The Complainant is Ford Motor Company of Michigan, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Domain Administrator of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <fordmotorcraft.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2008. On December 3, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 3, 2008, Moniker Online Services, LLC 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” or “UDRP”), 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 December 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 7, 2009.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 20, 2009. 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 Complainant, Ford Motor Company, is the well-known vehicle manufacturer and supplier of related products and services. The Complainant has used the trademark FORD since 1895. The Complainant's first registered trademark for FORD, United States ( or “U.S.”) trademark registration number 0074530, dates from 1909 and the Complainant now maintains 118 active U.S. trademark registrations for FORD in total. The FORD trademark is in extremely wide use internationally, notably being affixed to millions of new vehicles every year, and is ranked 49th out of the 100 strongest trademarks in the world in the Business Week and Interbrand Best Global Brands 2008 survey.
The Complainant has used the trademark MOTORCRAFT since 1959 to designate parts designed for the Complainant's Ford, Lincoln and Mercury vehicles and sold in their respective dealerships, together with other major repair and retail locations. The MOTORCRAFT mark is also used by the Complainant as the brand name for best selling and rated motor oil. The Complainant holds an extensive portfolio of registered trademarks for MOTORCRAFT having obtained the first of these in 1961 in the United States of America, registration number 0709311. The Complainant has operated a website advertising its MOTORCRAFT parts at the domain name <motorcraft.com> since 1996. On this website and elsewhere, the Complainant typically uses the words FORD and MOTORCRAFT together in a single device. The Complainant spends millions of dollars each year to promote its MOTORCRAFT parts including by way of prominent sponsorships of NASCAR and National Hot Rod Association teams and events.
The Respondent registered the disputed domain name on December 25, 2001. As at the date of this Decision, the website associated with the disputed domain name displayed a series of hyperlinks relating to the Complainant's products and those of its competitors.
5. Parties' Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant's trademarks, consisting of a combination of two registered trademarks organized in the same order in which they are featured in the Complainant's own advertising.
The Respondent cannot claim or establish any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, has not been authorized by the Complainant to use its trademarks in any way, and has never made any bona fide use of the disputed domain name. At the time that the Complainant discovered the Respondent's registration, the Respondent was using, and continues to use, the disputed domain name to display pay-per-click advertising for the Complainant's direct and indirect competitors including, for example, Honda, BMW, and Mitsubishi. Screenshots captured by Archive.org show that in 2002 the disputed domain name was being used to display generic pay-per-click advertising. On or around July 30, 2004, Archive.org was instructed via robots.txt not to save screenshots relating to the disputed domain name.
The Respondent's use of the disputed domain name to redirect Internet users to unrelated websites does not constitute use in connection with a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. The current use suggests that the Respondent is attempting to profit from the stream of visitors who seek the Complainant's website. Pay-per-click landing pages are not legitimate when, as here, the advertisements displayed are keyed to the trademark value of the domain name.
The Respondent has registered and used the disputed domain name in bad faith. Given the strength and fame of the Complainant's trademarks, the Respondent's bad faith is established by the fact of registration alone. The Complainant's FORD trademark falls within a select class of internationally strong marks that have become so famous that it is impossible for any Respondent to claim that he was unaware of the Complainant's prior rights or has a legitimate interest in domain names that incorporate the mark.
The Respondent's awareness of the Complainant and, thus, bad faith is demonstrated by the Respondent's use of the disputed domain name to host a website displaying advertisements for automobiles and automobile parts, as well as by the use of the phrase “For ads on Motorcraft Parts Online and Ford Engines” at the top of the website homepage.
The Respondent's use of a domain name that is confusingly similar to the Complainant's mark to host a website offering competing goods and services for sale is classic cyber piracy and constitutes compelling evidence of bad faith in the registration and use of the disputed domain name together with evidence of business disruption.
The Respondent appears to be operating under a fictitious name and to have provided false and fictitious contact information, as the mailing address that Moniker Online Services, LLC restored to the WhoIs record is incomplete and “Domain Administrator” is a generic term and not a proper noun.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Each of the two words “ford” and “motorcraft” which make up the disputed domain name (disregarding the generic top level domain “.com” as is customary in cases under the Policy) are identical to separate registered trademarks of the Complainant. The Complainant has demonstrated that it commonly uses these two trademarks together and in the same order in which they appear in the disputed domain name. It is well accepted in cases under the Policy that the use of two trademarks in combined form within a disputed domain name is such as to render the disputed domain name confusingly similar to both marks. See, for example, Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,
WIPO Case No. D2003-0112 and Société des Produits Nestlé SA v. Stuart Cook,
WIPO Case No. D2002-0118.
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.
B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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 trademark or service mark at issue.
The Respondent did not respond to the Complaint, and as such it did not submit any evidence demonstrating rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has no such rights or legitimate interests and submits that the Respondent is not known by the disputed domain name, is not authorised by the Complainant to use it and has never made any bona fide use of it. The Complainant also provides screenshots demonstrating the recent use of the disputed domain name by the Respondent for a website displaying pay-per-click advertising for the Complainant's direct and indirect competitors and past use in 2002 for more generic advertising.
Having examined the screenshots, the Panel agrees with the Complainant that the Respondent's website aims to profit by way of the pay-per-click landing page from a stream of visitors who are seeking the Complainant's website. The advertisement links, for example headed “Ford motor”, “New Ford car”, “BMW” and “Honda” have a direct connection to the value of the Complainant's trademarks as contained in the disputed domain name. Such use of the disputed domain name by the Respondent is not a bona fide offering of goods or services and cannot in the mind of the Panel confer any rights or legitimate interests upon the Respondent.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
On this subject, the Complainant asserts that the Respondent's bad faith is established by registration alone of the disputed domain name given the strength and fame of the Complainant's trademarks and accordingly, the Respondent cannot claim that he was unaware of the Complainant's prior rights. The Complainant submits that the Respondent's use of the phrase “For ads on Motorcraft Parts Online and Ford Engines” at the top of the website homepage also demonstrates bad faith, as does the use of a domain name that is confusingly similar to the Complainant's mark to host a website offering competing goods and services for sale.
The Panel is satisfied on the basis of the Complainant's submissions that the Respondent registered the disputed domain name with the Complainant and its trademarks in mind and, thereafter, used it to target Internet traffic from visitors who were seeking the Complainant's own website at “www.motorcraft.com”. It is clear on the basis of the current use of the disputed domain name and the past use dating from 2002 that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
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, <fordmotorcraft.com> be transferred to the Complainant.
Andrew D. S. Lothian Sole Panelist
Dated: January 27, 2009
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