Fluke Corporation v. Name Administration
Inc. (BVI)
Claim Number: FA0502000430650
PARTIES
Complainant
is Fluke Corporation (“Complainant”),
represented by Elizabeth A. Linford, of Ladas and Parry,
5670 Wilshire Blvd., Los Angeles, CA 90036.
Respondent is Name Administration
Inc. (BVI) (“Respondent”), represented by John B. Berryhill, of Dann, Dorfman, Herrell, and Skillman P.C.,
1601 Market Street, Suite 2400, Philadelphia, PA 19103-2307.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <meterman.com>,
registered with Domain Name Sales Corp.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Hon.
Charles K. McCotter, Jr. (Ret.), Prof. David Sorkin, Dennis A. Foster as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 24, 2005.
On
February 24, 2005, Domain Name Sales Corp. confirmed by e-mail to the National
Arbitration Forum that the domain name <meterman.com>
is registered with Domain Name Sales Corp. and that the Respondent is the
current registrant of the name. Domain
Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales
Corp. registration agreement and has thereby agreed to resolve domain name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
February 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 17, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@meterman.com by e-mail.
A
timely Response was received and determined to be complete on March 17, 2005.
In
accordance with NAF Supplemental Rule 7, the Complainant submitted an
Additional Submission on March 22, 2005.
The Respondent replied with an Additional Submission on March 24,
2005. The Panel has examined and taken
into consideration these Additional Submissions.
On April 5, 2005 pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum appointed
Hon. Charles K. McCotter, Jr. (Ret.), Prof. David Sorkin and Dennis A.
Foster as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS (Summarized)
A.
Complainant
-Complainant
is considered a world leader in the manufacture, distribution and service of
electronic test tools and software. The
tools are offered under the METERMAN mark and are used by professionals in the
automotive, electronic, and calibration industries.
--The
extent of the success of Fluke products and services is exemplified by the fact
that Complainant has achieved either the number one or number two position in
every market in which it competes.
--Respondent
registered the disputed <meterman.com> domain name on February 14, 2002
after the METERMAN mark was registered in the United States and Complainant’s
presence had been established around the world.
--Complainant
has not authorized Respondent to use its marks in any way.
--On
November 30, 2004, Complainant’s Cayman Islands attorneys sent a cease and
desist letter to Respondent, informing it of Complainant’s prior rights and
concerns and requesting immediate transfer of the disputed domain name
(Complaint Annex 6).
--The
disputed domain name <meterman.com> fully incorporates and is identical
to Complainant’s registered METERMAN mark.
--Complainant
has been using the METERMAN mark since at least as early as May 1, 1999 and in
U.S. commerce since at least as early as October 2000. Because of extensive and exclusive use,
substantial advertising and promotion, the METERMAN mark is used by the general
public, the relevant industry and the media to refer specifically to
Complainant’s quality digital multimeters and related goods..
--The
Respondent has no trademark or other intellectual property rights in the
disputed domain name.
--The
disputed domain name is not the legal name of the Respondent.
--It
was held in Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a
Hitachi, Ltd.. v. DRP Services, WIPO Case No. D2004-0344 (WIPO July 5,
2004) that a respondent does not have any legitimate interests in respect of
the disputed domain name when such domain name resolves to a search
engine/advertising site that contains automatically generated links to websites
of various companies and organizations unrelated to the respondent. See also Edmunds.com, Inc. v.
WWWEDMUNDS.com and DMUNDS.com, D2001-0937 (WIPO August 31, 2001).
--Respondent
knew of the registration and open use of Complainant’s trademarks and was on
constructive notice of Complainant’s rights in the marks due to the
registrations of the METERMAN mark and the presence of METERMAN products in the
marketplace long before Respondent registered the disputed domain name. Complainant has a significant marketing and
manufacturing presence in the Respondent’s country, the Cayman Islands.
--The
word “meterman” is neither generic nor descriptive.
--Respondent
knew of the registration and open use of Complainant’s trademarks and was on
constructive notice of Complainant’s rights in the marks due to the
registrations of the METERMAN mark and the presence of METERMAN products in the
marketplace long before Respondent registered the disputed domain name.
--It
has long been recognized that registration of a domain name containing a
well-known mark is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA
94313 (April 17, 2000) finding registration of a domain name containing
Complainant’s mark “with actual or constructive knowledge of its use by
Complainant” to be evidence of bad faith
--Complainant
contends, however, that the word “meterman” is not generic or descriptive. As evidence thereof, Complainant has
attached hereto as Annex 10 copies of Internet dictionary search results
showing that there are no definitions for the words “meterman” or “meter man”
in the English language. The word is
not in any prominent English dictionary, has meaning only in relation to the goods
offered by Complainant, and identifies the source of Complainant’s goods to the
public.
--Respondent
registered the disputed domain name with the sole intent of generating
advertising revenue for itself by means of redirecting Internet users who would
have a reasonable expectation of finding a website maintained by Complainant.
--Furthermore,
it appears from Respondent’s prior conduct that it has a pattern of registering
numerous domain names incorporating trademarks to which it does not hold
rights. In Corinthians Licenciamentos
LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,
WIPO Case No. D2000-0461, July 17, 2000, the panel held that parties
registering large numbers of domain names have been found to lack rights or
legitimate interests in the registered domain names.
--The
evidence presented strongly suggests bad faith use on the part of
Respondent. Respondent has never used
the disputed domain name in connection with a bona fide offering of goods or
services but instead generates income from a generic search engine/advertising
webpage offered under the disputed domain name.
--Respondent’s
use cannot be viewed as a legitimate non-commercial or fair use of the disputed
domain name. Because Respondent has not made demonstrable preparations to use
the disputed domain name in connection with a bona fide offering of goods or
services other than providing a generic search engine/advertising website, it
can only be concluded that Respondent is using the disputed domain name in bad
faith.
B.
Respondent
--The
Respondent does not dispute that the Complainant has certain trademark
registrations for METERMAN in connection with digital multimeters.
--The
word “meterman” denotes a particular occupation-i.e. one who reads
meters-typically engaged with a public utility.
--The
Complainant relies on two default cases involving famous trademarks for the
proposition that providing relevant directory services in conjunction with a
common word is illegitimate.
--In
Snowboards-for-sale.com, Inc. v. Name Administration, WIPO Case No.
D2002-1167, February 19, 2003, the Respondent had registered
<snowboardsforsale.com>, and then, as now, utilized the domain name
<snowboardsforsale.com> to provide paid advertising results relevant to
snowboards. The panel concluded the
Respondent had legitimate rights and interests in the disputed domain name.
--Legitimate
rights in the use of a common word or phrase to provide paid advertising search
results is an issue that has been examined repeatedly under the Policy: Canned
Foods, Inc. v. Ult. Search Inc., NAF Case No. 96320, February 13, 2001; Sweeps
Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031,
April 13, 2001; Career Guidance Foundation v. Ultimate Search, WIPO Case
No. D2003-0323, July 21, 2003.
--Notwithstanding
the Complainant’s choice of dictionaries, the word “meterman” is descriptive of
an occupation that is quite frequently a government occupation. The Complainant’s limited rights in
connection with its particular goods and services does not remove the word “meterman”
from the English language as it is used by countless government and public
organizations to refer to a job.
--Before
the Complainant telephoned the Respondent on April 20, 2004, the Respondent was
using the domain name for an activity that repeatedly has been deemed to be a
bona fide offering of goods and services under the Policy.
--Clearly,
the Respondent has not sought to sell the disputed domain name, nor has the
Respondent registered a pattern of marks designed to prevent the Complainant
from registering its alleged mark as a domain name.
--The
Complainant’s first contention appears to be that mere registration of a domain
name corresponding to a trademark is per se bad faith under a theory expanding
the U.S. constructive notice statute to the entire planet.
--The
Respondent had no duty to the Complainant concerning the Complainant’s
trademark for test equipment when the Respondent registered yet another domain
name corresponding to a common occupation.
Reverse
Domain Name Hijacking
--The
Respondent requests the Panel consider Policy paragraph 15(e) in view of the
Complainant’s pattern of bad faith and malicious prosecution of frivolous
claims, the Complainant’s knowledge of facts sufficient to conclude the
disputed domain name was registered in good faith, and the behavior of
Complainant’s counsel in refusing service in the manner required under
California law, which supersedes technical compliance with the NAF rules.
C.
Additional Submissions
--Contrary
to Respondent’s comments, Complainant does not claim that its registered mark
METERMAN is famous or that Complainant has worldwide rights in the mark. Complainant owns trademark registrations for
the mark METERMAN in the United States, Australia, Mexico and China and is the
owner of pending applications to register the mark in Brazil, Canada and
Singapore.
--Complainant
is not required to own a registration in the United Kingdom to assert rights in
the disputed domain name.
--The
case the Respondent cites, Snowboards-for-sale.com, Inc. v. Name
Administration Inc., WIPO Case No. D2002-1167, February 19, 2003 is
distinguishable from the present case because there the respondent’s website
identified specific links to websites offering snowboard-related goods for sale
and there the complainant was unable to demonstrate trademark rights in the
phrase “snowboards for sale.”
--At
the disputed domain name website, the Respondent not only provides links to
websites with job listings for metermen, but also provides a search engine for
such topics as beauty, communications, health and many other unrelated
topics. Respondent offers links to
these search engines for the sole purpose of commercial gain by misleading and
diverting Internet traffic looking for Complainant’s website.
--Unlike
in the case U.S. Nutraceuticals, LLC v. Telpathy, Inc. c/o Development
Services, NAF Case No. 365884, January 17, 2005, the Respondent registered
the disputed domain name well after Complainant registered the METERMAN
trademark and first used it in interstate commerce.
--The
fact that Respondent is promoting links to third party websites for jobs in
which Complainant’s goods may be used along with a search engine for topics
which are wholly unrelated to the goods offered by Complainant under its mark,
is evidence that Respondent has no legitimate interest in the disputed domain
name apart from generating advertising income from users who are interested in
obtaining information about Complainant’s goods.
--Respondent
is a sophisticated Internet user, having registered potentially hundreds of
domain names and having defended at least several challenges to certain
registrations under the UDRP.
Therefore, it would seem reasonable that prior to registering a new
domain name, Respondent would check the records of the United States Patent and
Trademark Office to determine whether registration of the proposed domain name
conflicts with the prior rights of another.
--Respondent’s
suggestion to Complainant to purchase or at least make an offer to purchase the
disputed domain name is clearly interpreted as an offer to sell.
--Respondent
is clearly capitalizing on the goodwill of Complainant’s mark by using the
disputed domain name to divert Internet users to a website featuring links to
sites from which it collects revenue.
--Although
Respondent identifies nineteen generic domain names reflecting common job
titles, it is doubtful that any of those common and generic terms correspond to
a third party trademark. On that basis,
the citations are completely irrelevant to the case at hand.
Respondent’s
Additional Submissions
--The
Respondent has never disputed that the Complainant owns a US registration for
METERMAN in connection with particular products. Nonetheless, the Complainant again lists its trademark registrations—only
one of which pre-dates registration of the domain name by the Respondent.
--Remarkably,
the Complainant still maintains that entities outside of the U.S. are on
constructive notice of U.S. registered trademarks. There is no reason to argue with that fundamentally incorrect
statement.
--On
Rights and Legitimate Interests, the Complainant did not bother to cite any
additional cases.
--The
domain name is used to present primarily occupational links, in accordance with
the plain meaning of the word “meterman”, and the general links at the bottom
of the page do not implicate the Complainant’s claimed rights either.
--The
Complainant has now decided that it wants to allege the Respondent registered
the domain name for the primary purpose of selling it, even though it was the
Complainant who approached the Respondent stating that they wanted to propose
to buy the domain name.
FINDINGS
The Complainant is a company that makes
electronic measurement test tools and related software using the METERMAN trademark. The Complainant markets its products in many
countries, including the U.K./Cayman Islands where the Respondent is
located. The Complainant’s METERMAN
trademark was registered in the United States of America on October 16, 2001,
and there are later trademark registrations in Australia, China and Mexico
(Complaint Annex 4).
The Respondent is a company in the
business of registering numerous domain names, for the most part names with a
clear generic meaning, and then connecting those domain names to relevant
product and service providers and charging fees for advertising on the domain
name websites. However, in our
particular case, some of the connected websites have nothing to do with the
disputed domain name.
The Respondent registered the disputed
domain name, <meterman.com>, on February 14, 2002.
On November 30, 2004, the Complainant’s
legal counsel sent a cease and desist letter to the Respondent. Also, in April, 2004, the Complainant
contacted the Respondent by email and attempted to purchase the disputed domain
name, but the parties did not reach an agreement (Complaint Annex 7).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 Complainant has exhibited its
METERMAN U.S. trademark no. 2, 499,065 dated October 16, 2001 for digital
multimeters in int. class 9. The
Complainant has also exhibited comparable registrations in China, Australia and
Mexico (Complaint Annex 4).
The disputed domain name, <meterman.com>,
is identical to the Complainant’s registered trademark. The Respondent does not dispute this point.
Therefore, the Panel finds the
Complainant has carried its burden of proof under Policy paragraph 4(a)(i) to
show that the disputed domain name is identical or confusingly similar to a
trademark in which the Complainant has rights.
The Complainant avers it has not given
the Respondent any kind of permission or license to use the disputed domain
name. The Complainant contends the Respondent is not commonly known by the
disputed domain name as allowed per Policy paragraph 4(c)(ii). The Complainant
also contends the Respondent is not making a bona fide offering of goods and
services per Policy paragraph 4(c)(i) because the Respondent chose the <meterman.com>
domain name while being well aware of the Complainant’s trademark rights in the
name. The Complainant contends there is
no generic meaning for the word “meterman”.
In its reply based on Policy paragraph
4(c)(i), the Respondent has shown that its business model is to register large
numbers of domain names that have a generic meaning. The Respondent then connects the web sites at these domain names
to other web sites that deal with the generic word’s goods and services. Thus, at the Respondent’s
<snowboards-for-sale.com> website, the public would be redirected to
sites dealing with snowboards. At the
disputed domain name website, <meterman.com>, the Respondent
offers links to utility company and government jobs for metermen inter
alia. The Respondent’s website at the
disputed domain name makes no mention of the Complainant or its multimeter
goods and services.
As the Respondent points out, there are
many previous panel decisions that uphold the Respondent’s business practice as
long as the domain names have a clear generic meaning and it does not appear
the Respondent had the Complainant’s trademark in mind. (see inter alia Canned
Foods, Inc. v. Ult. Search Inc., NAF Case No. 96320, February 13, 2001
involving the domain name <groceryoutlet.com> used in its generic sense; Career
Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323, July 21,
2003 involving <collegesource.com> used in its descriptive sense; and Sweeps
Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031,
April 13, 2001 involving the domain name <sweeps.com> used for a website
about sweepstakes.
The Complainant contends its METERMAN
trademark is well-known, including in the Cayman Islands where the Respondent
is located. The Panel does not find the
Complainant has proved this. On the
contrary, the Complainant only began using its METERMAN trademark in 1999 and
in a narrow field such that it would become known, if at all, only to
professionals in the electrical field.
The Panel does not believe it would be fair to charge the Respondent
with knowledge of the Complainant’s trademark on this basis. The three cases the Complainant cites on
this point involve the famous trademarks HITACHI and SAMSONITE, and the
trademark EDMONDS. The former mark two
are world-famous, while the third, unlike “meterman”, has no generic
meaning.
The Complainant also contests the
Respondent’s contention that “meterman” has the generic meaning of a person who
goes around reading gas, electrical or parking meters, or work along these
lines. At Complaint Annex 10, the
Complainant attempts to show that an Internet dictionary search shows there is
no such word as “meterman”. However, by
citing a series of employment listings and similar material, the Respondent
shows convincingly that “meterman” has a generic meaning (Response Exhibit
A). The Panel was already well aware of
this generic meaning, and the Respondent’s proof only reinforces it.
The Complainant contends the Respondent
should be charged with constructive notice of the Complainant’s trademark when
the Respondent registered the disputed domain name on February 14, 2002 in the
Cayman Islands because the Complainant registered its METERMAN trademark in the
United States on October 16, 2001. The
Complainant does not explain how or why constructive notice should apply to the
Respondent outside the U.S., and the Panel does not believe it should be so
applied.
Notwithstanding the above discussion, the
Panel suspects the Respondent could have known about the Complainant and its
METERMAN trademark at the time the Respondent registered the disputed domain
name <meterman.com>. For
one thing, the Respondent’s disputed domain name website is connected not just
to meterman jobs, but also to health, beauty and communications websites. However, as the Respondent points out, none
of these additional website connections have anything to do with the
Complainant’s line of business. The
Respondent also admits to registering a domain name related to the famous
television program “Hogan’s Heroes “.
In view of its unresolved doubts, the Panel believes the Complainant has
failed to carry its burden of proof under Policy paragraph 4(a)(ii) to show the
Respondent has no rights or legitimate interests in the disputed domain name.
Since the Complainant must prove policy
paragraphs 4(a)(i-iii) inclusively, the Panel does not need to reach the issue
of Bad Faith in registration and use.
The Panel does not agree with the
Respondent’s request that we issue a finding that the Complainant brought this
Complaint in bad faith per paragraph 15(e) of the Rules. On the contrary, we believe the Complainant
came close, but failed, to prove the Respondent has no rights or legitimate
interests in the disputed domain name.
As to the Respondent’s second grounds for its request, i.e.,
that the Complainant’s counsel failed to act according to California Rules of
Professional Conduct relative to document transmission, the Panel believes that
the parties themselves have successfully resolved any issues that may have
arisen.
DECISION
The
Complainant failed to carry its burden of proof under paragraph 4(a)(ii) of the
Policy. Therefore, the Panel concludes
that relief shall be DENIED.
Dennis A. Foster, Panel Chair
Hon. Charles K. McCotter, Jr. (Ret.)
& Prof. David Sorkin
Dated: April 26, 2005
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