WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fluor Corporation v. Mt. Baker Chalets and Cottages Case No. D2009-1274 1. The Parties
Complainant is Fluor Corporation of Irving, Texas, United States of America, represented by Melbourne IT DBS Inc., of Mountain View, California, United States of America.
Respondent is Mt. Baker Chalets and Cottages of Maple Falls, Washington, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2009. On September 25, 2009, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On September 25, 2009, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 29, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant states that it was founded as a construction company in 1912 and is “a global leader in engineering, procurement, construction, maintenance, and project management services and is recognized as one of the world's safest contractors.” Complainant states that it is “ranked No. 1 in FORTUNE magazine's ‘Engineering, Construction' category of America's largest publicly-traded corporations.” Complainant states that it has “more than 50 office locations on 6 continents and over 42,000 employees globally.”
With respect to its work in the state of Washington, Complainant states as follows: “Fluor Corporation has performed work at the U.S. Department of Energy's Hanford site from the mid-1940's to present. Also in Washington State, Fluor Corporation was chosen in 2002 by the Phillips Petroleum Company to perform engineering, procurement and construction services on a refinery upgrade. Most recently in 2007, Fluor Corporation was selected by the Washington State Department of Transportation, in Seattle, Washington, to improve the flow of traffic on Interstate 90 by planning and designing a surveillance, control, and driver information system.”
Complainant is the owner of trademark registrations in the United States and elsewhere, including United States Registration Number 0591,442 for the mark FLUOR for use in connection with “construction on a custom basis of plant equipment for the petroleum and natural gas refining and treating industries, also for the chemical and power plant industries” (first used in commerce in 1930; registered on June 15, 1954) and United States Registration Number 2,804,777 for the mark FLUOR for use in connection with “construction, maintenance and/or repair services on a custom basis for buildings, plants, structures, operating and processing facilities, wells, laboratories, pilot plants and equipment for the aerospace, automotive, biotechnology, chemical, electrical power generating, electronics, environmental, general commercial, manufacturing, material processing, metallurgical mining, natural gas, nuclear energy, offshore petroleum, petrochemical, petroleum, pharmaceutical, plastics, pulp/paper telecommunication, thermal energy and transportation industries” and “architectural and engineering services on a custom basis for the design of buildings, plants, structures, operating and processing facilities, wells, laboratories, pilot plants and equipment, and related structures for aerospace, automotive, biotechnology, chemical, electrical power generating, electronics, environmental, general commercial, manufacturing, material processing, metallurgical mining, natural gas, nuclear energy, offshore petroleum, petrochemical, petroleum, pharmaceutical, plastics, pulp/paper, telecommunication, thermal energy and transportation industries; consultation services on a custom basis relating to the abatement, control and disposal of hazardous wastes and environmental pollutants” (first used in commerce in 1971; registered on January 13, 2004). These registrations are hereafter referred to as the “FLUOR Trademark.”
The Disputed Domain Names were registered on October 16, 2007. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is confusingly similar to the FLUOR Trademark because “[t]he domains included in this Complaint contains the Complainant's registered trademark, FLUOR, in the dominant part of the domain name and the added generic term, ‘corporation' and the generic abbreviation for corporation, ‘corp', which also references the name of the registered company of the Complainant.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “[t]here is no evidence that Respondent owns registrations for any trademarks containing” the terms in the Disputed Domain Names; “Respondent is neither a licensee nor an authorized representative/ partner of Fluor Corporation to register or sell any domain names (or other goods/services of any kind) incorporating Complainant's marks”; and Respondent's websites associated with the Disputed Domain Names does not represent a bona fide offering of goods or services because the websites contain “references links to Fluor Corp, Fluor Employment, Fluor Daniel Jobs, including links to some of Fluor's competitors (UCIC) which could mislead Internet users to an association with another commercial web site (employment sites) and brand owners.”
- Respondent registered and is using the Disputed Domain Names in bad faith because Complainant “has been in the press and has conducted many large projects in the Washington State area,… the location of the Respondent,” and, therefore, “Respondent is unable to claim they were unaware of the existence of Complainant and its trademark”; Respondent's websites associated with the Disputed Domain Names “provid[e] links to other construction and job related websites to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain”; and “Respondent has registered more than 100 domains[, t]he majority of [which] are also well known trademarks in the U.S. and all over the world; VOLVOSTORES.COM, MERCEDESBENZSTORES.COM, MERCEDESBENZVAN.COM, LAMBORGHINISTORES.COM; to name a few, which are also being sold among other domain names, including Complainant's domains, on the GO Daddy Auctions site, ranging from $25,000- $50,000.” B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the FLUOR Trademark. Further, in a previous domain name dispute brought by Complainant, pursuant to the Start-up Trademark Opposition Policy (“STOP”), a panel found that “Complainant has established that it has rights in the FLUOR mark because it has used the mark continuously in commerce since 1912 and has registered the mark in both Korea and the United States.” Fluor Corporation v. Dongil Song, NAF Claim No. 0102757 (transfer of ).
As to whether the Disputed Domain Names are identical or confusingly similar to the FLUOR Trademark, the relevant comparison to be made is with the second-level portion of the Domain Names only (i.e., “fluor-corp” and “fluor-corporation”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains,WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only…, as it is well-established that the top-level domain names… should be disregarded for this purpose”).
Therefore, the only difference between the relevant portion of the Disputed Domain Name (“fluor-corp” and “fluor-corporation”) and the FLUOR Trademark is the addition of the words “corp” and “corporation” to the Disputed Domain Names. In this respect, the Panel agrees with the case cited by the Complainant, Terex Corporation v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0733, in which the panel said: “It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question.” (Transfer of .)
Accordingly, each of the Disputed Domain Names is confusingly similar to the Complainant's FLUOR Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges that, Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “[t]here is no evidence that Respondent owns registrations for any trademarks containing” the terms in the Disputed Domain Names; “Respondent is neither a licensee nor an authorized representative/ partner of Fluor Corporation to register or sell any domain names (or other goods/services of any kind) incorporating Complainant's marks”; and Respondent's websites associated with the Disputed Domain Names does not represent a bona fide offering of goods or services because the websites contain “references links to Fluor Corp, Fluor Employment, Fluor Daniel Jobs, including links to some of Fluor's competitors (UCIC) which could mislead Internet users to an association with another commercial web site (employment sites) and brand owners.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, .
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant does not specifically allege which, if any, of the four circumstances listed above exists to create bad faith. However, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant states that Respondent is using the Disputed Domain Names in connection with websites that “provid[e] links to other construction and job related websites to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain”. Annexes provided by Complainant of these websites show images of men wearing hard hats, holding what appear to be construction documents, along with the exteriors of what appear to be office and/or retail buildings, as well as links, including links labeled “Engineering & Procurement” (“Download Engineering, Procurement & Construction Agreements”) and “Landfill Construction”.
Accordingly, Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: November 16, 2009
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