Fluke Corporation v. Cheng Woon Ng
Claim Number: FA2010001916074
Complainant is Fluke Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Cheng Woon Ng (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flukedistributormalaysia.com>, registered with DreamHost, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2020; the Forum received payment on October 6, 2020.
On October 9, 2020, DreamHost, LLC confirmed by e-mail to the Forum that the <flukedistributormalaysia.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 October 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 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@flukedistributormalaysia.com. Also on October 12, 2020, 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 Forum transmitted to the Parties a Notification of Respondent Default.
On November 8, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 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 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the FLUKE trademark acquired through its ownership of its portfolio of registered trademarks described below and its international use of the FLUKE trademark, including on its website, on its industrial test, measurement, and diagnostic equipment since at least as early as March 3, 1961.
Complainant submits that the disputed domain name is confusingly similar to its FLUKE mark as it incorporates Complainant’s distinctive mark in its entirety.
Complainant adds that the inclusion of the generic term “distributor” and the geographic term, “malaysia” in the disputed domain name does not dispel the confusion.
Complainant argues that these additional elements only add to the likely confusion and asserts that the disputed domain name is intended to target Malaysian consumers who are likely to be confused that the disputed domain name sponsored by or affiliated with Complainant when the same is untrue.
Complainant furthermore submits that the Top-Level Domain extension <.com> is immaterial under the Policy. Citing the decision in Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of top level to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name as it was registered for the purpose of diverting online traffic premised on consumer confusion which does not constitute a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).
Complainant argues that Respondent is not commonly known by the mark and has not received Complainant’s permission to use the FLUKE mark. Citing the decision in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).
Complainant adds that Respondent is not a licensee of Complainant and that Complainant’s rights precede Respondent’s registration of the disputed domain name.
Furthermore, Complainant submits that Respondent uses the disputed domain name to perpetuate a scheme that involves deceiving consumers into believing its website offers legitimate electronic test and measuring instruments and devices and electronic test tool goods under the FLUKE mark.
Complainant additionally argues that Respondent’s use of a domain name to trick consumers into visiting its website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Citing the decision in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Complainant further submits that consumers are likely to be confused regarding the content of Respondent’s website as it displays exactly the same goods as those offered by Complainant. Respondent is therefore benefitting from this confusion which is not a bona fide offering of goods or services or a legitimate use.
Complainant adds that furthermore, it is incumbent upon Respondent to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting Complainant’s assertion that he has no rights or legitimate interests in the disputed domain name because this information is uniquely within the knowledge and control of Respondent.
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name knew of Complainant’s rights in the FLUKE mark when the disputed domain name was registered. Citing the decision in Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Complainant adds that the disputed domain name was registered on December 3, 2017 after Complainant acquired rights in the FLUKE mark.
Complainant reiterates that Respondent is using the disputed domain name as a website address to offer for sale goods that are identical to Complainant’s goods bearing the FLUKE mark and argues that there would be no reason to register a domain name including the unrelated terms “fluke,” “distributor,” and “malaysia” in connection with the same unless Respondent knew of Complainant and its FLUKE brand of electronic test and measuring instruments and devices and electronic test tool goods. Complainant submits that therefore the evidence shows Respondent had actual notice of Complainant’s trademark rights at the time the disputed domain name was registered.
Complainant further argues that bad faith intent pursuant to Policy ¶ 4(b)(iv) can be inferred from Respondent’s choice to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. Citing the decision in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Complainant summarizes by alleging that the registration and use of the disputed domain name is nothing more than an attempt to profit from the goodwill and fame of Complainant’s mark by using a confusingly similar domain name to attract Internet users to Respondent’s commercial website.
Complainant in conclusion asserts that despite numerous attempts to elicit a response and resolve this matter informally, Respondent has been unresponsive to Complainant’s overtures.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of industrial test, measurement, and diagnostic equipment on which it uses the FLUKE mark and for which it owns a portfolio of trademark registrations including the following:
· United States registered trademark FLUKE, registration number 3,818,870, registered on the Principal Register on July 13, 2010 for goods in international class 9;
· United States registered trademark FLUKE, registration number 2,131,631 registered on the Principal Register on January 27, 1998 for goods in international class 9;
· United States registered trademark FLUKE, registration number 1,557,670 registered on the Principal Register on September 26, 1989 for goods in international class 9;
· United States registered trademark FLUKE, registration number 2,148, 673 registered on the Principal Register on April 7, 1998 for goods in international class 9.
Complainant has an international business with an Internet presence and maintains a website marketing its products to which its domain name <fluke.com> resolves.
The disputed domain name <flukedistributormalaysia.com> was registered on December 3, 2017 and resolves to an English language website which purports to offer Complainant’s FLUKE branded products.
There is no information available about Respondent who availed of a privacy service to conceal its identity on the published WhoIs, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in this course of this proceeding. In providing the registration details the Registrar identified Respondent as the registrant.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence that it has rights in the FLUKE trademark acquired through its ownership of its portfolio of registered trademarks described below and its international use of the FLUKE mark, including on its website on its industrial test, measurement, and diagnostic equipment since at least as early as March 3, 1961.
The disputed domain name consists of Complainant’s FLUKE mark and the English language words “distributor” and “malaysia” together with the generic Top Level Domain (“gTLD”) <.com> extension.
Complainant’s FLUKE mark is the initial, dominant and only distinctive element of the disputed domain name. The element “distributor” is descriptive and non-distinctive in the context of trade in goods. The element “malaysia” is a geographical designation which in context does not add any distinguishing character to the disputed domain name.
For the purposes of evaluating confusing similarity the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized in the context of this Compliant, as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the FLUKE trademark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i)
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing
· that the disputed domain name was registered for the purpose of diverting online traffic intended for Complainant;
· that Respondent is not commonly known by the FLUKE mark;
· that Respondent has not received Complainant’s permission to use the FLUKE mark;
· that Respondent is not a licensee of Complainant;
· that Complainant’s rights in the FLUKE mark precedes Respondent’s registration of the disputed domain name;
· that Respondent uses the disputed domain name to perpetuate a scheme that involves deceiving consumers into believing that Respondent’s website offers legitimate electronic test and measuring instruments and devices and electronic test tool goods under the FLUKE mark;
· that a respondent’s use of a domain name to trick consumers into visiting its website is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i);
· that Respondent’s intent in registering the disputed domain name was to divert traffic away from Complainant which is not a legitimate use the name in connection with the sale of goods;
· that Respondent’s use of the FLUKE mark throughout Respondent’s website in connection with the sale of the very same goods offered by Complainant will divert unsuspecting consumers attempting to visit Complainant’s website at <www.fluke.com>;
· that consumers are likely to be confused regarding the content of Respondent’s website as it displays the exact same goods offered by Complainant;
· that Respondent is therefore benefitting from this confusion which is not a bona fide offering of goods or services or a legitimate use; and
· that furthermore, it is incumbent upon Respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting Complainant’s assertion that he has no rights or legitimate interests in the disputed domain name because this information is uniquely within the knowledge and control of the respondent.
Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, it could be argued that Complainant has alleged but has not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods and that the goods presented on Respondent’s website appear not to be Complainant’s genuine trademarked goods.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
An examination of the website to which the disputed domain name resolves shows that Respondent does not disclose that he has no relationship with Complainant. Additionally, there is a prominent testimonial on the website praising a third party “CLIENT TESTIMONIALS Well done, (name of a third party)! We managed to monitor our production process effectively with your expertis! Will buy again.”
Respondent has not denied that the goods offered are not those of Complainant and the website does not accurately disclose that Respondent has no relationship with Complainant. In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove Respondent’s rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The dominant element of the disputed domain name consists of Complainant’s FLUKE trademark in its entirety. The other elements, when used as the address of a website, impute that the website is hosted by a Malaysian distributor of Complainant’s products. It is improbable therefore that the disputed domain name was registered without actual knowledge of Complainant and its FLUKE mark.
This Panel finds that on the balance of probabilities the disputed domain name was registered in order to target Internet traffic intended for Complainant.
Complainant has alleged but has not proven that the goods offered on Complainant’s website are third party goods. In fact, the Complaint also argues that the goods are identical to those offered by Complainant on its own website.
The issue however is, even if Respondent were given the benefit of the doubt, there is no reason why a reseller of Complainant’s genuine goods would need to use Complainant’s mark in this way, without license or permission, creating an initial interest confusion as to whether Complainant is the host of the website to which the disputed domain name resolves. In the circumstances of the present case where Respondent has been given the opportunity but has not denied the allegation that the goods on its website are not Complainant’s genuine goods, and has failed to engage with Complainant’s efforts to resolve this dispute informally, it would seem to follow that Respondent is not entitled to the benefit of the doubt.
This Panel finds therefore that the disputed domain name was registered in bad faith in order to take predatory advantage of the reputation and goodwill of Complainant by attracting and diverting Internet traffic in the area of Malaysia away from Complainant’s website.
This finding is informed by the manner in which the disputed domain name is being used as the address of Respondent’s website purporting to offer FLUKE branded goods. The owner of the website does not disclose that it has no business relationship with Complainant and Internet users attracted by Complainant’s goodwill and reputation are presented with a testimonial for a third-party enterprise.
In such circumstances this Panel finds that on the balance of probabilities, Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and is therefore using the disputed domain name in bad faith.
In the context of this Complaint, Respondent’s failure to engage with Complainant’s efforts to resolve this matter informally is a significant factor supporting Complainant’s allegations.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flukedistributormalaysia.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 9, 2020
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