The Ford Foundation v. Technology Services Ltd. / Ms Lacy Ana De Oliveira
Case No. D2007-1711
1. The Parties
The Complainant is The Ford Foundation, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Technology Services Ltd. / Ms Lacy Ana De Oliveira, Paris, France.
2. The Domain Name and Registrar
The disputed domain name <fordfound.com> is registered with NameKing.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to NameKing a request for registrar verification in connection with the domain name at issue. On November 26, 2007, NameKing transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2007.
The Center appointed Simon Minahan as the sole panelist in this matter on December 21, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The panel finds the following matters to be uncontroverted and established as fact for the purposes of this decision.
The Complainant is a well known charitable foundation which has been established since 1936 and carries out its mission worldwide of strengthening democratic values, reducing poverty and injustice and promoting international cooperation. It has done so under the name Ford Foundation since its creation and has done so for decades. The Complainant holds several registrations of FORD FOUNDATION as a trademark in a variety of classes and has held these registrations for many years.
In addition the Complainant is the holder of the registered domain <fordfound.org> which it has held since 1993 and from which it operates its primary website.
The Respondent registered <fordfound.com> on February 23, 2004 but has no licence or other authority from the Complainant to use the FORD FOUNDATION mark. Nor does it appear from any evidence that the Respondent is otherwise known by the mark or the expression “fordfound” or a similar name.
The disputed domain name is being used commercially by the Respondent in connection with a website which links to various pages maintained by various organizations offering scholarships and similar grants. Attempts to contact the Respondent at the address provided in the Whois of the Registrar have disclosed that the Respondent is not known at that address
5. Parties’ Contentions
A. Complainant
The Complainant contends the disputed domain name <fordfound.com> is identical or confusingly similar to the FORD FOUNDATION trademark. It contends that a domain name incorporating a common abbreviation of a trademark may be found to be identical or confusingly similar to subject mark and refers to several WIPO panel decisions supporting this contention including United Media Limited Liability Company v. Eric Wolf,
WIPO Case No. D2007-0631. It further contends that the addition of the gTLD signifier is legally insignificant in considering the question of whether the domain name is identical or confusingly similar and cites WIPO UDRP decisions supporting this now trite proposition.
The Complainant also contends that the FORD FOUNDATION mark is now so famous that Internet users would think the disputed domain name was associated with the Complainant in some way and cite a recent WIPO UDRP decision – The Ford Foundation v. Chen Bao Sui
WIPO Case No. D2007–0862 in support of this contention.
Further, the Complainant contends that selection of the <fordfound.com> domain name was done deliberately with knowledge of its own domain names and with mala fides and is therefore not legitimate. Further, it says that the use of the domain name in connection with a website linking to other, rival charities and philanthropic organizations does not constitute a bona fide commercial use nor is it a legitimate non-commercial use nor does it comprise the basis for claiming some legitimate interest in the domain name (see e.g. International Save the Children Alliance v Rizwan QureshiWIPO Case No. D2005-1039).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts the contentions of the Complainant and finds that the domain name is plainly confusingly similar to the FORD FOUNDATION trademark. In so finding the panel endorses the approach taken with respect to abbreviated marks applied in domain names annunciated in United Media Limited Liability Company v. Eric Wolf,
WIPO Case No. D2007-0631.
Moreover the Panel is of the view that the Complainant has a common law trademark interest in the expression “foundford” arising out of its relatively long standing control and use of the “www.foundford.org” website.
B. Rights or Legitimate Interests
The Complainant contends that Respondent has no apparent rights or legitimate interests in the trademark underlying the domain name nor in the disputed domain name itself. Certainly, the Respondent is not using the disputed domain name with the licence of the Complainant or in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), nor in a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). The Complainant has therefore made a prima facie showing of a want of right or interest in the Respondent in the disputed domain name. The onus accordingly falls on the Respondent to establish such right or legitimacy: Document Technologies, Inc v. International Electronic Communications Inc.
WIPO Case No. D2000-0270; Experian Information Solutions Inc v. Credit Research, Inc.WIPO Case No. D2002-0095.
According to paragraph 4(c) of the Policy the Respondent may demonstrate its rights or legitimate interests in the domain name by proving any of the following:
(i) before any notice of the dispute, its use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making legitimate noncommercial or fair use of the domain name without intent for commercial gain, misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that this is not an exhaustive list of possible proofs.
The Respondent has not provided any evidence along these – or any – lines of its rights or legitimate interests in the mark underlying the domain name and so the Panel finds the Respondent has no such right or legitimate interest.
C. Registered and Used in Bad Faith
The Panel accepts the contention that the Respondent must have been aware of the Ford Foundation when it selected and registered the disputed domain name. It finds that the Respondent was opportunistic in registering the name and had used it illegitimately in order to leverage the Complainant’s fame to the Respondent’s commercial advantage. (see e.g.Guerlain S.A. v. SL, Blancel WebWIPO Case No. D2000-1191; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,
WIPO Case No. D2000-0163.
Further it finds that the patent inaccuracy of contact detail in the registration record, taken with the use to which the domain name has been put, further sustains the finding of bad faith registration and use (see e.g.Telstra Corp. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fordfound.com> be transferred to the Complainant.
Simon Minahan Sole Panelist
Dated: January 3, 2008
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