Fluke Corporation v. Timothy Saravaan
Claim Number: FA2205001997653
Complainant is Fluke Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Timothy Saravaan (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flukemalaysiasupplier.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On May 24, 2022, DreamHost, LLC confirmed by e-mail to the Forum that the <flukemalaysiasupplier.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 May 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2022 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@flukemalaysiasupplier.com. Also on May 25, 2022, 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 June 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant engages in the business of manufacturing industrial tests, measurements, and diagnostic equipment. Complainant claims rights in the FLUKE trademark through its registration with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,818,870, registered on July 13, 2010). The disputed domain name is identical or confusingly similar to Complainant’s FLUKE mark, as it incorporates the mark in its entirety, only adding the geographic term “malaysia”, the generic term “supplier”, and the “.com” generic top-level domain (gTLD).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the FLUKE mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website offers competing goods and services.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by offering competing goods and services. Additionally, Respondent attempts to attract users for commercial gain, mimicking Complainant’s website and offering similar goods. Respondent also had actual notice of Complainant’s rights in the FLUKE mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on February 2, 2021.
2. Complainant has established rights in the FLUKE trademark through its registration with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,818,870, registered on July 13, 2010).
3. The disputed domain name’s resolving website mimics Complainant’s website and offers competing services with Complainant’s services.
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 claims rights in the FLUKE mark through its registration with the USPTO (e.g., Reg. No. 3,818,870, registered on July 13, 2010). Complainant has provided copies of the certificates of the trademark registrations. Registering of a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds Complainant has established rights in the FLUKE mark.
Complainant argues the disputed domain name <flukemalaysiasupplier.com> is identical or confusingly similar to Complainant’s FLUKE mark, as it incorporates the mark in its entirety, only adding geographic and generic words, as well as the “.com” gTLD. The mere addition of a geographic term and gTLD is not enough to differentiate a disputed domain name from a mark. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Furthermore, including a generic term is also not sufficient to distinguish the domain name and the mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
The disputed domain name adds the words “malaysia” and “supplier,” along with the “.com” gTLD, to the FLUKE mark. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s FLUKE mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized to use the FLUKE mark, nor is Respondent commonly known by the disputed domain name. When a response is lacking, the Panel may refer to the available WHOIS information to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Further, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
The WHOIS information shows Respondent is known as “Timothy Saravaan” and there is no evidence to suggest Complainant authorized Respondent to use the FLUKE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website offers competing goods and services. Using a disputed domain name only to redirect users to competing goods and services is not a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
The Panel references screenshots of the resolving website, showcasing the services in direct competition with Complainant’s business. The Panel finds Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 contends that Respondent registered and uses the disputed domain name in bad faith because Respondent disrupts Complainant’s business by offering fraudulent competing services. Pursuant to Policy ¶ 4(b)(iii), a respondent’s use of a confusingly similar domain name to offer competing goods and services disrupts a complainant’s business in bad faith. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
The Panel recalls screenshots of the resolving website of the disputed domain name, where Respondent offers competing services. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith.
Complainant also contends Respondent attempts to attract users for commercial gain by passing off as Complainant. When a respondent mimics a complainant’s website and offers similar services, the Panel may find respondent is passing off as the complainant, seeking to financially benefit from the confusion in bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
The Panel finds, as a result of comparing the disputed domain name’s resolving website with Complainant’s website, the Panel finds Respondent attempts to pass off as Complainant for financial gain, and thus Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flukemalaysiasupplier.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Panelist
Dated: June 23, 2022
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