In the recent cybersquatting case of Ford Motor Company v. Boomerang Enterprises Inc., FA1344311 (Nat. Arb. Forum October 20, 2010) a single member Panel was faced with a dispute over the domains www.fiesta-armrest.com, www.fiesta-armrest.net, www.fiestaarmrest.com, www.fiestaarmrest.net, and www.fordfiestaarmrest.com. Ford is the well known longstanding car company which needs no introduction. Ford maintains a website at www.ford.com. Ford owns numerous trademark registrations for its FIESTA vehicle. Respondent is an official Ford approved vendor. Respondent claims that it registered and developed the domain names with Ford’s approval and encouragement. As a result Respondent sought to have this dispute not handled under the UDRP, noting that it was contractual and fell outside the purview of the UDRP. The Panel reviewed the information and disagreed with Respondent position regarding the coverage of the UDRP on the facts at issue.
Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case. Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent.
Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
The Panel reviewed and applied the elements finding that Complaint satisfied all three. Of interesting note, the Panel reviews the concept of disclaimers in avoiding bad faith.
Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer. Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Ultimately, the Panel was not swayed by arguments presented by Respondent. Respondent did seek a finding of Reverse Domain Name Hijacking, which the Panel also rejected. The domains were ordered to be TRANSFERRED.