Fluor Corporation v. Hazel Potts
Claim Number: FA1412001597635
Complainant is Fluor Corporation (“Complainant”), represented by Stina Pilotti of CSC Digital Brand Services AB, Sweden. Respondent is Hazel Potts (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fluorscorp-us.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fluorscorp-us.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fluorscorp-us.com. Also on January 2, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns the FLUOR mark through registration with trademark authorities, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 591,442, registered Mar. 30, 1953). Complainant uses the FLUOR mark in connection with engineering, procurement, construction, maintenance, and project management. The <fluorscorp-us.com> domain name is confusingly similar to the FLUOR mark. The domain name incorporates the mark in full and adds the business indicator “corp,” a hyphen, the geographic abbreviation “us,” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Complainant has not authorized Respondent’s use of the mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent resolves the disputed domain name to a blank page.
Respondent has engaged in bad faith registration and use of the <fluorscorp-us.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant own business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Further, Respondent’s failure to resolve the disputed domain name to an active website suggest bad faith. Finally, Respondent must have had knowledge of Complainant’s famous mark at the time of domain name registration, which further supports a finding of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that uses the FLUOR mark in connection with engineering, procurement, construction, maintenance, and project management.
2. Complainant owns the FLUOR mark through registration with trademark authorities, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 591,442, registered Mar. 30, 1953).
3. Respondent registered the disputed domain name on November 10, 2014.
4. Respondent resolves the disputed domain name to a blank page with an error message.
Paragraph 15(a) of 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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it owns the FLUOR mark through registration with trademark authorities, including the USPTO (e.g., Reg. No. 591,442, registered Mar. 30, 1953). Complainant uses the FLUOR mark in connection with engineering, procurement, construction, maintenance, and project management. The Panel concludes that Complainant’s valid registration of FLUOR with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FLUOR mark. Complainant claims the <fluorscorp-us.com> domain name is confusingly similar to the FLUOR mark. Complainant argues that the domain name incorporates the mark in full and adds the business indicator “corp,” a hyphen, the geographic abbreviation “us,” and the gTLD “.com.” Prior panels have found such alterations insufficient to distinguish the mark from the otherwise incorporated mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”) Further, panels have found the addition of hyphens and gTLDs add no distinguishing value with regards to the confusing similarity analysis. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As Complainant operates a corporation in the United States, the Panel determines that the addition of the abreviations “corp” and “us” to the mark does little, if anything, to distinguish the disputed domain name from the incorporated mark, and therefore finds confusing similarity under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous FLUOR
trademark and to use it in its domain name, adding only the business indicator “corp,” a hyphen, the geographic abbreviation “us,” and the gTLD “.com”;
(b) Respondent uses the disputed domain name to resolve to a
blank page;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant alleges Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Complainant has not authorized Respondent’s use of the mark. The Panel notes that the WHOIS record pertaining to the disputed domain name lists “Hazel Potts” as registrant. As Respondent has failed to submit evidence to the contrary, the Panel determines there is no basis to find Respondent commonly known by the disputed <fluorscorp-us.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e)Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims that Respondent resolves the disputed domain name to a blank page. The Panel notes that Complainant has provided a screenshot of the landing page, which presents an error message. See Compl., at Attached Ex. F. As Respondent has failed to make an active use of the disputed domain name, the Panel concludes that such circumstances indicate Respondent lacks any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, in demonstrating Respondent’s bad faith, Complainant urges that Respondent’s use of the disputed domain name disrupts Complainant own business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). The Panel recalls that the disputed domain name does not resolve to an active website, but displays only a blank page and an error message. See Comp., at Attached Ex. F. The Panel determines that Respondent’s use of the disputed domain name does not incorporate the requisite element of competitive use required by prior panels to establish bad faith pursuant to Policy ¶ 4(b)(iii) . See, e.g., DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). However, the Panel determines that although Policy ¶ 4(b)(iii) is not applicable on this basis, all of the surrounding circumstances show bad faith and the Panel so finds.
Secondly and further, as Complainant is not confined to the articulated provisions of Policy ¶ 4(b), the Panel notes that those provisions are meant to be illustrative of bad faith, and Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).Under the totality provision of Policy ¶ 4(a)(iii), Complainant argues that Respondent’s failure to resolve the disputed domain name to an active website suggest bad faith. See Compl., at Attached Ex. F. Prior panels have found evidence of bad faith based on the respondent’s failure to make an active use of the disputed domain name. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel therefore finds Respondent’s inactive holding of the <fluorscorp-us.com> domain name as evidence of Respondent’s bad faith use and registration under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent must have had knowledge of Complainant’s famous mark at the time of domain name registration, which further supports a finding of bad faith registration. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. Prior panels have based this inference on the fame and notoriety of an incorporated mark. As described in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” As the Panel is willing to infer Respondent’s actual knowledge of the famous FLUOR mark at the time of domain name registration, the Panel finds evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fluorscorp-us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated January 28, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page