Ford Motor Company v Carlos Henrique Souza Barbosa, CHSB

WIPO Case No. D2025-1142

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. CARLOS HENRIQUE SOUZA BARBOSA, CHSB
MARKETING

Case No. D2025-1142

1. The Parties

The Complainant is Ford Motor Company, United States of America (“United States”), represented by Kucala

Burgett Law LLC, United States.

The Respondent is CARLOS HENRIQUE SOUZA BARBOSA, CHSB MARKETING, Brazil.

2. The Domain Name and Registrar

The disputed domain name <fordbrasil.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2025. On March 20, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 20, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (Registration Private, Domains By Proxy LLC,

DomainsbyProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 27, 2025.

The Respondent sent email communications to the Center on March 21 and 23, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on March 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2025. The Respondent did not submit any formal response. The

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Respondent sent email communications to the Center on April 2 and April 3, 2025. Upon the Complainant’ s request dated April 8, 2025, the proceedings were suspended on April 9, 2025 to May 9, 2025 for settlement discussions. On April 9, 2025, the Complainant sent the Settlement Form to the Respondent for his

countersignature. It also sent another email to the Respondent on April 15, 2025 inviting the Respondent to countersign the settlement form in order to settle this proceeding. The Complainant requested that the proceedings be reinstituted on April 21, 2025, since the Respondent had not responded to any of the Complainant’s communications regarding settlement. On April 25, 2025, the Center informed the parties that the present UDRP proceeding was reinstituted as of April 25, 2025, further to the Complainant’s request for reinstitution. The Respondent sent email communications to the Center on April 28, 2025. Accordingly, the Center notif ied the commencement of panel appointment process on May 7, 2025.

The Center appointed Federica Togo as the sole panelist in this matter on May 15, 2025. The Panel f inds 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

It results f rom the Complainant’s undisputed allegations that it was founded in 1903 and is a global automotive industry leader. It manufactures and distributes automobiles across six continents and employs approximately 170,000 employees worldwide. There are approximately 9,000 Ford dealerships worldwide and approximately 300 Ford dealerships in Brazil. In addition, it established Ford Motor Company Brasil Ltda., a Brazilian subsidiary, commonly known as Ford Brasil in 1919, which opened its f irst automotive manufacturing plant in Brazil in 1921 and produced FORD vehicles for 100 years until it ceased all production in Brazil in 2021. Today, Ford Brasil imports FORD vehicles from other markets to sell in Brazil through its many Ford Brasil dealerships.

The Complainant is the registered owner of several trademarks worldwide for FORD, e.g., United States
Trademark Registration No. 74,530 registered on July 20, 1909 for “automobiles and their parts”.

In addition, it operates official websites at the domain names <ford.com> and <ford.com.br> and it uses many other Ford-related domain names that are registered in “.com,” “.com.br” and other country code Top- Level domains to designate the countries in which it conducts business.

The disputed domain name <fordbrasil.com> was registered on April 15, 2024, and is currently inactive. Furthermore, the undisputed evidence provided by the Complainants proves that the on April 16, 2024, the Respondent sent a solicitation email to Ford Brasil to discuss the disputed domain name’s sale or other monetary arrangement regarding the disputed domain name’s use, providing his contact information.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the term “Brasil” and the generic Top-Level Domain (“gTLD”) “.com”. It further contends that its trademark FORD is widely known throughout the world. The geographic term adds no distinctiveness to the disputed domain name. Rather, the entire emphasis remains on the FORD mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, Respondent is not known by the disputed domain name, has

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not been authorized by the Complainant to use the FORD marks in any way, has no connection or af f iliation domain name carries a high risk of implied af f iliation with the famous FORD mark. The Respondent’s registration of the disputed domain name follows a well-known naming convention that combines a famous brand with a geographic term which suggests to the public that there is an af f iliation with the mark owner.
with the Complainant, and has not made a bona f ide use of the disputed domain name. As a result,

Finally, the Complainant contends that the disputed domain name was registered and was being used in bad faith. According to the Complainant, given the strength and fame of the FORD marks, the Respondent’s bad faith is established by the fact of registration alone. The FORD mark 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. Bad faith is further established by the Respondent immediately contacting Ford Brasil after the Respondent registered the disputed domain name and of fering to sell it or restrict its use for money. The Respondent clearly was aware of the FORD mark and was driven by opportunistic motives and bad faith to capitalize on, or otherwise take advantage of , the Complainant’s trademark rights, for the Respondent’s own commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and did not submit any formal response. However, in the email communication sent to the Center on March 21, 2025 he affirmed that “(…) I acquired this domain with the genuine intention of offering it to Ford to prevent any potential misuse and brand-related issues. I even attempted to contact the company via email to discuss a possible agreement, but

unfortunately, I did not receive any response. My goal has always been to ensure that the domain remains in the right hands, avoiding any inconvenience for the brand. I am fully open to cooperating and f inding a solution that benef its all parties involved. (…)”.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisf ied.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “brasil”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered and well- known trademark FORD entirely and the geographic term “brasil” (i.e., indicating Brazil in Portuguese language). The nature of this disputed domain name carries a risk of implied affiliation: in fact, geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel shares the view of other UDRP panels and f inds that the Complainant’s trademark FORD is well known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known the Complainant’s trademark when registering the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s trademark followed by the geographic term “brasil”. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaf f iliated entity can by itself create a presumption of bad faith, WIPO Overview 3.0 section 3.1.4. The Panel shares this view.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having

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reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s
trademark FORD, and the composition of the disputed domain name entirely including the well-known
trademark FORD plus a geographic term and finds that in the circumstances of this case the passive holding
of the disputed domain name does not prevent a f inding of bad faith under the Policy.

Finally, the undisputed evidence provided by the Complainant proves that the on April 16, 2024, the Respondent sent a solicitation email to Ford Brasil to discuss the disputed domain name’s sale or other monetary arrangement regarding the disputed domain name’s use, providing his contact information. In addition, after filing of the Complaint, the Respondent sent an email communication on March 21, 2025 to the Center af f irming that his intention in acquiring the disputed domain name was to of fer it to the Complainant and that he was open to cooperating and finding a solution that benefits all parties involved. However, it did not countersign the Settlement Form sent by the Complainant on April 9, 2025 in order to settle this proceeding.

In the light of the above, this Panel is convinced that not only the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name, but it also tried to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for the Respondent’s own commercial gain, by of fering to sell the name to the rightful owner.

The Panel f inds that the Complainant has established the third element 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 <fordbrasil.com> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: May 29, 2024