The Complainant is Fluor Corporation of Irving, Texas, United States of America, represented by Melbourne IT DBS Inc., United States of America.
The Respondent is CK Ventures Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <flourdaniels.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 12, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On March 23, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 30, 2010. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2010. The Response was filed with the Center on April 20, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on May 4, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant evolved from a construction company founded in 1912. It is the largest U.S. based publicly-traded engineering, procurement, construction, maintenance services, and project management company. It is a FORTUNE 150 company that is ranked No. 1 in FORTUNE magazine's ‘‘Engineering, Construction'' category of America's largest corporations, and is considered one of the world's safest contractors. Fluor Corporation has a global workforce of over 40,000 with a presence in more than 60 countries on 6 continents, including a subsidiary organised under the laws of Barbados where the Respondent is located. The Complainant has been involved in some of the largest projects in the world.
The Complainant is the owner of the word mark FLUOR DANIEL registered on June 5, 2001 at the United States Patent and Trademark Office (USPTO) with registration number 2,456,881 and Community Trademark FLUOR DANIEL, registered on January 15, 2001 with registration number 001408863. The Complainant is also the owner of the FLUOR mark, registered on June 15, 1954 at the USPTO under number 0591442.
The domain name used by the Complainant for its home website, “www.fluordaniels.com” has been registered since August 30, 2000 (and <fluordaniel.com>, another domain name of the Complainant, has been registered since February 1, 1996).
The Complainant sent “cease and desist” letters to the Respondent (to no avail) on January 19, 2010 and January 26, 2010 informing the Respondent that it was infringing the Complainant's IP rights.
The Complainant says that it has established rights in the registered trademark “FLUOR DANIEL” and that the Respondent's domain name, <flourdaniels.com> is confusingly similar to Complainant's mark, the only difference between the two being the swapping of the letter “u” with the letter “o”, and the addition of the letter “s”.
A Google search for “Flour Daniels” yields at least 1,570,000 hits. The first result listed is the Complainant's site, “www.fluor.com”. Other results reference pages within the FLUOR.COM site, including careers in the company, press releases and investor information on the FLUOR CORPORATION. The Complainant asserts that this establishes that the Respondent's domain name is virtually identical to Complainant's trade name and confusingly similar to its registered trademarks.
The Complainant maintains that the Respondent has no rights or legitimate interests in the domain name. It goes on to say that there is no evidence that the Respondent owns registrations for any trademarks containing the terms “Flour Daniels” or “Flour Daniel”, that the term, “Flour Daniels” does not serve as the Respondent's trade name or business identity, and that the Respondent does not provide goods or services that are identified or described by these or similar terms.
The website associated with the disputed domain name registered by Respondent is a parked website providing links to some of the Complainant's competitors, inactive sites or sites created by the Respondent in violation of the Complainant's advertising guidelines, trademark licenses, and business relationships. The Complainant goes on to state that the Respondent is neither a licensee nor an authorized representative/ partner of Fluor Corporation.
The Respondent is not using the website in connection with any bona fide offering of goods or services but rather has chosen a domain name based on a registered trademark in order to generate traffic to a web site and thereby generate income.
The Complainant alleges that the domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name, <flourdaniels.com> on January 10, 2002. The brand FLUOR DANIEL has been a registered US trademark since 2001 with first use noted as January 1, 1998. In addition, the home site of the Complainant for this brand, FLUORDANIELS.COM, has been registered since August 30, 2000 and FLUORDANIEL.COM has been registered (by the Complainant) since February 1, 1996. The Complainant has received press all over the world and has a subsidiary office located in Barbados. In the Complainant's view, the Respondent is unable to claim that it was unaware of the existence of Complainant and its trademark.
The Complainant also says that the Respondent's bad faith is further shown by it using the website to which its domain name resolves as a “click-through” website, generating revenue by providing links to other construction, engineering, procurement and job related websites thereby taking advantage of the Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain.
Moreover, and further indicative of bad faith, the Respondent has included a link on the site which states, “To purchase this domain name, click here”. When clicked, the page is redirected to a professional domain broker service, DomainBroker.com, where an offer can be submitted to purchase the domain. If an offer is placed the following error message is received, “Based on the owner's valuation of this particular domain name, they will only consider offers above $10,000”.
The Complainant states that the Respondent's registration of misspellings and “typos” of a famous mark also provides strong evidence of its bad faith.
The Complainant also alleges that the Respondent has been involved in numerous prior UDRP proceedings in which the transfer of the disputed domain name was decided.
The Respondent denies that it registered the disputed domain name in bad faith. It states that it had no knowledge of the Complainant or its trade mark when it registered the disputed domain name and never intended to target or profit from the Complainant's trademark. Nevertheless, without making any admissions, it consents to a transfer of the Domain Name and suggests that the Panel should dispense with the traditional UDRP analysis and simply order the transfer.
In view of the Response, the Respondent has urged the Panel to simply order a transfer and dispense with an analysis under the UDRP, pointing out that such an approach has been taken in other UDRP cases. But a panel is not obliged to dispense with an analysis and in this case the Panel has decided to proceed in the usual way. Had the Respondent wanted to avoid such an analysis, it had sufficient opportunity so to do prior to the Complaint being issued. A positive response to one of the Complainant's cease and desist letters would also have saved the Complainant the WIPO fee and no doubt other related costs. The Panel's analysis is set out below.
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
The Panel finds that the Complainant has rights in the FLUOR DANIEL trademark so the question arises as to the similarity of the Respondent's disputed domain name, <flourdaniels.com>, (hereafter the Domain Name). The Domain Name and trade mark are identical (ignoring the “.com” suffix and gap between “fluor” and “daniel”) save for the swapping of the “u” and “o”, and the addition of the letter “s” to the word “Daniel”.
In Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380, where the domain name at issue was <zerox.com>, it was said by the Panel:
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name, previous decisions extensively discussed the subcategory of cybersquatters who are sometimes called “typosquatters”. One of these decisions is The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, where the appointed panel held: “In determining whether a domain name is confusingly similar to a trademark, the intention of the domain name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed. The panel finds that the disputed domain name is likely to attract customers of the broker seeking to access the broker's website who misspell or err in typing the domain address they seek. The close misspellings at issue here are confusingly similar to the Complainant's mark.”
In this case, the second-level part of the Domain Name, “zerox”, is almost phonetically and visually identical to the Complainant's trademark XEROX. Thus an average internet user who has an imperfect knowledge or recollection of the name, XEROX, might accidentally spell it with the letter Z instead of X at the beginning of the word, merely because of the way the Complainant's trademark is pronounced. The Panel is of the opinion that this fact alone is sufficient to conclude that the Domain Name is confusingly similar to Complainant's XEROX trademark.
The present case is very similar to the Xerox case. Given the visual and phonetic similarity between the trademark of the Complainant and Domain Name, there is clearly a possibility, if not likelihood that Internet users may be confused into thinking that the owner of the Domain Name is also the owner of the trademark to which it is similar. The swapping of the letters “o” and “u”, and the addition of the‘s' does nothing to reduce this confusion. For these reasons, the Panel finds that the Domain Name is confusingly similar to the FLUOR DANIEL trademarks.
The Respondent has not advanced any argument against the assertions made by the Complainant that it (the Respondent) has no rights or legitimate interests in the Domain Name. Maybe this is because that, in the Respondent's view, there was little point, given its consent to a transfer. Nevertheless the Panel, given its approach i.e. to provide a reasoned decision, will say something about this issue.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more.
In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the panel stated that “[r]ights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
The Domain Name was registered in 2002. The Complainant's brand was established by the time of registration and it's US and Community trademarks both registered by then too (in 2001). Moreover, <fluordaniels.com> was registered on August 30, 2000 and <fluordaniel.com>, registered on February 1, 1996, (both domain names of the Complainant).
The Respondent has said that it had no knowledge of the Complainant or its trademark when it registered the Domain Name in January 2002, but no reason is given as to why that particular domain name was chosen. The only use made of the Domain Name, which often gives a clue as to the purpose of registration, is to transport internet users to a site containing links to businesses with similar interests to that of the Complainant and which moreover contains reference to the Complainants' mark, FLUOR. In these circumstances, it is difficult to accept that the Respondent had a reason for registration of the Domain Name beyond a desire to drive Internet users to its site, or to in some other way benefit from the fame of the Complainant's brand. This case seems to be very similar to the Drexel case referred to above.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. There is no evidence before this Panel to contradict or challenge the contentions of the Complainant. This Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name which has not been contradicted in anyway. The Panel therefore finds that this element too of paragraph 4(a) of the Policy is established.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here.
Moreover, the Respondent has included a link on its site to a professional domain broker service where an offer can be submitted to purchase the Domain Name. As earlier noted, the Complainant says that if an offer of $250 is made an error message appears stating “Based on the owner's valuation of this particular domain name, they will only consider offers above $10,000”.
In Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, it was said:
There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.
The circumstances of the offer for sale made on behalf of the Respondent are very similar to those described in the Trip.com case.
In short, the Panel cannot foresee any legitimate explanation for registration or use of the Domain Name.
Given the foregoing, the Panel need not express any view or finding on the Complainant's allegation that the Respondent has been involved in numerous prior UDRP proceedings in which a transfer of the disputed domain name was decided.
In all the circumstances, this Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <flourdaniels.com> be transferred to the Complainant.
Dated: May 10, 2010