Fluke Corporation v. Jon Cullum d/b/a
TFunk
Claim
Number: FA0405000267476
Complainant is Fluke Corporation (“Complainant”), represented
by Timothy S. Cole, of Ladas & Parry,
5670 Wilshire Blvd., Los Angeles, CA 90036.
Respondent is Jon Cullum d/b/a TFunk (“Respondent”), Brunswick 152, GL50 4HB Cheltenham GB.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <fluke-uk.com> and <fluke-uk.net>,
registered with Schlund + Partner AG.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 3, 2004; the Forum received a hard copy of the Complaint
on May 5, 2004.
On
May 4, 2004, Schlund + Partner AG confirmed by e-mail to the Forum that the
domain names <fluke-uk.com> and <fluke-uk.net> are
registered with Schlund + Partner AG and that Respondent is the current
registrant of the names. Schlund + Partner AG has verified that Respondent is
bound by the Schlund + Partner AG registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 10, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 1, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@fluke-uk.com and postmaster@fluke-uk.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 3, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fluke-uk.com> and
<fluke-uk.net> domain names are confusingly similar to
Complainant’s FLUKE mark.
2. Respondent does not have any rights or
legitimate interests in the <fluke-uk.com> and <fluke-uk.net>
domain names.
3. Respondent registered and used the <fluke-uk.com>
and <fluke-uk.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
world leader in the manufacture, distribution and service of electronic test
tools and software. Complainant has
manufacturing centers in the United States, the United Kingdom and the
Netherlands. Complainant has sales and service subsidiaries located in Europe,
North America, South America, Asia and Australia.
Complainant
operates websites at the <fluke.com> and <fluke.co.uk> domain
names.
Complainant, along
with its subsidiaries around the world, owns numerous registrations for the
FLUKE trademark, including U.S. registration number 861,610 (issued Dec. 10,
1968 in connection with “electrical power supplies, precision resistors,
frequency synthesizers, frequency comparators, VLF receiver-comparators,
distribution amplifiers, and precision voltage dividers”).
Respondent
registered the disputed domain names <fluke-uk.com> and <fluke-uk.net>
on February 27, 2003. The registrations
for the disputed domain names were set to expire on February 27, 2004 but
Respondent renewed the names prior to expiration. The domain names have not been used by Respondent and merely
resolve to a website, presumably hosted by the registrar, that contains the
message, “This domain has just been registered for one of our customers! Domain registration and webhosting at best
prices. 1&1 Webhosting.”
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."
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.
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.
As a result of
Complainant’s numerous registrations of its trademark FLUKE with governmental
agencies, including its long-standing U.S. registration number 861,610,
Complainant has established rights in the FLUKE mark under the Policy. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see
also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The disputed domain names <fluke-uk.com> and <fluke-uk.net> contain
Complainant’s FLUKE mark in its entirety.
The domain names are confusingly similar to Complainant’s mark because
the domain names merely add the common abbreviation for the United Kingdom,
namely “UK,” which signifies the geographic location where Complainant engages
in commercial activity under its FLUKE mark.
See InfoSpace, Inc. v. domains Asia Ventures, FA
198909 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent's
addition of the letters ‘uk’ to Complainant's mark does not materially change
the impression of the domain name.”); see also MFI UK Ltd. v. Jones,
D2003-0102 (WIPO May 8, 2003) (“[T]he Panel concludes that the domain name
(which involves only the addition of the common designation UK identifying the
United Kingdom) is confusingly similar to a trademark in which the Complainants
have rights.”).
Moreover, the
disputed domain names have each added a hyphen to separate Complainant’s mark
from the “UK” abbreviation. Hyphens are
generally irrelevant for the determination of whether a domain name is
confusingly similar to a complainant’s mark under the Policy. See
Health Devices Corp. v. Aspen S T C, FA
158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in
the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see
also Sports Authority Michigan Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum
Sept. 23, 2003) (“The
addition of a hyphen to Complainant's mark does not create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis.”).
Likewise, the addition of a
top-level domain is also irrelevant in determining whether a domain name is confusingly similar to a
complainant’s mark under the Policy. See
Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that top-level domains and
hyphens are irrelevant for purposes of the Policy); see also Nevada State Bank v. Modern Ltd. – Cayman Web
Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”).
Therefore, Complainant has
established Policy ¶ 4(a)(i).
Respondent
failed to respond to the Complaint. The
respondent’s failure to respond has frequently been construed as an implicit
admission that the respondent lacks rights and legitimate interests in the
domain name. The Panel follows this
line of reasoning. See
Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003)
(finding that, since Respondent did not come forward to explain what legitimate
use it may have had in the domain names, “the Panel may presume that Respondent lacks rights and legitimate interests in the domain
names at issue”); see also Allergan Inc. v. MedBotox Inc., FA
170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept all
reasonable allegations and inferences in the Complaint as true.”); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that Respondent’s failure to respond to the Complaint allows the Panel
to make reasonable inferences in favor of Complainant and accept Complainant’s
allegations as true); see also Am. Online, Inc. v. Clowers, FA 199821
(Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge
Complainant’s allegations allows the Panel to accept all of Complainant’s
reasonable allegations and inferences as true).
Respondent has
not used the domain names in any fashion since the original registration on
February 27, 2003. The domain names
merely resolve to a website that is presumably sponsored by the registrar Schlund
+ Partner AG. Therefore, given the
length of time since the original registration, the Panel concludes Respondent
is passively holding the disputed domain names, which does not evidence a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Not
My Kid, Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003)
(“[The] Panel finds that the passive
holding of the domain name is an indication that Respondent does not have
rights or legitimate interests in the domain name.”) see also Ritz-Carlton Hotel Co. LLC
v. Club Car Executive Transp.,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services).
Additionally,
there is no evidence in the record that indicates Respondent is commonly known
by the disputed domain names pursuant to Policy ¶ 4(c)(ii), especially in light
of Respondent’s non-use of the domain names. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark).
Therefore, Complainant has
established Policy ¶ 4(a)(ii).
Passively
holding a domain name has been frequently found to evidence bad faith
registration and use under Policy ¶ 4(a)(iii).
The Panel follows this line of reasoning in the instant case. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Late Response
A purported response was sent to the National
Arbitration Forum on June 4, 2004 and promptly forwarded to the undersigned.
The purported Response lacked any
proof of service indicating that the purported Response was served upon the
other party, and the time for the receipt of the Response was well past
due. Consequently the purported
Response is fatally deficient and cannot be considered. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the Response is
solely in the discretion of the Panelist); see also
UFCW Int’l Union v. Union Automation,
FA 94665 (Nat. Arb. Forum June 8, 2000) (holding that untimely Response without
Motion or Affidavit does not controvert Complainant’s allegations and proof and
all reasonable inferences of fact in the allegations of the Complaint will be
taken as true).
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-uk.com> and <fluke-uk.net>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 4, 2004
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