Fluor Corporation v. Dongil Song
Claim Number: FA0112000102757
The Complainant is Kevin W Bixby and Fluor Corporation, Aliso Viejo, CA (“Complainant”) represented by Roger Geery. The Respondent is Dongil Song, Gwangju, KOREA (“Respondent”).
The domain name at issue is <fluor.biz>, registered with RGNames.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 7, 2001; the Forum received a hard copy of the Complaint on .
On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
The <fluor.biz> domain name is identical to Complainant's FLUOR mark.
Respondent has no rights or legitimate interests in the <fluor.biz> domain name.
Respondent registered the <fluor.biz> domain name in bad faith.
Respondent has failed to submit a Response.
Complainant has used the FLUOR mark in commerce since 1912. Complainant owns two United States Service Mark Registrations Numbered 588,015, and 591, 442. The United States Service Marks are for the design and engineering of plant equipment, buildings for petroleum and natural gas refining, construction on a custom basis of plant equipment for the petroleum, natural gas refining, chemical, and power plant industries. Complainant also owns two Korean service mark registrations and has been doing business under the FLUOR mark in that country since 1962.
Respondent registered the disputed domain name on November 19, 2001. The Respondent provided no evidence to show that it is known by the name FLUOR, nor did it provide evidence of service mark or trademark registration.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant through continuous use and service mark registration in the United States and Korea has established that it has rights in the FLUOR mark. The FLUOR mark is identical to the <fluor.biz> domain name.
Therefore the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Complainant has established that it has rights in the FLUOR mark because it has used the mark continuously in commerce since 1912 and has registered the mark in both Korea and the United States. Respondent has not come forward to offer evidence that it owns any trademarks, service marks, or common law rights in the FLUOR mark, and therefore has not demonstrated any rights under STOP Policy ¶ 4(c)(i).
Respondent has failed to come forward with evidence that it plans to use the <fluor.biz> domain name in relation to a bona fide offering of goods and services in relation to its business interests under the FLUOR mark pursuant to STOP Policy ¶ 4(c)(ii). Without this evidence, the Panel cannot find that Respondent will use the <fluor.biz> domain name for a bona fide offering of goods or services. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <fluor.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
The <fluor.biz> domain name is identical to Complainant's FLUOR mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <fluor.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
It can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its FLUOR mark in a corresponding domain name. This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <fluor.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Dated: January 31, 2002
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