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 KMLOLO of Port Aransas, Arkansas, United States of America.
The disputed domain name <fluorme.com> (the “Disputed Domain Name”) is registered with Wild West Domains, Inc. (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Maxim H. Waldbaum 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 following uncontested facts are summarized from the Complaint.
The Complainant has used the name Fluor since it was founded as Fluor Construction Company in 1912. The Complainant registered the mark FLUOR (the “Mark”) in 1954. The Complainant is now the largest United States of America based publicly traded engineering, procurement, construction, maintenance services, and project management company. Since January 15, 2001, the Complainant is the sole owner and the current published owner of FLUOR at the Office for Harmonization in the Internal Market with registration number 001409093 under the “Nice Classifications” 37, 40 and 42. The Complainant is a Fortune 150 company, and is ranked number one in Fortune magazine's “Engineering Construction” category of the United States of America's largest corporations.
The Respondent registered the Disputed Domain Name on May 11, 2009.
The following allegations are summarized from the Complaint.
The Disputed Domain name is confusingly similar to the Complainant's registered Mark. The dominant part of the Disputed Domain Name contains the Complainant's registered trademark with the addition of the generic term “me.” Therefore, the Complainant alleges that the Disputed Domain Name is confusingly similar to the Complainant's registered trademark.
The Respondent has no rights or legitimate interests in the Disputed Domain Name <fluorme.com>. There is no evidence that the Respondent owns registrations for any trademarks containing the terms “fluor” or “fluorme”. The term “fluor” or “fluorme” does not serve as the Respondent's trade name or business identity, and the Respondent does not provide any goods or services that are identified or described by these or similar terms. Further, the Respondent is not using the website in connection with any bona fide offering of goods or services, but instead has chosen a domain name based on a registered trademark in order to generate traffic to the website and through this procedure generate income.
Finally, the Respondent is using the Disputed Domain Name in bad faith. The Respondent has shown bad faith by registering the Disputed Domain Name after 1954, the date the Complainant registered its trademark. The Respondent failed to show proof of legitimacy upon receipt of a cease and desist letter sent by the Complainant on October 1, 2009 and a reminder on October 19, 2009. The Respondent's bad faith is further shown by the use of the website as a “click-through” website using the Complainant's Mark in order to generate revenue.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In this case the Respondent added the generic term “me” to the Complainant's Mark FLUOR. Prior UDRP panels have held that the addition of a generic term to the Mark does not alter the fact that the domain name is confusingly similar. Terex Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0733 (“It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question.”); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; EAuto, L.L.C. v. Net Me Up, WIPO Case No. D2000-0104. Therefore, the Disputed Domain Name is confusingly similar.
It is also well established that the addition of a gTLD such as “.com” to the end of the Mark does not significantly diminish the confusing similarity.
Therefore, the Panel finds that the paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(c) of the Policy establishes the standards under which a respondent can establish legitimate rights to and in a domain name. The Respondent may prove any of the following to establish its legitimate rights in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to submit any evidence that it is commonly known by the Disputed Domain Name, or that it has used the Disputed Domain Name in connection with a bona fide offering of goods and services. Furthermore, there is no evidence in the record to support a claim that the Respondent is making a legitimate noncommercial or fair use of the Dispute Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and is not associated or affiliated with the Complainant in any way. By default there is no evidence in the record that the Respondent has any legitimate interest in the Disputed Domain Name, or is associated or affiliated with the Complainant.
Further, the Respondent appears to be attempting to use the Complainant's Mark in order to generate revenue for itself. The Disputed Domain Name resolves to a parked website offering many links, some of which seem to be services similar to those of the Complainant. No evidence has been presented that the Respondent is operating a real company “Fluor Me.” Therefore, in the Panel's view, the Respondent is trying to benefit from the association with the Complainant's Mark by drawing traffic to its parked website in order to generate a “click-through” fee for itself. See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
Based on the foregoing, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy.
The Respondent registered the Disputed Domain Name in bad faith. Bad faith can be established by proving that: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Paragraph 4(b)(iv).
The Respondent registered the Disputed Domain Name on May 11, 2009, almost sixty years after the Complainant registered its Mark. Based on the well-known name of the Complainant and its history, it would seem unlikely in the Panel's view based on the evidence for the Respondent to claim it is unfamiliar with the existence of the Complainant and its Mark.
Also, the Complainant sent the Respondent a cease and desist letter on October 1, 2009 and a reminder on October 19, 2009. The Respondent failed to show proof of legitimacy.
The Respondent's bad faith is further shown through its use of the Complainant's Mark in order to generate revenue through its parked website. The Respondent's site has provided links to other construction and job related websites similar to the goods and services provided by the Complainant. The Respondent attempts to take advantage of the Complainant's Mark in order to achieve wrongful gains by using a parked website in order to generate “click-through” fees. This conduct is evidence of bad faith. AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains LLC, WIPO Case No. D2008-1470; Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation, WIPO Case No. D2007-0440.
Further, consumers seeking the Complainant's services may accidently view the Disputed Domain Name, which is confusingly similar to the Complainant's Mark. This is the type of activity that typically will disrupt legitimate company business. Prior UDRP panels have found such conduct evidences bad faith. EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., NAF Claim No. 94385.
Therefore, the Panel finds that the Respondent was acting in bad faith in its registration and use of the Disputed Domain Name, and the Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.
The Disputed Domain Name was registered on May 11, 2009, and was set to expire on May 11, 2010. The Center notified the Registrar of the expiration on March 18, 2010. The Registrar responded on March 20, 2010 that the Complainant bore the burden of ensuring the Disputed Domain Name did not expire. The Center notified the parties on March 22, 2010 that some action should be taken in order to ensure the administrative proceeding could continue under the UDRP. On March 23, 2010, Melbourne IT DBS, Inc., the agent of the Complainant, notified the Registrar that it would like to renew the Disputed Domain Name. According to paragraph 220.127.116.11, of the ICANN Expired Domain Deletion Policy, the Complainant has “the option to renew or restore the name under the same commercial terms as the registrant.”
Although the ICANN Expired Domain Deletion Policy allows the Complainant to renew or restore the Disputed Domain Name, “the Complainant's refusal to renew or restore does not hinder the ongoing process.” Sanofi-aventis v. Jack Chu, WIPO Case No. D2009-0393. It appears from the record that the Complainant has sought to contact the Registrar to undertake the necessary steps but has not received a reply or further instructions from the Registrar.
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 <fluorme.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: May 17, 2010