Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson
Claim Number: FA2203001988399
Complainant is Fluke Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Erwin Bryson / fixmyfluke / Nelson Bryson (“Respondent”), represented by Connor Christensen of Tuggle Duggins P.A., North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flukerepair.com> and <fixmyfluke.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, Steven M. Levy, Esq. (chair), and Prof. David E. Sorkin as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 16, 2022; the Forum received payment on March 16, 2022.
On March 16, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <flukerepair.com> and <fixmyfluke.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2022 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@flukerepair.com, postmaster@fixmyfluke.com. Also on March 17, 2022, 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.
A timely Response was received and determined to be complete on June 6, 2022.
An Additional Submission from Complainant was received on June 9, 2022.
On June 15, 2022, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Paul M. DeCicco, Steven M. Levy, Esq. (chair), and Prof. David E. Sorkin as Panelists.
A First Additional Submission from Respondent was received on June 21, 2022.
On June 27, 2022 the Panel issued an interim Order and a response thereto was submitted by Respondent’s Representative on June 28, 2022.
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.
PRELIMINARY ISSUE: IDENTITY OF THE PARTIES and MULTIPLE RESPONDENTS
On June 27, 2022 the Panel issued an Order requesting that Respondent’s Representative reply to the following query:
Please clarify the name of the person(s) or entity(ies) on behalf of whom the Response is filed. Section 2 of the Response, titled “Respondent Information”, identifies Respondent’s name as “Dental Support Services, Inc. d/b/a DSS Technical Services”. The WHOIS records for the disputed domain names – both public and as revealed by the concerned Registrar – do not mention these names but identify the Registrants of the disputed domain names as “Erwin Bryson / fixmyfluke / Nelson Bryson”.
On June 28, 2022, Respondent’s Representative replied to this Order stating that:
First, Nelson Bryson and Erwin Bryson are the same person, Erwin Nelson Bryson (“Nelson Bryson”).
Second, Nelson Bryson is the owner of Dental Support Services d/b/a DSS Technical Services (collectively “DSS”). DSS owns both disputed domain names, fixmyfluke.com and flukerepair.com. R-Annexes 1 and 7 identify DSS as the owner of the disputed domain names.
The Panel notes that Response Annexes 1 and 7 are each titled “Declaration of Nelson Bryson” and both identify Nelson Bryson as the President and Owner of DSS and both contain the statement “DSS owns the two disputed domain names, <fixmyfluke.com> and <flukerepair.com>.” Despite the incongruence between the Respondent named in the Response and the Registrants named in the revealed WHOIS records, the Panel finds sufficient evidence to conclude that they are one and the same and it thus accepts the Response and Respondent’s First Additional Submission as having been filed on behalf of the Respondent in this case.
Further, in the instant proceedings, Complainant has alleged that the two 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, based on its previous communications with Respondent regarding each domain name, it has been assured that the different first names and addresses listed in the respective WHOIS records, both in Greensboro, NC, are aliases that identify a single individual. Thus, it asserts that common control is being exercised over the disputed domain names. The Panel finds no difficulty in agreeing with this position as Respondent, itself, states that it operates under a single corporate entity named Dental Support Services, Inc. d/b/a DSS Technical Services and that it “launch[ed] the websites at each respective at <fixmyfluke.com> and <flukerepair.com>” and “has conducted substantial business operations under the disputed domain names”. Based on this information, the Panel finds it fair and equitable to consolidate both of the disputed domain names into this single proceeding.
PRELIMINARY ISSUE: LACHES
Respondent claims that the present claim should be dismissed under the equitable doctrine of laches. While the doctrine has generally been disfavored in UDRP proceedings, see e.g., N.V. Nutricia v. Rob Monster, FA 1952511 (Forum Aug. 2, 2021), it may be considered where a respondent has relied, to its detriment, on a complainant’s delay in pursuing a dispute and would be prejudiced thereby. See Camco Manufacturing, LLC v. Brian Wick / CheapCo.com, FA 1992264 (Forum May 23, 2022) (“Recent cases have begun to apply laches in contrast to earlier cases to the contrary.”)
In any event, as the Panel has decided this case on other grounds, it does not feel the need to address the issue of laches here.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent requests that the Panel deny Complainant’s request for relief.
A. Complainant
Complainant, Fluke Corporation, uses the trademark FLUKE in relation to electronic test and measuring instruments and services related thereto. Complainant maintains registrations of the FLUKE mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,557,670 issued Sep. 26, 1989; Reg. No. 3,818,870 issued July 13, 2010; and others). The <fixmyfluke.com> and <flukerepair.com> domain names, registered on Feb. 10, 2014 and Sep. 24, 2018 respectively, are identical or confusingly similar to Complainant’s FLUKE mark because each one contains Complainant’s mark while incorporating the descriptive or generic terms “repair” or “fix my” and the “.com” generic top-level domain (“gTLD”) to form the domain name. Further, Complainant is aware of at least one instance of actual confusion between the disputed domain names and its FLUKE mark.
Respondent does not have any rights or legitimate interests in the <flukerepair.com> and <fixmyfluke.com> domain names because Respondent is not commonly known by the domain names nor has Respondent been authorized to use Complainant’s FLUKE mark. Respondent is not using the domain names in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use because Respondent provides services that compete with Complainant’s own repair services. Its website uses a grey and yellow color scheme similar to that used by Complainant and it also displays images of Complainant’s products. With regard to the <fixmyfluke.com> domain name, Respondent does not make active use of the domain name but, rather, has set it to automatically redirect users to the <flukerepair.com> website.
Respondent had actual knowledge of Complainant’s mark at the time it registered the <flukerepair.com> and <fixmyfluke.com> domain names and so it did so in bad faith. Further, the registration of these two domain names demonstrates a pattern of conduct. Respondent acts in bad faith as it disrupts Complainant’s business and creates a likelihood of confusion with the FLUKE mark for commercial gain by offering competing repair services at a website that makes misleading claims and uses a color scheme that is associated with Complainant’s mark as well as photographs of Complainant’s products. While Respondent’s website does display a disclaimer, it is insufficient to dispel confusion amongst users.
B. Respondent
Respondent asserts the equitable doctrine of laches based on Complainant’s delay in bringing this case of eight and three years from the respective dates that Respondent began using the <flukerepair.com> and <fixmyfluke.com> domain names and the passage of a year and a half since sending a cease-and-desist letter. Further, Respondent has rights and legitimate interests in the <flukerepair.com> and <fixmyfluke.com> domain names and the sudden loss thereof would cripple its business. Complainant would be unjustly enriched by a transfer and would reap the benefits of Respondent’s hard work and capital.
Respondent is commonly known by the domain names because Respondent does business under the fixmyfluke name and has been recognized as such by customers and in certain business listings. Further, Respondent makes a nominative fair use of the FLUKE mark in the disputed domain names, as that theory is set out in certain US Federal Court decisions, and has done so prior to being put on notice of the present dispute. Respondent uses the domain names in connection with a bona fide offering of goods or services or makes a fair use of the mark because Respondent actually and exclusively provides repair services of Complainant’s products and it also sells refurbished units of genuine FLUKE instruments. Its website contains a conspicuous disclaimer of affiliation with Complainant as well as other statements which make clear that Respondent is an independent business. With regards to the function of the <fixmyfluke.com> domain name, Respondent further has rights or legitimate interests since this was formerly used as the primary website address until the <flukerepair.com> domain was created to unify Respondent’s branding efforts. The fact that it now redirects users to the <flukerepair.com> domain name is part of Respondent’s continuous operation of its functioning and legitimate website – through at least one of the disputed domain names – for over 8 years.
Although Respondent admits to knowledge of Complainant’s mark, it did not register or use the <flukerepair.com> and <fixmyfluke.com> domain names in bad faith and it did not engage in a pattern of abusive registrations. Respondent actually provides the repair services that it advertises and it has never mislead actual or potential customers nor has it ever claimed to be in a business relationship with Complainant. Further, no pattern of conduct exists as Respondent only owns these two domain names and it acted in good faith because it provided a sufficient disclaimer to dispel any confusion amongst users.
C. Additional Submissions
In its Additional Written Submission, Complainant questions the date on which a disclaimer appeared on Respondent’s website and whether it was prior to its receipt of Complainant’s cease-and-desist letter putting Respondent on notice of this dispute. In any event, the disclaimer is insufficient to dispel consumer confusion and it does not cure initial interest confusion. Respondent’s citation, in its Response, to US Federal Court decisions on the issue of nominative fair use is inappropriate as the Policy is more germane to the Panel than such Federal rulings and the defense of nominative fair use is generally not well-adapted to domain names consisting of a trademark and descriptive or generic words. Further, Respondent’s use is not fair as it could have adequately informed the public of the nature of its services without using the FLUKE mark. Finally, the doctrine of laches generally does not apply under the Policy, Complainant did not delay in taking action, and trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse and enforce against each such instance.
In Respondent’s First Additional Submission, it states that Complainant mischaracterized or omitted certain facts leading up to the notice of the dispute. The disclaimer on Respondent’s website was added during the first week of September of 2020 which is prior to its being placed on notice of the present dispute by the receipt of Complainant’s November 20, 2020 cease-and-desist letter. Its site was updated to meet the standards of contemporary website design and the disclaimer was introduced in good faith to prevent confusion. Finally, the color scheme appearing on Respondent’s website is de minimis at best and it uses “before” and “after” photographs of FLUKE products to demonstrate its repair capabilities. Such activities clearly fall under nominative fair use.
- Complainant has demonstrated rights in the FLUKE trademark and each of the disputed domain names is confusingly similar thereto;
- Respondent makes a nominative fair use of the mark and thus has a legitimate interest in the disputed domain names;
- The disputed domain names are not being used to disrupt Complainant’s business as a pattern of such conduct, nor to attract users based on a likelihood of confusion with the FLUKE mark;
- The circumstances of this case present significant issues of US trademark law that would be best considered by a Federal court.
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the FLUKE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant has submitted copies of its USPTO registration certificates for the FLUKE mark. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the <flukerepair.com> and <fixmyfluke.com> domain names are identical or confusingly similar to the FLUKE mark because each one contains the entirety of the mark while adding generic or descriptive terms and the “.com” gTLD to form the domain name. A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(I), despite the addition of other terms and a gTLD. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms ‘investor relations,’ and the ‘.com’ gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”) Here, Respondent adds the generic or descriptive terms “repair” or “fix my” to the FLUKE mark. As the word FLUKE is clearly the most distinctive and noticeable part of each domain name, the Panel finds that the <flukerepair.com> and <fixmyfluke.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have any rights or legitimate interests in the <flukerepair.com> and <fixmyfluke.com> domain names under Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain names nor has Respondent been authorized to use Complainant’s FLUKE mark. In its defense, Respondent asserts that it is, in fact, commonly known by these domain names and that it does not require any authorization for use by Complainant as it makes a nominative fair use of the FLUKE trademark to describe its repair services. In considering this issue resort may be made to the WHOIS information for a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as ‘Bhawana Chandel,’ and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS record for the <flukerepair.com> domain name, as revealed to the Forum by the concerned Registrar, identifies the Registrant as “Nelson Bryson” whereas the record for the <fixmyfluke.com> domain name identifies “Erwin Bryson / fixmyfluke”. The Majority finds the use of “fixmyfluke” in this WHOIS record to be of interest as it indicates, at a minimum, that Respondent may identify itself by this term to some extent. Further, each page of Respondent’s website that resolves from the disputed domain names displays an arrow logo at the top immediately below which appears the <flukerepair.com> domain name and a footer with the notice “© 2020 Fluke Repair – All Rights Reserved”. Respondent has also submitted into evidence screenshots of three customer reviews as well as business listings with Google, the Better Business Bureau, and the Chamber of Commerce naming Respondent variously as “Fluke Repair”, “flukerepair.com”, and “Fix My Fluke”. Complainant does not address or contest this evidence in its Additional Written Submission. While Respondent’s submitted evidence is admittedly thin, the majority of the Panel (the “Majority) finds that it calls into question whether Complainant has made a prima facie case and it raises questions of fact that would be better decided by a court of law with its attendant evidentiary tools (discovery, witness testimony, cross-examination, etc.)
Next, Complainant asserts that Respondent does not make a bona fide offering of goods or services through the disputed domain names and also does not make a fair use of them under Policy ¶¶ 4(c)(i) or (iii). It asserts that Respondent uses the disputed domain names to trick consumers into visiting its website and to divert traffic away from Complainant. For its part, Respondent claims that it is making a nominative fair use of the FLUKE mark to fairly describe its repair services and that the disputed domain names satisfy the well-known test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Under this test, a sales or service dealer of trademarked goods (whether authorized or unauthorized) may demonstrate that its domain name use is bona fide where:
1. it is actually offering the goods or services at issue;
2. it uses its website to sell only the trademarked goods or services and not those of a complainant’s competitors or other third-parties;
3. the website accurately discloses the registrant's relationship (or lack thereof) with the trademark owner; and
4. the Respondent has not tried to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Id.
Applying the Oki Data test to the facts of the present case, the Complainant claims that Respondent is not actually offering Complainant’s repair services but is offering Respondent’s own services which compete with Complainant’s services of repairing FLUKE products. The Majority views this position as ignoring the Oki Data standard as an unauthorized outside dealer can never, itself, provide a complainant’s actual services. In Dell Inc. v. Rod Perry, FA 1855533 (Forum Aug. 31, 2019), the Complainant asserted that “Respondent offers and promotes computer repair services that are in direct competition with services offered by Complainant”. However, the Panel noted that “[i]n the present case, it is apparent that Respondent is offering Dell repair services in San Diego…” under the domain name <dellrepairsandiego.com>. It concluded that “[t]he Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose offering repair services in San Diego for Dell computers.” Here, Respondent states that it is a legitimate business which, since 2001, has provided repair services for Complainant’s FLUKE products and that it employs multiple engineers. The evidence submitted supports the claim that Respondent operates a legitimate repair business and Complainant has not contested this. As such, the Majority finds that Respondent satisfies the first element of the Oki Data test.
The second element of the test inquires whether a respondent uses a disputed domain name to offer only trademarked goods or services. Of particular interest on this point is the decision in National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., D2007-1524 (WIPO Jan. 28, 2008). David Bernstein, who authored the Oki Data decision, was part of a 3-member Panel in this case where the Complainant asserted that the Respondent’s services provided under the domain name <nascartours.com> do not satisfy the test. However, the Panel noted that “Respondent is actually offering tours of NASCAR events, and only tours of NASCAR events, on the website associated with the Domain Name. While these packages include some services, such as hotel accommodations (and perhaps even race tickets), that are not offered directly by the Complainant itself, they all relate to attendance at NASCAR racing events and not, for example, other travel opportunities. The Respondent’s business is NASCAR tours, just as the Domain Name implies; this is not merely a ‘bait and switch’ use of the Domain Name.” Id. Complainant does not contend that Respondent is offering to service or sell any non-FLUKE products through the website to which the disputed domain names resolve though it does mention that two other websites, which are not at issue in this case, promote instruments that compete with Complainant’s FLUKE products and contain a link to the <fixmyfluke.com> site. Respondent admits that it owns these other websites but it argues that “The Oki Data test requires plainly that the respondent must use the site to sell only the trademark goods and services” and it points out that its <flukerepairs.com> website does not contain any backlinks to these other two sites. The Majority agrees that Oki Data does not consider the content of any other websites beyond those resolving from the disputed domain names at issue in a given case unless there are references or links to such other websites on the site at issue. As such, any mention of third-party products at Respondent’s other websites has no bearing on the application of the Oki Data test to the <fixmyfluke.com> and <flukerepairs.com> domain names.
One of the most debated issues in the pleadings, is the third element of the Oki Data test, whether Respondent accurately discloses its lack of a relationship with Complainant. Respondent claims that, at least since early September of 2020, and prior to Respondent being placed on notice of the present dispute by Complainant’s cease-and-desist letter, the bottom of Respondent’s website has contained a notice which begins with the sentence “This web site is not endorsed by, directly affiliated with, maintained, authorized, or sponsored by the Fluke Corporation or any of its subsidiaries or companies.” Respondent further notes that the “About Us” portion of its website mentions that “Respondent is a Greensboro, NC, company founded in 2001 hoping to meet the demand for expeditious processes to restore damaged Fluke-branded products.” Complainant does not mention the Oki Data test in its pleadings but it does point out elements of and statements on Respondent’s website that it asserts are misleading and suggest Respondent’s status as an authorized FLUKE service provider. These include the use of grey and yellow colors on the site, which it claims are similar to those used by Complainant for its products and website, the statements “Professional Fluke Maintenance” and “We’re a USA based, Fluke Industrial Equipment Repair Company”, the display of photos of FLUKE products, and a claim of at least one instance of actual customer confusion regarding Respondent’s site. In sum, Complainant argues that Respondent’s statements in, and the notice on its website are inadequate to overcome these other elements which suggest sponsorship with or approval by Complainant. Respondent argues that its notice “dispels any such confusion should there be any”, that its use of the colors grey and yellow are “de minimis at best”, and it points out that the product photos are before-and-after images which only serve the purpose of demonstrating Respondent’s repair capabilities and support its contention of nominative fair use. Although not every notice of non-affiliation will satisfy the Oki Data test, the Majority notes that in past decisions the appearance of such a notice in a manner that does not immediately call attention to itself is not, alone, an indication that it is ineffective, especially after considering all of the circumstances of a given case. Instructive on this issue is Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, FA 1927129 (Forum Feb. 23, 2021). The disputed domain name was <centricsubzerorepair.com> and its resolving website contained a disclaimer towards the bottom of the home page and in the same font size as the surrounding text. The 3-member Panel stated that, “[i]n this case the Panel is unable to make a conclusive determination, simply on the face of the Domain Name, that it triggers an inference of possible affiliation, sponsorship or endorsement. * * * In view of the said uncertainty, one has to consider the broader facts and circumstances, including the associated website content. In this regard, section 2.5.2 of the WIPO Overview 3.0 provides that some of the factors to be considered in the assessment”. Here, the words which make up the <flukerepair.com> and <fixmyfluke.com> domain names do not definitively trigger an inference of affiliation though they also don’t overtly indicate the contrary. As such, reference is made to the elements of par. 2.5.2 of the Overview as follows:
(i) Whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit;
(ii) Whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded;
(iii) Whether it is clear to Internet users visiting the respondent’s website that it is not operated by the complainant;
(iv) Whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties;
(v) Whether there is an actual connection between the complainant’s trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual; and
(vi) Whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline).
On these points the Majority finds that:
(i) Respondent’s repair services appear to be legitimate and are not a pretext intended to justify its registration of the disputed domain names;
(ii) Respondent’s belief of truthfulness in reference to Complainant’s products does appear to be reasonable;
(iii) the notice on Respondent’s website, combined with other statements that appear there, do indicate that it is not operated by Complainant. The FLUKE logo is not used and the product photos appear to be expository of Respondent’s repair services;
(iv) this point is discussed further in the next section of this decision but the Respondent has provided a plausible explanation for the transition of its website from one of the disputed domain names to the other and this does not appear to be part of an effort to collect multiple infringing domain names for the purpose of cybersquatting;
(v) the connection between Complainant’s mark and Respondent’s repair services is quite apparent;
(vi) Respondent’s repair services appear to be legitimate and bona fide.
In sum, the notice on Respondent’s website is clear in conveying the message that no formal affiliation with Complainant exists and the overall content of the site does not give the impression that it originates from or is formally associated with Complainant. However, it is recognized that the points asserted by each party indicate that there may be room for disagreement and thus significant open issues of fact as to the impression made by the disputed domain names and Respondent’s website.
Finally, Complainant makes no assertion that Respondent has tried to corner the market by registering the two domain names here in dispute and the Majority does not view Respondent’s activities as running afoul of the fourth element of the Oki Data test.
As noted by the Panel in Oki Data, “[i]t is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names.” Oki Data Americas, Inc. v. ASD, Inc., supra. The Majority finds that Respondent has, if by a small margin, rebutted the prima facie case set out by Complainant.
Further, this case involves sufficient issues of both fact and law such that it seems ill-suited to a definitive resolution through the Policy and that it would benefit from the full range of evidentiary tools available in a courtroom such as discovery, witness testimony, cross-examination, etc. At a minimum, these issues include the date on which Respondent first began using its disclaimer, whether Respondent is commonly known by the disputed domain names, and what other evidence of actual confusion may exist.
Finally, Complainant, in its Additional Submission, takes issue with Respondent’s citation to United States Federal court decisions and makes the presumptive claim that “the Panel is unaccustomed to examine closely decisions rendered by national courts of law.” It goes on to state that “case law under the Policy is more germane to the Panel than determining whether it should or should not apply directly the reasoning of one or more federal rulings.” These assertions of Panelist inexperience and UDRP supremacy are unwarranted under the present circumstances where both parties operate in and are subject to the jurisdiction of the courts of the United States of America and it leaves the impression that Complainant would prefer that some of its more aggressive arguments not be brought before a US Federal court judge.
Complainant asserts that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the FLUKE mark. Respondent admits this but it denies that it registered the domain names in in bad faith under Policy ¶ 4(a)(iii).
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. WIPO Overview 3.0, at par. 3.1 (2017). Of the examples of bad faith set out in Policy ¶ 4(b) those asserted by Complainant are ¶ 4(b)(iii) (domain registered primarily for the purpose of disrupting the business of a competitor) and ¶ 4(b)(iv) (attraction of commercial gain based on a likelihood of confusion with a complainant’s trademark).
With respect to Policy ¶ 4(b)(iii), Complaint claims that Respondent has engaged in a pattern of bad faith registrations, based on its having registered multiple disputed domain names, and that it trades on the goodwill of the FLUKE mark for profit and diverts traffic away from Complainant by using the disputed domain names and its website to perpetuate misleading claims while offering services that are nearly identical and competitive to those offered by Complainant. While Complainant cites Section 3.1.2 of the WIPO Jurisprudential Overview 3.0, for the proposition that a pattern of abuse may be shown by “as few as two instances” of registration, under all of the circumstances of the present case the Majority is not prepared to find that Respondent has engaged in a pattern of conduct under ¶ 4(b)(iii). Further, while it may be that Respondent is a competitor of Complainant’s for the repair of FLUKE products, this is not itself a bad faith pursuit. The Majority does not find that Respondent is seeking to improperly divert customers or otherwise disrupt Complainant’s business. It is noted that Respondent obtains genuine parts from Complainant as mentioned on the home page of Respondent’s website: “All parts used in the repair process are either obtained directly from FLUKE or made to specification that meet or exceed their product specifications.”
Further, with respect to Policy ¶ 4(b)(iv), reference is made to the fact that Complainant provides its own repair services for its products, Respondent’s website uses a color scheme that is asserted to be similar to that used by Complainant, and that images of Complainant’s products appear on Respondent’s website. Respondent’s retort is that it is legitimately engaged in the repair of Complainant’s products and that it registered and uses the disputed domain names in a nominatively fair manner to identify the nature of its services. It asserts that it has “undertaken steps to eliminate confusion” and it specifically points to statements made on its “About Us” page as well as a “conspicuous disclaimer” on each page of its website which mentions the lack of any relationship with Complainant. It states that this disclaimer appeared on the site in early September of 2020 and prior to its receipt of a cease-and-desist letter from Complainant in November of that year. It further claims that its use of color is de minimis and that the photos are only “before” and “after” images meant to display its repair services. Complainant disputes the effectiveness of these measures and asserts that none of them dispel initial interest confusion that results from the disputed domain names.
While Respondent does seek to attract consumers to its website for commercial gain, for the reasons noted above and in the previous section, the Majority does not find that it is doing so by creating a likelihood of confusion with the FLUKE mark or that it’s intent is to divert customers who are seeking Complainant’s own repair services. Admittedly, there is an open question regarding the adequacy of the steps Respondent has taken to avoid confusion – and these may ultimately be decided in a courtroom setting – but, on the present record, the facts narrowly tip the preponderance of evidence standard in Respondent’s favor on the question of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Majority of the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <flukerepair.com> and <fixmyfluke.com> domain names REMAIN WITH Respondent.
Steven M. Levy, Esq. (chair), and Prof. David E. Sorkin, Panelists
Dated: July 6, 2022
Dissenting Opinion of Paul M. DeCicco:
While I concur with the Majority regarding the application of Policy 4(a)(i), I respectfully disagree with its conclusions regarding Policy ¶¶ 4 a(ii) and (iii).
Respondent lacks rights and legitimate interests in the at-issue domain names. Complainant’s makes out a prima face showing that it has rights or legitimate interest in the domain names by evidencing that Respondent is not authorized to use Complainant’s registered trademark in any capacity. However, Respondent fails to successfully rebut Complainant’s showing. Respondent discloses that it is not commonly known by the at-issue domain names and admits that it is doing business as Dental Support Services d/b/a DSS Technical Services (collectively “DSS”). Further and contrary to the finding of the majority, I submit that the record demonstrates that Respondent’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Respondent’s <flukerepair.com> domain name connotes “repairs by Fluke” rather than, or in addition to, “repairs to Fluke.” “Fluke Repair” is used throughout Respondent’s website in contrast to the disclaimer placed by Respondent somewhere on the <flukerepair.com> website. Moreover, upon initially encountering the domain name via a search result or otherwise, and before landing on Respondent’s repair website, it is likely that at least some internet users will be initially led to believe that Respondent’s operation is indeed affiliated with Complainant. Further, after arriving at Respondent’s website one is greeted by references to the likes of “Fluke Repair” (Repair by Fluke) and “YOUR FLUKE SERVICE PARTNER” which reasonably suggests that Respondent is in partnership with Complainant regarding services performed by Respondent. Respondent’s casual third party references to Complainant in the body of its website are not enough to disconnect the implication that Respondent is sponsored by or affiliated with Complainant left by the <flukerepair.com> domain name itself as well as by the look and feel of Respondent’s website. Notably, any ambiguity as to Respondent’s association with Complainant could have been mitigate by Respondent’s use of a less suggestive domain name and/or a website designed to allay the impression that Respondent is in anyway connected with Complainant. For instance, Respondent could have continued to use <fixmyfluke.com> to directly address Respondent’s website rather than redirect the domain name to <flukerepair.com>. Respondent also could have boldly bannered its website to announce that DSS and not FLUKE was the source of any services provided by Respondent. Respondent’s allowing the <flukerepair.com> domain name and website to capitalize on the trademark value of Complainant’s FLUKE trademark when Respondent could have conducted its business with minimal source ambiguity shows Respondent’s bad faith. Such bad faith discounts Respondent’s rights or legitimate interests being unveiled pursuant to Policy ¶ 4(c)(i) or under Policy ¶ 4(c)(iii).
Having found that Respondent lacks rights and legitimate interests regarding <flukerepair.com>, Respondent’s registration and use of the <flukerepair.com> domain name to capitalize on Complainant’s trademark when Respondent knew of Complainant’s rights in the FLUKE trademark and knew, or should have known, how it could sell its repair services without running afoul of the Policy is indicative of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). Respondent’s use of the <fixmyfluke.com> domain name to redirect internet users to its <flukerepair.com> domain name and website so that it might benefit from the confusion it created between the domain name and Complainant’s trademark, likewise shows a lack of rights or legitimate interests in <fixmyfluke.com> and further shows that <fixmyfluke.com> was registered and used in bad faith.
Given the foregoing, I would order the at-issue domain names be transferred to Complainant.
Paul M. DeCicco, Panelist
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