WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fluke Corporation v. Supremelines Co., Ltd

Case No. D2015-1619

1. The Parties

The Complainant is Fluke Corporation of Everett, Washington, United States of America (“United States”) represented by Perkins Coie, LLP, United States.

The Respondent is Supremelines Co. Ltd. of Bangkok, Thailand.

2. The Domain Names and Registrar

The disputed domain names <fluke-digital-meter.com> and <fluke-thailand.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 12, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2015.

The Center appointed Luca Barbero as the sole panelist in this matter on October 21, 2015. 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.

4. Factual Background

The Complainant is the owner of the word mark FLUKE, which has been used in commerce in connection with the Complainant’s electronic test and measuring devices and instruments as early as 1961, and of the figurative trademark FLUKE (constituted of the word “Fluke” included in a yellow box), which has been used since 1984.

The Complainant owns several trademark registrations incorporating the term FLUKE, including the United States trademark registration Nos. 1557670 for FLUKE (word mark), filed on November 25, 1987 and registered on September 26, 1989, in International class 9; and 2174254, filed on July 24, 1996, and registered on July 21, 1998, in International class 9; the Thailand trademark registration Nos. KOR68479, registered on December 9, 1987, in International class 9, and KOR104906, registered December 9, 1998, in class 9.

The Complainant also owns the domain name <fluke.com>, registered on October 27, 1986, at which the Complainant operates its own website.

The disputed domain names <fluke-digital-meter.com> and <fluke-thailand.com> were registered on February 19, 2014 and, at the time of the drafting of the decision, are not pointed to active websites.

However, according to the evidence on records, the disputed domain names were pointed in the past to websites featuring the Complainant’s figurative trademark FLUKE and promoting the Respondent’s sale of industrial automation and control equipment, including purported FLUKE measuring devices.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain names are confusingly similar to the trademark FLUKE as they wholly incorporate the trademark with the mere addition of the descriptive terms “digital meter” and “thailand” and the generic top-level domain “.com”, which are insufficient to prevent confusion.

The Complainant submits that multimeters and/or a digital multimeters (“DMM”) are the flagship products sold under the trademark FLUKE, that the trademark FLUKE is well-known and associated exclusively with the Complainant and that the Complainant is widely regarded as one of the leading digital test instrument product companies in the world.

With reference to the Respondent’s rights or legitimate interests in the disputed domain names, the Complainant claims that the Respondent has no trademark rights in the trademark FLUKE or in the disputed domain names and that the Respondent is not commonly known by the disputed domain names since, as highlighted by the WhoIs database information and the contact information provided on the Respondent’s websites, the Respondent is named Supremelines Co. Ltd.

The Complainant states that the Respondent is not a licensee, subsidiary, authorized distributor, or authorized reseller of the Complainant or the Complainant’s products; that the Respondent has never been authorized to use the Complainant’s trademark FLUKE, nor has the Complainant authorized or licensed the Respondent to supply or distribute the Complainant’s goods.

The Complainant asserts that, while the term “fluke” does have several independent English dictionary definitions, such as in connection with whale anatomy and as an accidental or chance happening, the meaning of the word is completely irrelevant to the purpose for which the Respondent uses the disputed domain names.

The Complainant submits that the Respondent chose to use the trademark FLUKE in the disputed domain names solely to trade on the goodwill associated with the Complainant’s trademarks, create initial interest confusion, and falsely suggest an affiliation with the Complainant.

The Complainant also states that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names since it purportedly offers products of the Complainant for sale on the websites associated with the disputed domain names without meeting the Oki Data requirements to establish a legitimate interest.

The Complainant states that the Respondent has failed to accurately disclose the Respondent’s relationship with the Complainant, as the web pages to which the disputed domain names resolve falsely suggest to consumers that the Respondent is in some way affiliated with or authorized by the Complainant by using and prominently displaying the trademarks FLUKE.

The Complainant further avers that the Respondent is using the disputed domain names for commercial gain to misleadingly divert consumers to the Respondent’s primary website “www.supremelines.co.th”, where the Respondent sells a wide variety of products, including products directly competing the Complainant’s.

With reference to bad faith at the time of registration, the Complainant submits that, in light of the fame and notoriety of the Complainant’s trademark FLUKE, it is inconceivable that the Respondent could have registered the disputed domain names without actual knowledge of the Complainant’s rights in the mark. The Complainant further contends that the Respondent’s selection of “digital meter” as part of one of the disputed domain name makes it clear that the Respondent had knowledge of the Complainant, its trademarks and its products at the time of registration. The Complainant further alleges that the Respondent’s knowledge of the mark at the time of registration is highlighted by the prominent use of the Complainant’s figurative trademark FLUKE on the Respondent’s websites.

The Complainant concludes that the Respondent registered the disputed domain names with actual knowledge of the Complainant’s rights in the Complainant’s trademark in order to capitalize on the strength and consumer recognition of the trademark FLUKE, and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s websites and the products and services on the Respondent’s websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for the word and figurative mark FLUKE in several countries, including in the United States and in Thailand, where the Respondent is located. Therefore, the Panel finds that the Complainant has established rights in the trademark FLUKE.

As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.

The Panel finds that the addition of the geographical wording “Thailand” and of the terms “digital meter” to the Complainant’s trademark FLUKE, which are descriptive of the Complainant’s products, are insufficient to avoid a finding of confusing similarity under the first element of the UDRP. See paragraph 1.9 of the WIPO Overview 2.0.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

With respect to this requirement, a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in the disputed domain name.

According to the documents and statements submitted by the Complainant and unchallenged by the Respondent, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained any authorization to use the Complainant’s trademark or to register the disputed domain names.

In addition, there is also no indication before the Panel that the Respondent, whose name is Supremelines Co., Ltd, might be commonly known by the disputed domain names.

The Panel also finds that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, since, according to the screenshots on records, it has pointed the disputed domain names to websites displaying the Complainant’s figurative trademark FLUKE and promoting the Respondent and its sale of purportedly FLUKE products without accurately disclosing the absence of affiliation with the Complainant. Therefore, the Respondent does not meet the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in order for a reseller or distributor of trademarked goods to establish rights or legitimate interests in a domain name incorporating the concerned trademark.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence of several trademark registrations for the word and figurative mark FLUKE, including in Thailand, where the Respondent is based. All of those registrations predate the registration date of the disputed domain names.

As highlighted by the Complainant, despite the fact that the term “fluke” has several meanings in the English language, the mark is distinctive in connection with the Complainant’s products, namely the Complainant’s electronic test and measuring devices.

In view of the above, the Respondent’s selection of the term “digital meter”, which has been added to the trademark FLUKE in one of the disputed domain name, shows that the Respondent was likely aware of the Complainant’s trademark and products at the time of registration. Moreover, the publication of the FLUKE figurative trademark on the websites to which the disputed domain names resolve and the Respondent’s resale of purported FLUKE products show that the Respondent was actually aware of the Complainant’s trademark and intended to register the disputed domain names in order to expressly refer to said trademark.

As to the use of the disputed domain names, the Panel notes that, according to the evidence on records, the Respondent has redirected them to websites displaying the Complainant’s figurative trademark FLUKE and promoting the Respondent’s business in the sale of purported FLUKE products as well as competitive industrial automation and control equipment. Such use of the disputed domain names, in addition to the absence of any accurate disclaimer, does not amount to a bona fide and legitimate use, and demonstrates that the Respondent intentionally attempted to attract users for commercial gain to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the sites and products advertised therein, according to paragraph 4(b)(iv) of the Policy.

At the time of the drafting of the decision, the disputed domain names do not resolve to active websites, i.e. are passively held. As stated, amongst others, in Missoni S.p.A. v. William Song, WIPO Case No. D2012-0208 (where the domain name at issue resolved to a landing page), “the passive holding of a domain name which has no other legitimate use and clearly references the Complainant’s trademark may constitute registration and use in bad faith” (see also the leading case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In light of the above, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <fluke-digital-meter.com> and <fluke-thailand.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: November 6, 2015