COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Fluke Corporation v. Whois Agent and Whois Privacy Protection Services Inc.

Claim Number: FA0407000304306

PARTIES

The Complainant is Fluke Corporation (“Complainant”), represented by Timothy S. Cole, of Ladas & Parry, 5670 Wilshire Blvd., Ste 2100, Los Angeles, CA 90036.  The Respondent is Whois Agent and Whois Privacy Protection Services Inc., (“Respondent”), PMB 368, 14150 NE 20^th St. – F1, C/O fluke.biz, Bellevue, WA 98007.

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <fluke.biz>, registered with Enom, Inc.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on July 23, 2004; the Forum received a hard copy of the Complaint on July 26, 2004.

On July 27, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <fluke.biz> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”).

On July 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “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 August 26, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 “to employ reasonably available means calculated to achieve actual notice to Respondent.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES CONTENTIONS

            A. Complainant

1. Respondent is not making a bona fide business or commercial use of the <fluke.biz> domain name.

2. Respondent’s <fluke.biz> domain name is confusingly similar to Complainant’s FLUKE mark.

3. Respondent does not have any rights or legitimate interests in the <fluke.biz> domain name.

4. Respondent registered and used the <fluke.biz> domain name in bad faith.

            B. Respondent

No Response was received.        

FINDINGS

Complainant is the world leader in the manufacture, distribution and service of electronic test tools and software.  Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the FLUKE mark, including Reg. Nos. 1,557,670 and 2,131,631 (registered on September 26, 1989 and September 25, 1995, respectively).

Respondent registered the <fluke.biz> domain name on January 15, 2004.  Shortly after receiving a cease-and-desist letter from Complainant, Respondent changed the WHOIS information for the domain name in order to obscure Respondent’s identity and employed the “Whois Privacy Protection Services” to conceal Respondent’s contact information.  Respondent’s domain name resolves to a search engine website which is connected with a commercial affiliate program operated by TargetWords.  TargetWords pays Respondent for each search conducted on the website by an Internet user who accessed the website via the domain name.   

DISCUSSION

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 UDRP 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.

Paragraph 4(b) of the RDRP defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

           

The RDRP requires that the holder of a domain name registration use it primarily for bona fide business or commercial purposes.  Complainant bears the burden of proving that the holder is not primarily using the domain name for bona fide business or commercial purposes pursuant to RDRP ¶ 4(a). 

Pursuant to RDRP ¶ 4(c)(1), leasing a domain name for compensation does not constitute a “bona fide business or commercial use.”  Respondent merely uses the <fluke.biz> domain name to earn revenue by redirecting Internet users to TargetWords’ search engine website.  Thus, the Panel finds that Respondent is leasing the domain name registration and therefore concludes that Respondent’s use of the domain name does not constitute a “bona fide business or commercial use.”  See Citigroup, Inc. v. Parvin, D2002-0969 (WIPO May 12, 2003) (finding that in light of the RDRP the Panel agreed “with Complainant that the <cititravel.biz> domain was improperly registered and [was] being improperly used, not for a business, but merely as a referral to other businesses which is not the purpose of the .biz domains.”).

The Panel finds that Complainant has satisfied RDRP ¶ 4(a).  Although this finding alone is a sufficient basis to grant Complainant’s request for relief, the Panel will continue its analysis of the dispute under the UDRP.

Identical and/or Confusingly Similar

Complainant has established rights in the FLUKE mark through registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <fluke.biz> domain name is identical to Complainant’s FLUKE mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.biz.”  Respondent’s addition of “.biz” is insufficient to distinguish the domain name from the FLUKE mark pursuant to UDRP ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that UDRP ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <fluke.biz> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Furthermore, nothing in the record indicates that Respondent is commonly known by the <fluke.biz> domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to UDRP ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent’s <fluke.biz> domain name is identical to Complainant’s mark and Respondent generates revenue by using the domain name to redirect Internet users to a third party’s search engine.  Respondent’s commercial use of the misleading domain name does not constitute a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

The Panel finds that UDRP ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent commercially benefits from using a domain name identical to Complainant’s mark.  Respondent’s domain name redirects Internet users seeking Complainant to a search engine website.  Respondent receives payment from TargetWords for each Internet user directed to the website that uses the search engine.  Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s FLUKE mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to UDRP ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The Panel finds that UDRP ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all elements required under both the RDRP and UDRP, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fluke.biz> domain name be TRANSFERRED from Respondent to Complainant. 

John J. Upchurch, Panelist

Dated: September 9, 2004

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