Ford Motor Company v Domain Administrator, Fundacion Privacy Services

WIPO Case No. D2025-1524

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ford Motor Company v. Domain Administrator, Fundacion Privacy Services
LTD

Case No. D2025-1524

1. The Parties

The Complainant is Ford Motor Company, United States of America (“United States” and “USA”), represented by Kucala Burgett Law LLC, United States.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names <fordbenefits.com>, <fordescape.com>, <jarretford.com>,
<matthewsford.com>, <myfordbenefit.com>, <riverheadford.com>, <sternsford.com>, and
<wwwmyfordbenefits.com> (the “Domain Names”) are registered with Media Elite Holdings Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2025. On April 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 21, 2025, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2025.

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The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 20, 2025. 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 in Dearborn, Michigan, United States, and manufactures and distributes automobiles across six continents, in approximately 200 markets, and employs approximately 170,000 employees worldwide. There are approximately 9,000 Ford dealerships worldwide and approximately 3,000 Ford dealerships in the United States.

The Complainant currently owns many registrations in the USA and around the world for the FORD word mark and for marks that incorporate “Ford”, including but not limited to the following (hereafter the “FORD Marks”):

- United States figurative mark FORD registered on July 20, 1909 under No. 74, 530;

- United States word mark FORD registered on March 26, 1957 under No. 643,185;

- United States figuratie mark FORD registered on January 21, 1930 under No. 266,454;

- United States word mark FORD registered on November 17, 1959 under No. 688,483; and

- United States word mark FORD registered on September 12, 1972 under No. 942,993.

The Complainant began using the ESCAPE mark in 2000 in connection with compact sports utility vehicles
(SUVs) and has continuously used the ESCAPE mark as a name for the “Ford Escape”. This vehicle has
been sold nationwide through the Complainant’s network of authorized dealerships and in countries around
the world. The Complainant owns registrations in the USA. and in countries around the world for the
ESCAPE mark and marks that incorporate “Escape”, including the following (hereafter the “ESCAPE

Marks”):

- United States word mark ESCAPE registered on May 15, 2001 under No. 2,451,325; and

- United States word mark ESCAPE registered on May 20, 2008 under No. 3,430,983.

The Complainant operates its official website at “ and it owns many domain names that
combine the FORD word mark with country-code Top Level Domains (“ccTLDs”) which correspond to the
countries in which it conducts business. The Complainant’s network of authorized Ford dealerships sells and
services Ford automobiles, and these dealerships are authorized by the Complainant to conduct business
under names that include the FORD Marks and the ESCAPE Marks (hereafter together the “Trade Marks”),
as set forth in the dealership agreements. Pursuant to these agreements and other policies, Ford
dealerships are granted use of the Trade Marks in domain names and websites. The dealership names and
domain names often comprise the FORD word mark and the business or family name of the dealership or a

name indicative of the geographic area in which the dealership is located.

The Respondent registered <jarretford.com> on December 16, 2004, <riverheadford.com> on July 15, 2004,
<matthewsford.com> on November 4, 1998, and <sternsford.com> on November 14, 2007, all of which are

identical or nearly identical to the names of authorized Complainant’s dealerships.

The Complainant owns the domain name <myfordbenefits.com> which is an official website of the
Complainant and portal for the Complainant’s employees and retirees to access and manage their benefits
information, including healthcare, retirement and other programs, and obtain information and assistance from
the Complainant regarding these benefits. Shortly after the Complainant registered <myfordbenefits.com> in
September 2009, the Respondent registered the Domain Name <myfordbenefit.com> on January 15, 2010,
<wwwmyfordbenefits.com> on January 31, 2010, and <fordbenefits.com> on March 2, 2015. These Domain
Names are nearly identical to the Complainant’s registered <myfordbenefits.com> domain name.

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Shorly after the Complainant launched the FORD ESCAPE vehicle in July 2000, the Respondent registered the Domain Name <fordescape.com> on November 14, 2001. The domain name <fordescape.com> is identical to the name of FORD ESCAPE vehicles.

At the time of filing this Complaint, the Domain Names are parked (e.g. the Domain Name
<riverheadford.com> resolved to a website featuring pay-per-click links), but <fordescape.com>,
<riverheadford.com>, and <jarretford.com> are connected to MX Records which enables use thereof for

communication purposes.

All of the Domain Names have changed IP addresses numerous times, including in the last several weeks
before filing the Complaint. The Respondent has redirected several of the Domain Names, including
<fordescape.com>, <jarretford.com>, <matthewsford.com>, <sternsford.com>, <myfordbenefit.com>,
<wwwmyfordbenefits.com>, and <fordbenefits.com>, to websites of the Complainant’s competitors. The

Respondent has also redirected the Domain Name <fordescape.com>, to a known malware distribution site.

All but the Domain Name <myfordbenefit.com> use the same name servers.

On May 26, 2019, the Complainant’s outside counsel sent the Respondent a cease-and-desist letter with respect to the Domain Name <fordescape.com>, demanding that all use of the Trade Marks stop and the Domain Name be transferred to the Complainant. The Respondent did not respond or comply.

The Respondent has no relationship with the Complainant, and the Respondent is not authorized to use any of the Trade Marks in connection with the Domain Names.

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 Domain Names, on the following grounds.

The Domain Names wholly incorporate the famous FORD Mark, which is sufficient to establish confusing
similarity under the Policy, despite the addition of other terms. The Domain Name <fordescape.com> wholly
incorporates the Trade Marks and corresponds to the name of the Complainant’s well-known FORD
ESCAPE vehicle. The Domain Names <jarretford.com>, <riverheadford.com>, <matthewsford.com>, and
<sternsford.com> are identical or nearly identical to names of authorized Complainant’s dealerships. The
Domain Names <myfordbenefit.com>, <wwwmyfordbenefits.com>, and <fordbenefits.com> are nearly
identical to the Complainant’s official benefits domain name <myfordbenefits.com>. For these reasons, the
Domain Names are confusingly similar to the FORD Marks and the ESCAPE marks in the case of
<fordescape.com>, and the Complainant satisfies Paragraph 4(a)(i) of the Policy.

Regardless of the Respondent’s identity, the Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not known by the Domain Names, has not been authorized by the Complainant to use the Trade Marks in any way, has no connection or affiliation with the Complainant, and has not made a bona fide use of the Domain Names. The Respondent’s use of the Domain Names has consisted of

redirecting them to websites of the Complainant’s competitors and to malware distribution websites, both of
which are not legitimate. At no time has the Respondent made a bona fide offering of goods or services or a

legitimate noncommercial or fair use under the Domain Names.

In addition, the nature of the Domain Names carries a high risk of implied affiliation with the Complainant.
The Domain Name <fordescape.com> is identical to the name of the FORD ESCAPE vehicle, which the
Complainant has sold for nearly 25 years. The Domain Names <jarretford.com>, <riverheadford.com>,
<matthewsford.com>, and <sternsford.com> are identical or nearly identical to names of official dealerships
and follow the well-established naming convention used by automotive dealerships. The Domain Names

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<myfordbenefit.com>, <wwwmyfordbenefits.com>, and <fordbenefits.com> are nearly identical to the

Complainant’s official benefits domain name <myfordbenefits.com>.

Accordingly, the Respondent cannot claim or establish any rights or legitimate interests in the Domain
Names, and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

Given the strength and fame of the FORD Marks, the Respondent’s bad faith is established by the fact of registration alone. The FORD Marks fall within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that they were unaware of the Complainant’s rights. The Respondent’s awareness of the FORD Marks is also inferred because the mark was registered with the United States Patent and Trademark Office long before Respondent’s registration of the Domain Names.

The Respondent’s registration of <fordescape.com> after the Complainant introduced the FORD ESCAPE vehicle to the market is clearly done in bad faith. The Respondent’s registrations of <jarretford.com>, <riverheadford.com>, <matthewsford.com>, and <sternsford.com> are also clearly done in bad faith because these Domain Names are identical or nearly identical to the Complainant’s dealership names and it is possible, if not likely, that consumers will end up on the Respondent’s websites while searching for these dealerships. The Respondent registrations of <myfordbenefit.com>, <wwwmyfordbenefits.com>, and <fordbenefits.com> are nearly identical to <myfordbenefits.com> which is used by the Complainant to operate its official employee benefits website. This identical nature of these Domain Names is strong evidence that the Respondent was aware of the Complainant’s prior rights and domain name, and deliberately chose to register a confusingly similar variant, evidencing bad faith.

The Registrant’s creation of MX records for several of the Domain Names is further evidence of bad faith, particularly in this case where the Domain Names, and email communications that may originate therefrom, are highly likely to deceive consumers into believing that such communications originate from, or are sponsored by, the Complainant. The Respondent’s conduct in using the Domain Names to redirect to the websites of the Complainant’s competitors further demonstrates bad faith. The Respondent’s conduct in using the Domain Names to redirect to the malicious websites disseminating malware also demonstrates bad faith. The Respondent was aware of the Trade Marks, of the Complainant’s dealerships, and of the Complainant’s <myfordbenefits.com> domain name, prior to registering the Domain Names and was driven by bad faith motives to capitalize on, or otherwise take advantage of, the Trade Marks, for the Respondent’s commercial gain.

These reasons justify the finding that the Respondent acted in bad faith under Paragraph 4(a)(iii) of the

Policy.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issue: Consolidation of Multiple Disputes

The Complainant has pointed at a number of circumstances which in its opinion demonstrate that the currently using similar IP addresses (the first seven digits are identical) and have been used in a similar way.

Domain Names are under common ownership or control. In particular, the Complainant points out that the

To the extent that the Complainant thereby argues that the various disputes should be consolidated, the
Panel notes that the named Respondent in the Complaint is a privacy service (Privacy Protected by
Fundacion Privacy Services LTD) and that the Registrar has confirmed that the Domain Names were all

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registered by Domain administrator, Fundacion Privacy Services LTD. Further, the UDRP Rules define a
respondent as “the holder of a domain-name registration against which a complaint is initiated”, and
paragraph 3(c) of the Rules states that a “complaint may relate to more than one domain name, provided
that the domain names are registered by the same domain-name holder”. Noting all of the above, the Panel
considers this a case with a single respondent without the need to address consolidation (see, for previous
cases involving this Respondent, ServiceNow, Inc. v. Domain Administrator, Fundacion Privacy Services
LTD, WIPO Case No. D2024-4330, Andrey Ternovskiy dba Chatroulette v. Domain Administrator, Fundacion
Privacy Services LTD, WIPO Case No. D2018-1644, and Qatar Airways Group (Q.C.S.C.) v. Domain

Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2024-4212).

The Panel also notes that, even if the consolidation angle was to be considered, the facts would point
towards a common control (see Omega SA v. Domain Administrator, Fundacion Privacy Services LTD,

WIPO Case No. D2021-2396), since

- the Domain Names are registered with the same Registrar

- have a similar composition

- all but the Domain Name <myfordbenefit.com> use the same name servers

- the use of <myfordbenefit.com> is similar to that of the Domain Name <fordescape.com>.

6.2 Substantive Issues

A. Identical or Confusingly Similar

It is well accepted that the first 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 that it has registered rights in the Trade Marks. The Domain Names are
confusingly similar to the FORD Marks as they incorporate the word mark FORD and, in case of
<fordescape.com>, the ESCAPE Marks as well, in their entirety. The addition of the terms “benefits”, “my”
and “www” in the Domain Names <myfordbenefit.com>, <wwwmyfordbenefits.com>, and <fordbenefits.com>
does not avoid a finding of confusing similarity between the Domain Names and the Ford Marks (see WIPO
Overview 3.0, section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No.
D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980).

With respect to the Domain Names <jarretford.com>, <riverheadford.com>, <matthewsford.com>, and <sternsford.com> which combine the FORD word mark with the names of Ford dealerships, the Panel notes that it is well established in UDRP cases that where the complainant’s trade mark is recognizable within the disputed domain name, the addition of a third-party mark or trade name is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element (WIPO Overview 3.0, section 1.12). The generic Top-Level Domain gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights.

The Panel finds the first element of the Policy has been established with respect to all Domain Names.

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

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of “proving a negative”, requiring information that is often 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 satisfied the second element. WIPO Overview 3.0, section
2.1.

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s authorization or consent to use any of the Trade Marks as part of the Domain Names, is not commonly known by the Domain Names, and has not acquired trade mark rights in the Domain Names. In addition, the Respondent’s use of the Domain Names does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Domain Names, since the Respondent’s use of the Domain Names has consisted of websites advertising products of the Complainant’s competitors and, in one case, to a malware distribution website.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names.

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. This list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, leaves open that other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. See WIPO Overview 3.0, section 3.2.1.

Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since:

- the Respondent’s registration of the Domain Names occurred more than 90 years after the registration
of the earliest of the FORD Marks;

- the Respondent has incorporated the word mark FORD in its entirety in the Domain Names;

- in four Domain Names, the Respondent used the name of a Complainant’s dealership together with
the FORD word mark;

- a simple trade mark register search, or even an Internet search, prior to registration of the Domain
Names would have informed the Respondent of the existence of the Trade Marks.

Since the Respondent has no authorization from or other affiliation with the Complainant and was or should have been aware of the Complainant’s rights at the time of registration, the Domain Names have been registered in bad faith.

In addition, the following circumstances taken together warrant a finding of bad faith use of the Domain

Names:

- the probability that the Respondent was aware or should have been aware of the Complainant’s rights
in the Trade Marks;

- the lack of a formal Response of the Respondent;

- the composition of the Domain Names;

- use of the website under seven of the Domain Names to advertise products of the Complainant’s
competitors;

- use of one Domain Name to redirect to a website disseminating malware;

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- use of the Domain Names (e.g. <riverheadford.com>) for parked website featuring pay-per-click links
targeting the Complainant’s services;

- the use of a privacy service in order to hide the Respondent’s identity; and

- the activation of MX records relating to several Domain Names to direct email to a mail server under
the Domain Names which may suggest to recipients of any potential emails that they are originating in
or authorized by the Complainant. While no evidence has been presented of such use, the
Respondent’s control over the Domain Names and these MX records represents an implied ongoing
threat to the Complainant and Internet users that such phishing may be conducted.

On the basis of all of the above, the Panel concludes that the Domain Names have been registered and are being used in bad faith.

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 names <fordbenefits.com>, <fordescape.com>, <jarretford.com>,
<matthewsford.com>, <myfordbenefit.com>, <riverheadford.com>, <sternsford.com>,

<wwwmyfordbenefits.com> be transferred to the Complainant.

/Wolter Wefers Bettink/
Wolter Wefers Bettink
Sole Panelist
Date: June 9, 2025