Fluor Corporation v. Chelsea Dunla / ERICA BOHN
Claim Number: FA1412001597489
Complainant is Fluor Corporation (“Complainant”), represented by Stina Pilotti of CSC Digital Brand Services AB, Sweden. Respondent is Chelsea Dunla / ERICA BOHN (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fluorscorpusa.com> and <fluors-corp.com>, registered with GoDaddy.com, LLC and eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <fluors-corp.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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”).
Also on December 31, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fluorscorpusa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@fluorscorpusa.com, as well as postmaster@fluors-corp.com. Also on January 6, 2015, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant
Complainant owns the FLUOR mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 591,442, registered June 15, 1954). Complainant uses FLUOR to identify its construction company, and also operates in engineering, procurement, maintenance, and project management. The <fluorscorpusa.com> and <fluors-corp.com> domain names are confusingly similar to the FLUOR mark. The domain names incorporate the mark in full, affixed by a pluralizing “s,” as well as generic business term “corp” and in one instance the geographic acronym “usa.” The fact that Complainant is a corporation based out of the United States shows that these alterations serve to heighten confusing similarity. The addition of a hyphen and gTLD are inconsequential alterations.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as demonstrated by the WHOIS information. Respondent has failed to make use of the disputed domain names website, and has not demonstrated any attempt to make legitimate interests in the disputed domain names. The disputed domain names have been used in connection with an e-mail scheme where Respondent’s e-mails encourage the recipient to download and fill in a job application. It is clear Respondent is attempting to pass itself off as Complainant.
Respondent has engaged in bad faith registration and use. The disputed domain names should be regarded as disrupting Complainant’s business as evidence of bad faith under Policy ¶ 4(b)(iii). Additionally, the domain names have been used in connection with an e-mail scam where Respondent passes itself off as Complainant in furtherance of fraud. Further, Respondent has failed to make an active use of the disputed domain name, which suggests bad faith. Lastly, Respondent had knowledge of Complainant at the time of domain name registration, which is evidence of bad faith pursuant to the catch-all provision of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of engineering, procurement, maintenance, and project management.
2. Complainant owns the FLUOR mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 591,442, registered June 15, 1954).
3. The <fluorscorpusa.com> and <fluors-corp.com> domain names were registered October 23, 2014 and October 11, 2014, respectively.
4. The domain names have been used for an e-mail scheme to encourage the recipient of Respondent’s emails to download and fill in a job application and in an attempt to pass itself off as 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the e-mail addresses listed for the disputed domain names are nearly identical, with one having an additional “y” (adamkelseyyy@[redacted].com versus adamkelseyy@[redacted]l.com). Further, the disputed domain names were used for the same job opening or interview scam. See Compl., at Attached Ex. J. In light of these similarities, the Panel finds that one entity is behind both domain names in dispute and that accordingly the proceeding is covered by Paragraph 3(c) of the Rules and may proceed.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to own the FLUOR mark through registration with the USPTO (e.g., Reg. No. 591,442, registered June 15, 1954). Complainant uses FLUOR to identify its construction company, and also operates in engineering, procurement, maintenance, and project management. The Panel finds that Complainant has demonstrated its rights in the FLUOR mark for purposes of Policy ¶ 4(a)(i) via trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FLUOR mark .Complainant argues that the <fluorscorpusa.com> and <fluors-corp.com> domain names are confusingly similar to the FLUOR mark. Complainant notes that the domain names incorporate in both cases the mark in full, followed by a pluralizing “s,” as well as the generic business term “corp”. In one instance the geographic acronym “usa” is added. In the case of the other domain name, there is a hyphen added between the words “fluors” and “corp”. Complainant claims the fact that it is a corporation based in the United States shows that these alterations only serve to heighten confusing similarity. Complainant also adds that the addition of the hyphen and gTLD are inconsequential alterations. The Panel agrees that the <fluorscorpusa.com> and <fluors-corp.com> domain names are confusingly similar to the FLUOR mark pursuant to Policy ¶ 4(a)(i) as the relevant added terms and minor alterations in spelling and punctuation fail to distinguish the name from the wholly incorporated mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); Hess Corp. v. John Doe, FA 1212503 (Nat. Arb. Forum July 29, 2008) (finding the <hess-corporation-uk.com> domain name confusingly similar to the HESS mark as the added business term and geographic abbreviation did not distinguish the name from the mark); Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous FLUOR
trademark and to use it in its domain names and incorporating a pluralizing “s,” as well as generic business term “corp,” and in one instance the geographic acronym “usa.” In the other case, the domain name contains a hyphen and the gTLD “.com”;
(b) Respondent registered the disputed domain names on October 23, 2014 and October 11, 2014 respectively and has used them for an e-mail scheme to encourage the recipient of Respondent’s emails to download and fill in a job application and in an attempt to pass itself off as Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain names, as demonstrated by the WHOIS information. The Panel notes that the WHOIS information for the domain names lists “Chelsea Dunla” and “ERICA BOHN” as registrant. The Panel agrees that neither of these identify Respondent as being commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant next argues that Respondent has failed to make use of the disputed domain names’ website, and has not demonstrated any attempt to make legitimate interests in the disputed domain names. See Compl., at Attached Ex. F. Prior panels have held that a respondent’s failure to make use of a disputed domain name suggests a lack of rights or legitimate interests in the domain name. See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Under the present circumstances, the Panel agrees that Respondent’s failure to make an active use of the disputed domain names shows that the names are not being used for a bona fide offering, nor legitimate noncommercial or fair use;
(f) Complainant also submits that the disputed domain names have been used in connection with an e-mail scam where Respondent’s e-mails encourage the recipient to download and fill in a job application. See Compl., at Attached Ex. J. Complainant adds that Respondent is attempting to pass itself off as Complainant, as Complainant’s name appears in the signature line of the e-mails and the e-mail content relates to Complainant’s enterprise. See id. Prior panels have determined that the use of an e-mail string associated with a disputed domain name to impersonate the complainant in furtherance of some nefarious scheme is strong evidence that the respondent lacks rights or legitimate interests in the disputed domain name. See Tyco Int’l Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014) (finding no rights or legitimate interests where the disputed domain name was used to impersonate the complainant in e-mail messages in connection with a fraudulent scheme aimed at the complainant’s customers). Presently, the Panel agrees that Respondent’s use of the <fluorscorpusa.com> and <fluors-corp.com> domain name to send e-mails under the misleading guise of the e-mail strings in furtherance of some scheme whereby recipients return applications containing personal information amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that the disputed domain names should be regarded as disrupting Complainant’s business as evidence of bad faith under Policy ¶ 4(b)(iii). Prior panels have generally interpreted Policy ¶ 4(b)(iii) to require a degree of competition in respondent’s conduct. For example, panels have found bad faith under this provision where the respondent is a direct competitor in the same industry, or where the respondent uses the resolving page to promote links in competition to the complainant. See e.g., Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Currently, the Panel recalls that the disputed domain names themselves are inactive. See Compl., at Attached Ex. F. Still, these domain names are used for their e-mail strings through which Respondent apparently attempts to perpetrate a fraudulent application scheme using Complainant as bait. See Compl., at Attached Ex. J. As the Panel determines that such conduct falls within that proscribed by Policy ¶ 4(b)(iii), it finds evidence of bad faith under the provision.
Secondly, Complainant argues that the domain names have been used in connection with an e-mail scam where Respondent passes itself off as Complainant in furtherance of fraud. Again the Panel is reminded that the corresponding domain e-mail strings are used in furtherance of a fraudulent job application scheme. See Compl., at Attached Ex. J. Prior panels have found evidence of bad faith in comparable scenarios. For example, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.” See also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel agrees that Respondent’s impersonation of Complainant through the e-mail associated with the disputed domain names to solicit employment applications and personal information amounts to bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent has failed to make an active use of the disputed domain name, which suggests bad faith. See Compl., at Attached Ex. F. The Panel agrees that Respondent’s failure to make any active use of the disputed domain names is further indication of bad faith in these circumstances. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Fourthly, Complainant argues that Respondent had knowledge of Complainant at the time of domain name registration, which is evidence of bad faith pursuant to the catch-all provision of Policy ¶ 4(a)(iii). The Panel agrees that Respondent’s efforts to send e-mails under the guise of Complainant shows that Respondent was familiar with the FLUOR mark and registered the disputed domain names with Complainant in mind. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.”). Accordingly, the Panel finds additional evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the FLUOR mark and in view of its conduct since the registration, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fluorscorpusa.com> and <fluors-corp.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 6, 2015
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