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FordMustang.com pointed to Nissan and a #UDRP settled it

The registrant of the domain FordMustang.com wasn’t a Ford fan, apparently, opting to point the domain to Nissan USA instead.

Automotive giant, Ford Motor Company, asked for the domain to be transferred, to which the registrant agreed. No such action took place, however, and Ford filed a UDRP to get the domain via this process.

The sole panelist at the WIPO found that the combination of the two marks, FORD and MUSTANG is not coincidental, and ordered the domain to be transferred to the Complainant.

Full details on the decision for FordMustang.com follow:

Ford Motor Company v. Domain Admin, Whois Privacy Corp.
Case No. D2020-1674

1. The Parties

The Complainant is Ford Motor Company, United States of America (“United States” or “U.S.”), represented by Phillips Winchester Attorneys at Law, United States.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <fordmustang.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on September 14, 2020. 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 was founded in 1903 and is a global automotive industry leader. It manufactures and commercializes automobiles worldwide.

The Complainant is the owner of the well-known FORD trademark which has been used continuously in connection with automobiles and automobile parts since 1895 in the United States. The brand FORD is known in many places around the world.

The Complainant obtained its first U.S. trademark for FORD in 1909. The Complainant currently owns many registrations for FORD in the U.S. and worldwide, including:

– U.S. Registration No. 74,530 for FORD, registered on July 20, 1909 for automobiles and their parts; and,

– U.S. Registration No. 643,185 for FORD, registered on March 26, 1957, for passenger cars and trucks.

The name MUSTANG is also a well-known Ford trademark. Ford introduced Ford Mustang automobiles at the New York World’s Fair on April 17, 1964 and has been manufacturing the iconic auto continuously since that time. The Ford Mustang automobiles are notably promoted on Ford’s official website at “www.ford.com/cars/mustang”.

The trademark MUSTANG was registered by the Complainant in the U.S. on December 1, 1987 (Registration No 1,467,208).

The disputed domain name was registered by the Respondent on June 13, 2015.

The Respondent has first used the disputed domain name to resolve to webpages displaying pay-per-click advertising links related to Ford Mustang automobiles, to a celebrity gossip website, to webpages on “www.nissanusa.com” and to “www.edmunds.com”, an auto information website on new and used automobiles of various brands.

The Respondent currently used the disputed domain name to resolve to a webpage on “www.nissanusa.com”, a competitor of the Complainant.

On May 29, 2019, the Complainant delivered a demand letter to the Respondent asking for the transfer of the disputed domain name. The copy delivered by mail was returned by the post office as undeliverable.

On June 11, 2019, the Respondent answered via email “okay, we will transfer the domain name”. The Complainant’s counsel asked the respondent to unlock the disputed domain name and provide the authorization code to Complainant’s IT manager. The Respondent appeared to agree to a conditional transfer, but, despite the Complainant’s willingness to proceed, the transfer of the disputed domain name did not occur.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant raises that the disputed domain name is composed of two famous trademarks FORD and MUSTANG which are both owned by the Complainant and used for a famous sports car. This is sufficient to establish identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy.

Secondly, the Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name: the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the FORD or MUSTANG marks, has no connection or affiliation with the Complainant, and has never made a bona fide use of the disputed domain name. In particular, the Respondent has used the disputed domain name to resolve to various infringing and illegitimate websites and to websites on which products of Complainant’s competitors are offered for sale.

Thirdly, the Complainant contends that many factors demonstrate Respondent’s bad faith. First of all, given the strength and the fame of the Complainant’s trademarks FORD and MUSTANG, Respondent’s bad faith is established by the fact of registration alone. The combination of FORD and MUSTANG which are both registered trademarks are inexplicable other than as a reference to Ford Mustang automobiles. Furthermore, Respondent’s use of the disputed domain name to direct traffic to websites advertising competing autos for sale demonstrates bad faith use. Finally, Respondent’s provision of false or inaccurate contact information, such as the invalid mailing address also suggests an effort to avoid accountability for misusing a trademark which supports the inference of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar

The Complainant showed it has trademark rights in FORD and MUSTANG through several trademark registrations worldwide.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain name contains both FORD and MUSTANG without any other elements other than the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name (e.g., “.com”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 11.1.1.

Under the circumstance, the Panel concludes that the disputed domain name is identical to the Complainant’s marks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.

The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the FORD or MUSTANG marks, has no connection or affiliation with the Complainant, and has never made a bona fide use of the disputed domain name. In addition, the Complainant shows that the Respondent has used the disputed domain name to resolve to various infringing and illegitimate websites and to websites on which products of Complainant’s competitors are offered for sale.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.

The Respondent has chosen not to reply.

No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name.

In view of the above and in the lack of any denial by the Respondent, the Panel is satisfied that it is more than likely that the Respondent uses the disputed domain name without a bona fide offering of goods or services.

In addition, the Panel notes the nature of the disputed domain name which is identical to the FORD and MUSTANG trademarks. The Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation (see section 2.5.1. of the WIPO Overview 3.0).

Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts that the FORD trademark qualifies as a well-known trademark. Furthermore, the Complainant has shown that the MUSTANG trademark has been registered and used for decades worldwide and can thus be considered as famous for automobiles. Both marks are advertised all around the world in relation with the prestigious sports car manufactured and commercialized by the Complainant.

The combination of the two marks in the disputed domain name cannot be coincidental.

Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the identical disputed domain name (see WIPO Overview 3.0, section 3.2.2).

Furthermore, the website linked to the disputed domain name redirects Internet users to websites of the Complainant’s competitors. This obviously falls in the scope of bad faith use as defined by the Policy.

The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.

In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service in the context of this case, is an indication that the Respondent intentionally hides its identity and uses the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6).

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fordmustang.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: September 28, 2020


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