Ford Motor Company v. PrivacyProtect.org / Domain Admin
Claim Number: FA1112001418588
Complainant is Ford Motor Company (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fordprotect.com>, which is registered with Interdominios, Inc. (“Interdominios”).
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 6, 2011; the Forum received payment on December 6, 2011.
On December 14, 2011, Interdominios confirmed by e-mail to the Forum that the <fordprotect.com> domain name is registered with it and that Respondent is the current registrant of the name. Interdominios also verified that Respondent is bound by its 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 December 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@fordprotect.com. Also on December 19, 2011, 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.
A timely Response was received and determined to be complete on January 9, 2012.
An Additional Submission from Complainant was received and determined to be compliant with Article 7 of the Forum’s Supplemental Rules on January 17, 2012.
On January 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a very well-known automobile manufacturer, with its Head Office in the USA, but with subsidiaries making and selling automobiles all over the world.
It is the owner of numerous trademark registrations for the word FORD both in block capitals and in script form within an oval, as well as a registration of the domain name <ford.com> which was registered in 1988 and at which it operates an extensive website.
Complainant states that it sold its first automobile in 1903, and that it has traded under the FORD name ever since. It states that the name FORD is famous as it stands at No. 50 on the 2010 list of TOP 100 Best Global Brands.
In addition, Complainant also owns trademark registrations for the word FORD PROTECT which it uses in connection with the promotion and sale of service and maintenance plans for vehicles.
Complainant contends that the disputed domain name <fordprotect.com> is confusingly similar to its trademarks FORD and FORD PROTECT.
Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name because it is not affiliated to itself or authorized to use the names FORD or FORD PROTECT. Furthermore, Respondent has none of the defences available to it under Section 4(c) of the Policy. In addition, the website at the disputed domain name states that it is for sale.
Complainant contends that Respondent clearly knew of Complainant and its activities when the disputed domain name was registered, and that its intention must have been to disrupt Complainant’s business, an act which constitutes bad faith under the Policy.
Another example of bad faith, according to Complainant, is Respondent’s use of the disputed domain name to attract internet users to its website, thus creating a likelihood of confusion with Complainant’s trademark FORD as to the source, sponsorship, affiliation and endorsement of its website.
And finally, bad faith is also proved by the fact that, when registering the disputed domain name, Respondent must have misrepresented to Interdominios that it did not interfere with or infringe upon the rights of any third parties.
B. Respondent
A Response was filed by a D. Jose Manuel Piquer de Aynat who appears to be a Spanish individual and, for the purpose of this Decision, the Panel will refer to him as the Respondent, although he has not filed any evidence to link himself with the named Respondent – Privacyprotect.org/DomainAdmin – which has an address is Australia, not Spain.
Respondent claims to have worked, at one time, as the commercial director of a Ford Motor Company dealer in Spain and, during his time with them, he registered the disputed domain name under the parameter of Ford Spain S.L., and with the delegation of the Ford Motor Company. His purpose in doing so was to advise and market the “Ford-Protect” product and, during the time that the website at the disputed domain name was operational, he claims that other Ford dealers in Spain showed an interest in it.
However, the Ford dealer where he worked ceased trading, and his employment with it ceased. He deleted any information about Ford products from the site at the disputed domain name and it now contains only basic information. The reference to it being for sale is for no other purpose than to sell it to another Ford Dealer.
Respondent believes that he has always acted in good faith and no one ever told him that his actions were unlawful.
C. Additional Submissions
An Additional Submission was filed, in which Complainant refutes all of Respondent’s claims, stating that –
· Respondent was not, and never has been, authorized to use the FORD name. Nor was the dealership Automecanica Almeriense S.A. for whom Respondent claims to have worked.
· The disputed domain name was registered on April 5, 2011, and the said dealership was terminated only a few months later in October 2011
· Respondent has submitted no proof of his claim that Ford Spain SL was aware that the disputed domain name had been registered. Indeed if there had been an authorization to register the name, it would have been granted to Automecanica Almeriense S.A. not to any individual working for that company.
· In July 2011, the website at the disputed domain name purported to sell FORD PROTECT service contracts at a great discount and when a Ford employee attempted – unsuccessfully – to purchase such a contract, the response he received led him to conclude that its true purpose was simply to collect personal customer information.
· Although Respondent claims in the Response not to seek to profit from the site, it still proclaims that it is for sale and Complainant is not aware of any offer to transfer the name to Complainant. Indeed, by filing a Response to the Complaint, Respondent now appears to be resisting any such sale.
· Failure to make any active use of the disputed domain name is contrary to supporting a claim to have made bona fide use of it.
· Although Respondent claims to wish to sell the disputed domain name to another Ford dealer, there is no limitation put upon the offer to sell on the site. Indeed no Ford dealer would be permitted to use the disputed domain name. Complainant’s dealers are only permitted to use the Ford name and trademarks under licence.
Complainant is a very famous automobile manufacturer and its vehicles can be seen on roads all over the world. Its name and distinctive blue logo are known and recognized the world over.
Respondent has an address in Australia, but a Response was filed by a Spaniard, Sr. Piquer de Aynat, who is clearly the true owner of, and the instigator behind, the disputed domain name. However, he has provided no evidence to link himself with the Respondent whose name is on the books of the Registrar, Interdominios as its owner. He also claims to have been, at one time, employed by a Ford dealer in Spain, until the company went out of business and he lost his job. But he registered the domain name when he was thus employed.
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.
Complainant has registrations of the word FORD in many countries – including Spain. It was first registered in the USA in 1909 and Complainant provided a copy of the first page of its earliest US trademark for FORD No. 74,530 for “Automobiles and their parts” in Class 12.
Complainant also owns applications or registrations of the words FORD PROTECT in 30 countries and supplied copies of two European Community trademark registrations for these words Nos. 3,116,373 registered as from April 2, 2003 and 4,473,633 registered as from June 6, 2005.
It is very well established through a host of Decisions under the Policy that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark. For example, in the decision in the case of V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum September 7, 2004) the Panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET. Also, in the case of Allianz of America Corporation v. Lane Bond FA 680624 (Nat. Arb. Forum June 2, 2006) it was found that the addition of the generic term “finance,” which described the Complainant’s business, did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark ALLIANZ; and in The Gillette Co. v. RFK Associates, FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL.
Thus, the Panel finds that Complainant has valid rights in the names FORD, which is confusingly similar to the disputed domain name, as well as in the words FORD PROTECT which is identical to it, and so the Panel has no hesitation in finding that Policy ¶ 4(a)(i) is proved.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006).
In this case, the Panel finds that Complainant has indeed made out a prima facie case. Therefore, the burden shifts to Respondent. However, in the opinion of the Panel he has failed to do so.
It is difficult to think of any reason why Respondent should have rights or legitimate interest in the disputed domain name which consists, as it does, of the name of a service offered by Complainant and of which Respondent was well aware, since he was employed by an overseas distributor of Complainant’s automobiles. As Complainant points out, its policy is only to license its distributors to use its trademarks, never to permit them to register them themselves, especially not to include them in a domain name not owned by itself or one of its distributors
In this case, Respondent had no right to adopt one of Complainant’s names even if it was – as he maintains – with a view to selling it to another Spanish distributor. Even that excuse has been proved false by Complainant one of whose employees attempted to contact the website at the disputed domain name only to learn that the true purpose of the message on it offering the name for sell was but a front for attempts to obtain his name and contact details.
It was held, for example, in Bank of America Corporation v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum September 30, 2001), quoting with approval the Decision in Hewlett Packard Co. v. High Performance Networks, Inc, FA 95083 (Nat. Arb. Forum July 31, 2000) that a general offer to sell a domain name permits an inference that Respondent lacks rights to or a legitimate interest in the domain name.
In this case, Respondent has made no use whatsoever of the disputed domain name and it was held in Hewlett Packard Company & Hewlett Packard Development Company v. Alon Shemesh, FA 434145 (Nat. Arb. Forum April 20, 2005) that the passive holding of a domain name that is identical to a Complainant’s mark is not a bona fide offering of goods or services.
On the basis of these clear precedents, the Panel finds that Policy ¶ 4(a)(ii) is also proved.
Paragraph 4(b) of the Policy sets out 4 examples of bad faith and, in this case, the Panel believes that Respondent is guilty of at least three of them. In this instance –
· Respondent has admitted that the disputed domain name was registered with a view to either selling it or transferring it to another Ford distributor;
· The registration of the disputed domain name would disrupt Complainant’s business in Spain;
· The disputed domain name was intentionally registered so as to attract users to the site and thereby create confusion with Complainant’s trademarks FORD and FORD PROTECT.
Thus Policy ¶ 4(a)(iii) is also amply proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fordprotect.com> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: February 1, 2012
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