The Complainant is Fluor Corporation of Irving, Texas, United States of America, represented by Melbourne IT DBS Inc., United States of America.
The Respondent is Xin Meng, Mengxin of Shenyang, Liaoning, People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2010. On June 25, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On June 28, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 30, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On July 6, 2010, the Complainant requested to be given a five-day extension to file the reply to the language of proceedings and the Center granted such extension to the Complainant on the same day. On July 8, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date of July 10, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 11, 2010. 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
The Complainant, Fluor Corporation, is a United States based company, founded in 1912 as a construction company. The Complainant engages in the fields of engineering, procurement, construction, operation and maintenance services. The Complainant develops and implements innovative solutions for complex capital projects to diverse clients and industries.
The Complainant, along its subsidiary companies (Hereinafter the "Complainant"), has a global workforce of over 36,000 workers and has offices and projects in more than 66 countries around the world.
The Complainant is ranked first in "Fortune" magazine's "Engineering, Construction" list of America's largest corporations and received many awards and recognition for safety, environment, and governance.
The Complainant is the owner of multiple registered trademarks containing the mark FLUOR. For example, United States (Hereinafter "US") trademark registration No. 0591442 – FLUOR, with the registration date of 1954; Community trademark registration No. 001409093 – FLUOR, with the registration date of 2001; US trademark registration No. 2456881 – FLUOR DANIEL, with the registration date of 2001; and others.
The Complainant has also developed a presence on the Internet and is the owner of several domain names, which contain the word "fluor". For example: , , , and many more. The Complainant is using these domain names in connection with its activities.
The disputed domain names and were registered on March 20, 2009.
Both disputed domain names are inactive.
The Complainant sent several cease and desist letters to the Respondent on October 1, 2009, October 19, 2009 and November 24, 2009. In these letters the Complainant informed the Respondent of its intellectual property rights in the name "Fluor" and demanded that the Respondent cease from using the word "fluor". The Respondent did not respond to the Complainant's cease and desist letters. 5. Parties’ Contentions A. Complainant
The Complainant raises the following contentions:
1. The disputed domain names fully incorporate the Complainant's registered trademark FLUOR as a dominant element.
2. The additional word "way" in the disputed domain names is not sufficient in order to avoid the confusing similarity between the domain names and the Complainant's mark.
3. The addition of the gTLDs ".com" and ".net" to the disputed domain names does not result in avoiding confusing similarity between the domain names and the Complainant's mark.
4. The disputed domain names are confusingly similar to the Complainant's FLUOR mark, as evidence by the Google search for the words "fluor way", which yield results that, in majority, are connected to the Complainant's “www.” website.
5. The fame of the Complainant’s trademark have been confirmed by previous UDRP panels.
6. The Respondent has no rights or legitimate interest in the disputed domain names, since the Respondent did not prove that he owns relevant trademark registrations, and is not commonly known as "fluor" or "fluor way".
7. The Complainant had not licensed or authorized the Respondent to use the disputed domain names or the Complainant's trademarks.
8. The Respondent is infringing upon the Complainant's goodwill.
9. The Respondent did not respond to the Complainant's cease and desist letters and did not argue that he has rights in the name "fluor way". The Complainant argues that this, along with the fact that the disputed domain names resolve to inactive parking websites, proves that the Respondent has no legitimate interest in the disputed domain names and is not making any preparations in order to start any legitimate commercial or noncommercial use in the disputed domain names.
10. The Respondent knew or should have known of the Complainant, due to the fact that the Complainant registered its unique and internationally popular trademarks prior to the registration of the disputed domain names and due to the fact that the Complainant was involved in many projects at the location of the Respondent and was advertised in the local press.
11. The disputed domain names are being used in bad faith. The fact that they are inactive does not affect this conclusion.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain name is Chinese.
The Complainant requests that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceedings:
a) Both disputed domain names incorporate words in the English language;
b) The Respondent did not object to the Complainant’s request that English be the language of proceedings; and
c) The Respondent does not operate a website under the disputed domain names in the Chinese language. In effect, the Respondent does not operate any website under the disputed domain names and resolve to an error page.
Previous UDRP panels have ruled in similar cases that English be the language of the proceedings (see EMU (AUS) Pty Ltd and EMU Ridge Holdings Pty Ltd v. yanghong,WIPO Case No. D2010-0956).
The Panel also notes that all of the Center’s communications with the Parties have been transmitted in both Chinese and English.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the FLUOR mark. For example: US trademark registration No. 0591442 – FLUOR, with the registration date of 1954; Community trademark registration No. 001409093 – FLUOR, with the registration date of 2001; and others.
The disputed domain names and differ from the registered FLUOR trademark by the additional word “way" and the additional gTLDs ".com" and ".net".
The disputed domain names integrate the Complainant’s trademark in its entirety, as a dominant element.
The additional word "way" does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s FLUOR trademark. The word "way" is a generic word and therefore lacks distinctiveness and cannot be used to avoid the similarity between the disputed domain names and the Complainant's registered trademarks.
Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Furthermore, the addition of the gTLDs ".com" and ".net" to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” and ".net" are without legal significance since their use is technically required to operate the domain names.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once a complainant establishes a prima facie case that the respondent lack rights or legitimate interests in disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the FLUOR trademark, or a variation thereof. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owns registrations for the FLUOR trademark since the year 1954. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In addition, the Complainant has been involved in projects at the location of the Respondent and has been advertised in the local press. The Panel finds that under these circumstances, it is unlikely that the Respondent did not know of the Complainant upon registering the disputed domain names. The Panel cites the following with approval: “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith” (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765).
The disputed domain names are inactive. However, the fact that the Respondent does not use these domain names does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
The Panel sites the following with approval: "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In this case, the Panel notes that the disputed domain names are confusingly similar to the Complainant’s trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.
There is also considerable force in the submission raised by the Complainant that the fact that the Respondent failed to respond to the cease and desist letters is recognition of both a bad faith registration and use. There is significant authority from earlier UDRP decisions that a failure on the part of a respondent without good reason, to respond to a cease and desist letter maybe further evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In light of the Complainant's distinctive registered trademark, the Respondent's use of confusingly similar domain names and the Respondent's lack of response to the Complainant's cease and desist letters, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain names and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: August 24, 2010
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