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 will draw such inferences as the Panel 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) of the Policy requires Complainant to 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.
Complainant asserts rights in its FORD GENUINE PARTS mark based on its registration of the mark with the USPTO (Reg. No. 3,130,598; filed December 30, 2003; issued August 15, 2006). The Panel finds that Complainant’s USPTO registration is sufficient evidence of Complainant’s rights in the FORD GENUINE PARTS mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that Complainant’s rights in the mark date back to the filing date of the trademark application, December 20, 2003. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Additionally, the Panel finds that it is irrelevant whether or not Complainant registered its FORD GENUINE PARTS mark in the country where Respondent resides, as Policy ¶ 4(a)(i) only requires that Complainant establish rights in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <fordgenuinepartsonline.com> domain name is confusingly similar to Complainant’s FORD GENUINE PARTS mark. The disputed domain name eliminates the spaces between the terms of Complainant’s mark and then merely adds the generic term “online” and the generic top-level domain (“gTLD”) “.com.” Addition of the term “online” renders a domain name confusingly similar when added to a complainant’s mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel also finds that removal of spaces and addition of a gTLD are not distinguishing characteristics as spaces are impermissible in domain names and a top-level domain is a required element. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <fordgenuinepartsonline.com> domain name is confusingly similar to Complainant’s FORD GENUINE PARTS mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The requirements of Policy ¶ 4(a)(i) dictate that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof shifts to Respondent. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant made its prima facie case. Respondent, with the burden of proof effectively shifted to it, failed to submit any response and therefore no evidence of its rights and legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Nevertheless, despite Respondent’s failure to respond, the Panel elects to consider the Policy ¶ 4(c) factors before making a determination on Respondent’s rights or legitimate interests.
Complainant urges that Respondent is not, and has not been, commonly known by the <fordgenuinepartsonline.com> domain name. The WHOIS information fails to provide any evidence that Respondent is commonly known by the disputed domain name. Where the WHOIS information yields no meaningful connection between the respondent’s name and the disputed domain name, the respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent’s <fordgenuinepartsonline.com> domain name resolves to a website featuring click-through links, from which Respondent likely receives some sort of revenue, to third-party websites in the automotive industry. The Panel finds that Respondent’s use of the disputed domain name to resolve to a parked website with no content other than links to Complainant’s competitors in the automotive industry is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Where a respondent registered and used a disputed domain name for the purpose of displaying pay-per-click links to various third-party businesses, specifically those in competition with the complainant, the respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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).”). This Panel finds that in this case Respondent registered and is using the <fordgenuinepartsonline.com> domain name to feature links to Complainant’s competitors in the automotive industry. Consequently, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant urges as well that Respondent’s registration and use of the disputed domain name to maintain a links directory to both competing and unrelated websites, presumably for financial gain, is further evidence of Respondent’s bad faith. The Panel agrees and finds that Respondent, through its registration and use of the <fordgenuinepartsonline.com> domain name, has acted in bad faith 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fordgenuinepartsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 11, 2011.
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