WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fluke Corporation v. Proxy Protection LLC / Cheng Woon Ng
Case No. D2016-2442
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 Proxy Protection LLC of Brea, California, United States of America / Cheng Woon Ng of Batu Pahat, Johore, Malaysia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <flukemalaysia.com> (the “Domain Name”) is registered with DreamHost, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on December 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 20, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. On January 8, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date to January 14, 2017. The Response was filed with the Center on January 13, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 24, 2017. 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.
On January 25, 2017, the Complainant filed a supplemental filing in this matter indicating among others that the Domain Name use has changed since its Complaint submission, namely that it redirects to an unrelated website. This filing was sent by email to the Center and copied to the email address from which the Response was filed, the Respondent not having formally provided a contact email address in its response. On January 31, 2017, the Panel issued the following Panel Order:
“The Panel has agreed to accept the Complainant’s Supplemental Filing of January 24, 2017, therefore the Panel provides the Respondent with an opportunity to file a supplementary filing in response to the Complainant’s Supplemental Filing. The deadline for the reply by the Respondent is February 6, 2017.
The Panel also notes that the Affidavit of Yeo Cheng Ngee refers to, but does not contain an exhibit A. The Panel expects that such an exhibit, if it exists, be filed and served on the Respondent as soon as reasonably practicable.”
On January 31, 2017 the Complainant filed exhibit A to the affidavit of Yeo Cheng Ngee and on the same day sent a copy of exhibit A to the email address from which the Response was filed. On February 3, 2017, the Respondent contacted the Center and stated that it had not received the Complainant’s Supplemental Filing (despite the fact that the record shows that the supplemental filing was sent to the email address from which the Response was filed). On the same day, the Center sent a further copy of the Complainant’s Supplemental Filing to the Respondent.
The Respondent filed a reply to the Complainant’s Supplemental Filing on February 6, 2017, which pursuant to paragraph 10(b) of the Rules, I have decided to accept.
4. Factual Background
The Complainant is a company involved in the manufacture, distribution and service of electronic test tools, biomedical equipment and networking solutions. It was established in the United States in 1948 and has traded continuously since then.
The Complainant is the owner of a number of trade mark registrations consisting of the word “Fluke” (the “FLUKE Mark”), registered in inter alia the United States in 1989 and Malaysia in 1987 for various electrical apparatus. The Complainant has also registered a device mark, consisting of the word “Fluke” in black surrounded by a yellow box, since 1998.
The Domain Name <flukemalaysia.com> was registered on May 4, 2007. At the time of the appointment of the Panel, the Domain Name resolved to an Internet site (“Respondent’s Website”) which describes itself as “Fluke Store Malaysia” and states that has supplied and distributed genuine Fluke products for 15 years. Following the appointment of the Panel, the Respondent’s Website ceased all activity. The Respondent is not an authorized distributor or reseller of the Complainant in Malaysia. Evidence in the Complaint and unrebutted in the Response indicates that prior to the commencement of the proceedings the Domain Name has resolved to variously, a Facebook page with the title “Fluke Chan” that makes no reference to the Complainant, a blank webpage, and an earlier iteration of the Respondent’s Website that offered various electronic products, both sold by the Complainant and by its competitors, including by Kyoritsu, Dagatron, Greenlee and Garmin.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s FLUKE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the FLUKE Mark, having registered the FLUKE Mark in the United States and Malaysia, the location of the Respondent.
The Domain Name consists of the FLUKE Mark in its entirety with the addition of the geographical term “Malaysia”, which is insufficient to prevent user confusion, indeed promotes such confusion by leading consumers to believe the website associated with the Domain Name is operated by the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not a licensee, subsidiary, authorised distributor or authorised reseller of the Complainant. The Respondent has used the Domain Name redirect customers to a Facebook page that has no connection to the Complainant or to pages in which the Respondent purports to sell the Complainant’s products alongside directly competitive third-party products in a manner that does not disclaim or accurately disclose the Respondent’s relationship with the Complainant. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered without the Complainant’s permission and since registration has resolved to a series of websites that copy the look and feel of the Complainant’s official websites (or re-direct consumers to other websites) and otherwise pass themselves off as official stores of the Complainant. This creates a likelihood of confusion with the Complainant. It is the clear and obvious intention of the Respondent to unlawfully capitalise on the goodwill and consumer recognition of the Complainant and to profit from this confusion. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent is a reseller of the Complainant’s products and has been selling the Complainant’s products for 15 years. The Respondent has purchased the Complainant’s products from a company in Singapore, who purchased the products from an official distributor of the Complainant. The Respondent’s website does not confuse anyone since the main website used by the Complainant is “www.fluke.com” which also appears at the top of Google search results. Both the Respondent itself and the Respondent’s Website state clearly that they are a dealer of the Complainant’s products. When a person purchases a product of the Complainant the product itself clearly states that the official website of the Complainant is “www.fluke.com”.
The Respondent also provides sales and technical support for the Complainant’s products and shares the objective of the Complainant, which is to make the Complainant’s products more popular. Finally the Respondent has almost ceased the sale of the Complainant’s products in the last 3 months, amounting to less than 0.05% of the total annual sales from the Respondent.
The Respondent notes that there are numerous other available domain names that consist of the FLUKE Mark and a geographical term and the Complainant should register them.
The Respondent is not engaging in bad faith. It has not parked the website, not offered the Domain Name for sale or criticized the Complainant in any manner.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the FLUKE Mark, having registrations for the FLUKE Mark as a trade mark in the United States and Malaysia, the location of the Respondent.
The Domain Name consists of the FLUKE Mark, with the addition of geographical term “malaysia”. The addition of the geographical term “malaysia” does not prevent a finding of confusing similarity. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a website operated by the Complainant in or targeting its consumers in Malaysia. The Panel finds that the Domain Name is confusingly similar to the Complainant’s FLUKE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the FLUKE Mark or a mark similar to the FLUKE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent states that it is presently using and has in the past used the Domain Name to operate a website to sell the Complainant’s genuine products, purchased from a third party in Singapore. While the Respondent’s actions in importing and reselling the Complainant’s products may be permitted by law (the Panel does not reach a conclusion here), such use does not automatically grant the Respondent rights and legitimate interests in the Domain Name. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.3 summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Moreover, the evidence in the Complainant, unrebutted by the Respondent, suggests that up to the commencement of the present proceeding the Domain Name was either inactive, redirected to an unrelated Facebook page, or redirected to earlier iterations of the Respondent’s Website that offered for sale products by competitors of the Complainant and/or redirected consumers to other websites that offered for sale products by competitors of the Complainant. The Respondent’s present and historical use of the Domain Name does not grant it rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that the Respondent was aware of the Complainant and its reputation in the FLUKE Mark at the time the Domain Name was registered. The Respondent states that it has dealt in the Complainant’s products for over 15 years.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website to sell both the Complainant’s products and products that compete with the Complainant’s products. The Respondent has used the Domain Name that is confusingly similar to the FLUKE Mark to sell products from companies that compete with the Complainant and to sell the Complainant’s products through a website that does not disclose that the Respondent is not an authorized distributor or otherwise connected to the Complainant. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s FLUKE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <flukemalaysia.com>, be transferred to the Complainant.
Date: February 8, 2017