Fluke Corporation v. Yu Kun Deng
Claim Number: FA2010001918785
Complainant is Fluke Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Washington, USA. Respondent is Yu Kun Deng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fluke.mobi>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2020; the Forum received payment on October 29, 2020. The Complainant was received in English.
On October 29, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <fluke.mobi> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 30, 2020, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of November 19, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fluke.mobi. Also on October 30, 2020, the English and Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On November 24, 2020, Complainant submitted an Additional Submission.
On November 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Commencement Notification in Chinese and has sent an email in English to the Forum, referring to the allegations in the Complaint. Thus Respondent is conversant in English, yet has chosen not to submit a formal Reply. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it is an international manufacturer of industrial test, measurement, and diagnostic equipment. Since at least as early as 1961, Complainant has used the FLUKE mark in connection with the sale of electronic test and measuring instruments and devices and electronic test tools. Complainant has rights in the FLUKE mark based on registration in the United States in 2010. The mark is registered elsewhere around the world, including in China.
Complainant alleges that the disputed domain name is confusingly similar to its mark because it incorporates the entire FLUKE mark and simply adds the “.mobi” generic top level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted permission to Respondent to use the FLUKE mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet traffic to Respondent’s website where it offers the same products as Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract and divert Internet users to its own website where it trades on the goodwill of Complainant and benefits from consumer confusion by offering identical products for sale. Additionally, Respondent has actual knowledge of Complainant’s rights in the FLUKE mark based on Respondent offering Complainant’s goods for sale and using the disputed domain name to pass off as Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states: “I just got this domain name, and what happened earlier has nothing to do with me, I'm building Fluke.mobi into a website about sharing information about the British band Fluke Electronics, Fluke Industrial Products company, which has no patent protection in the field of music intellectual property, so please reject its unreasonable claim.”
C. Additional Submissions
In its Additional Submission, which refers to Respondent’s email to the Forum, Complainant alleges that domain name registrants are responsible for the content on any website associated with the domain name. The relevant WHOIS record shows that the Respondent has owned the domain name since at least 2018. Respondent cannot disclaim the content of the website at the time upon which the Complaint was filed. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent modified its website after receiving the Complaint, so as to comport with its allegations that the website was not being used in bad faith. Specifically, Respondent revised the resolving website in an effort to display content that might otherwise indicate that the website acts as a dedicated page featuring information and other content relating to a band known as Fluke Electronics. However, the Panel must examine the reported domain name in the context in which it appeared at the time upon which the Complaint was filed. It may not consider the modifications made by the Respondent in the wake of its receipt of the Complaint. Respondent’s modification of the website in association with the domain name after receipt of the Complaint shows a lack of legitimate rights pursuant to Policy ¶ 4(a)(ii) as well as bad faith pursuant to pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
Finally, Complainant provides evidence to the effect that the resolving website continues to display language that is intended to show that it is an authorized FLUKE brand professional services provider in China; it displays an expired qualification certificate intended to falsely claim its services and products are authorized, legitimate offerings of Complainant’s goods and services in China.
Complainant owns the mark FLUKE and uses it to market industrial test, measurement, and diagnostic equipment.
Complainant’s rights in its mark date back to at least 2010.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and offers for sale products that are identical to those of Complainant.
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 Policy 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates Complainant’s FLUKE mark in its entirety and merely adds the “.mobi” gTLD. Under Policy ¶ 4(a)(i), the addition of gTLD to a mark does not differentiate the domain name from the mark. See Sanlam Limited v. songyiqing / ziyouzhiye, FA 1475014 (Forum Jan. 25, 2013) (“The Panel concludes that using Complainant’s entire mark in the domain name and adding the gTLD “.mobi” does not negate the identical aspect of the <sanlam.mobi> domain name to Complainant’s SANLAM mark under Policy ¶ 4(a)(i).”). Thus, the Panel finds that the <fluke.mobi> domain name is identical to Complainant’s FLUKE mark under Policy ¶ 4(a)(i).
Complainant has not permitted Respondent to use the FLUKE mark in any way. Respondent is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record lists “Yu Kun Deng” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
The resolving website offers for sale goods that are identical to those of Complainant. Despite the Respondent’s allegations to the contrary, as shown by evidence presented by the Complainant, that use continued after Respondent sent its email to the Forum. The use of a disputed domain name to divert consumers and offer competing goods for sale does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent alleges that it registered the disputed domain name with the intent to sharing information about the British band Fluke Electronics, but it provides no evidence to support this allegation. As already noted, Complainant provides evidence showing that the resolving website continued to offer for sale goods that are identical to those of Complainant after Respondent sent its email to the Forum. Thus the Panel finds that Respondent registered the disputed domain name in bad faith.
Indeed, again as already noted, Respondent continues to use the disputed domain name to attract and divert Internet users to its own website where it trades on the goodwill of Complainant and benefits from consumer confusion by offering identical products for sale. Per Policy ¶ 4(b)(iii) and (iv), the use of a disputed domain name to divert consumers and offer competing products for sale constitutes bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see additionally Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fluke.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
November 30, 2020
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