1.1 The Complainant is Fluor Corporation of Irving, Texas, United States of America, represented by CSC Digital Brand Services (“CSC DBS”), United States of America.
1.2 The Respondent is “acom” of Tel Aviv, Israel, represented by “Ye tianquan”, China. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 14, 2013.
3.2 The Center verified that the amended 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”).
3.3 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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. A Response was filed with the Center on July 8, 2013. Paragraph 6 of that response contained the following statement:
“The Respondent consents to the remedy requested by the Complainant and agrees to [transfer/cancel] the disputed domain name(s) on the basis of Party agreement, without the need for a decision being rendered by the Administrative Panel.”
3.4 On July 9, 2013 the Center sent an email to the Complainant, copied to the Respondent’s representative, pointing out paragraph 6 of the Response and enquiring whether the Complainant wanted to request a suspension of proceedings to allow settlement of the matter and transfer of the Domain Name. Later that same day the Respondent’s representative sent an email clarifying that this text had been taken in error from the Center’s model response and that the Respondent did consent to transfer. An Amended Response was filed with the Center on July 10, 2013 with the relevant text removed.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 17, 2013. 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
4.1 The Complainant is a construction company based in Irving Texas that can trace its origins back to 1912. It is a Fortune 150 corporation and is ranked No. 1 in Fortune magazine’s “Engineering, Construction” category of the United States’ largest corporations. It has a global workforce of over 40,000 people with offices or projects in more than 66 countries on 6 continents. Projects in which it has been involved include the Greater Gabbard Project, which is the world’s largest offshore windfarm, located off the Suffolk cost of England.
4.2 The Complainant is the owner of a number of United States registered trade marks that incorporate or comprise the word FLUOR1. They include:
(i) United States registered trade mark No. 0591442 filed on March 30, 1953 and with a registration date of June 15, 1954 for the word mark FLUOR in class 40; and
(ii) United States registered trade mark No. 2804777 filed on August 21, 2002 and with a registration date of January 13, 2004 for the word mark FLUOR in classes 37 and 42.
4.3 At all material times the Complainant has operated a website in respect of its activities from the domain name , which was first registered in 1995.
4.4 The Domain Name was first registered in 2006 although the Domain Name appears to have been re-registered in late 2011. That registration appears to have lapsed in or about January 2013 and it was then re-registered in the name of “Ye tianquan”, who gave an address in Canton China, on February 18, 2013.
4.5 Prior to June 2013 there was a web page operating from the Domain Name that bore all the hallmarks of being generated by a pay per click parking page. The page displayed “sponsored listings” with links to various companies including construction companies and electricians. The meta data for the page produced a Google search entry which read as follows:
– engineering,procurement,construction,pm Resources …
/
F is your first and best source for information about engineering,
procurement,construction,pm . Here you will also find topics relating to issue of general
4.6 On June 3, 2013, the Complainant sent a “cease and desist letter” to the then registrant. On June 4, 2013, the registrant responded in an unsigned email claiming that:
“We have built a mobile site for fluor artistic appreciation forum using . Fluor is a common French words in multi-language dictionary, for most people, (which as an ordinary word meaning far more. a common or descriptive name) see the attachment for detail
So we can’t transfer the domain to you.”
4.7 However, in an email from the same email address dated June 6, 2013 and signed “Jason” the registrant stated:
“If you want to know more about how to transfer domain, you can visit auctions.god for more detail.”
The Domain Name was initially offered for sale on that page at a price of in excess of USD 7,000. However, on June 10, 2013 “Jason” sent a further email to the Complainant offering to sell the Domain Name in return for “out of pocket expenses”.
4.8 On or about June 10 or 11, 2013, the registrations details for the Domain Name changed, identifying the “registrant organisation” as “acom” and identifying the “registrant name” as “Dan Naptali”. However, on June 12, 2013, the Complainant received a further email from “Jason” confirming that the out of pocked expenses were USD 350.
4.9 At some point in early June after the Complainant’s cease and desist letter, the web page displayed if the Domain Name was entered into an Internet browser changed to one that purported to provide a “fluor artistic mobile forum”. This web page displayed some content that included a picture of the mineral “Fluorite”.
4.10 When the Complainant complained about the change in registration details and the change in web content, “Jason” responded:
“It's just a misunderstanding. The Registrant information changed we made just to get ready for the owner transaction.”
and
“Fluor is a common French words in multi-language dictionary, for most people, (which as an ordinary word meaning far more. a common or descriptive name) see the attachment for detail. We bought the domain from other person and have built a mobile site for fluor artistic appreciation forum using now. So the screen shot attachment is not made by us.”
4.11 Other domain names that have been registered in the name “Ye tianquan” include, , (with the contact email address “domain-sale@[...].com”), and .
4.12 “Dan Naptali” was also a respondent in Osram GmbH v. Dan Naptali, acom,WIPO Case No. D2011-0319. That case related to the domain name and the domain name was ordered to be transferred to the complainant.
4.13 As at the date of this decision, the web page displayed from the Domain Name still contains the text “fluor artistic mobile forum” but all other content on that page appears to have disappeared. 5. Parties’ Contentions A. Complainant
5.1 The Complainant recites the history of its dealings with the registrant. It claims that the recent change in registrant was a “bogus” one intended to conceal the identity of the owner of the Domain Name and that “Ye tianquan” and “Dan Naptali” are one and the same person.
5.2 The Complainant describes its business and refers to its United States registered trade marks. It claims that the Domain Name is identical to those marks.
5.3 So far as rights or legitimate interests are concerned, the Complainant states that there is no evidence that the Respondent owns any trade mark containing the term “fluor” and claims that the Respondent is neither known by the name nor provides goods and services under that name. It further confirms that the Respondent is not an authorised representative of the Complainant and has not been authorised to register the Domain Name. It claims that as a consequence the evidential burden that the Respondent has rights or legitimate interests passes to the Respondent.
5.4 It further claims that the Respondent is “not using the website” in connection with any bona fide offering of goods or services but has instead intentionally chosen a domain name based on a registered trade mark in order to generate traffic to its website and thereby generate income through “pay-per-click” links.
5.5 So far as bad faith registration and use is concerned, the Complainant contends that given that the Domain Name was registered after the Complainant first used the “Fluor” name and after it had established its own website and in light of the fact that the Complainant’s activities had gained worldwide publicity, the Respondent “is unable to claim they were unaware of the existence of the Complainant and its trademarks”. It also contends that the changes to registration details, the changes to the website operating from the Domain Name and the offers for sale which all took place after the Complainant contacted the registrant, all show that the Domain Name has been held and used in bad faith.
5.6 The Complainant also refers to the other domain names held by “Ye tianquan” and to the fact that “Dan Naptali” was an unsuccessful respondent in Osram GmbH v. Dan Naptali, acom, supra. B. Respondent
5.7 The Response has been filed on behalf of the current registrant but by “Ye tianquan”. He claims that “Fluor” is a common word that is a synonym of “Fluorite”. He annexes a web page from the Collins online dictionary in this respect. He also annexes a page from an online French-English dictionary which is said to support this contention, but this actually appears to show that this is the French word for “fluorine”.
5.8 In the Response it is claimed that the Respondent has “interests in the fluorite mineral business and [has] been planning an Internet mobile site”. He goes on to state that “we” (whoever that may be) found the Domain Name “quite suitable for the mineral mobile site planning, so first bought it in the end of the year 2011, and then godaddy Registrar provide website and host plan” regarding the Domain Name. Appended to the Response is a historic WhoIs database printout which suggests that the Domain Name was registered in the Respondent’s name in or around December 2, 2011.
5.9 The description given of the Respondent’s intentions in relation to this website are as follows:
“The Respondent has in mind, among other things, to enable people to access the services at times and in locations to suit themselves, to assist people wanting to sit examinations and those who wish to make online exhibition to share or exchange their fluor info. It’s called “fluor artistic appreciation mobile forum” (fluordotmobi) “fluor artistique forum mobile d'appréciation” in French.”
5.10 Ye tianquan then claims that he forgot to renew the Domain Name in early 2013 and that as a result the Domain Name dropped and had to be re-purchased by him. He claims that he then decided to use Sedo’s services for an “advertisement trial” during the period in which the intended mobile website was being built, but that this project was “suspended because of [his] health and the current proceedings”. Various documents appended to the Response are said to support these contentions.
5.11 Ye tianquan further claims in the Response that before he was contacted by the Complainant he did not know that FLUOR was a trade mark and that he had not had any previous communication or connection with the Complainant. He further claims that the Complainant’s trade mark is not well-known in China. He claims that in the absence of a demonstrated risk of confusion, the Complainant cannot prevent any person “with a justifiable interest” from registering a domain name made up of this generic word.
5.12 The Response then goes on to address each of the requirements of the Policy. So far as trade mark rights are concerned, the Response asserts that the trade mark is a generic term and in many legal systems a generic term forms part of the public domain. The Response then claims that as “Fluor” is a generic word for mineral resources, “in this case” the term is not protected by trade mark law.
5.13 So far as rights or legitimate interests are concerned, the Response again repeats the claim that the Domain Name was registered for a purpose related to the mineral fluorite and that the evidence that is supplied with the Response supports a finding that the Respondent has “commenced demonstrable preparations” to use the Domain Name. The Response then goes on to state:
“As explained by Respondent, “we have selected the name ‘fluor’ for our project based on the french meaning of the word (brutal, sassy) referring to the impertinent injury, and the from Latin fluere (“to flow”) referring to the mineral art show. purpose of the website.”
However this quote is not to be found in any of the material annexed to the Response and where it is taken from is not explained.
5.14 So far as bad faith is concerned, the Response repeats a number of the assertions made in relation to rights or legitimate interests. It also claims that the term “Fluor” is used by other businesses, attaching an extract of a printout from the OHIM’s website which shows that the term forms part of a three other community trade marks belonging to third parties. The Response further claims that the Complainant specialises in building projects and is not know to most people not engaged in this field of business.
5.15 The Response also cites a number of previous UDRP decisions which are said to be authority for the proposition that the fact that a domain name has generic or descriptive connotations supports a determination that the domain name was not registered in bad faith.
5.16 The Respondent further claims that the fact that it has registered several other domain names is not evidence of bad faith. It is said that those domain names are unconnected with the Domain Name, and were selected “because of interest and not because they correspond to third parties’ trademarks” (citing Kis v. A Ltd.,WIPO Case No. D2000-0770).
5.17 The Respondent also repeats its claims as to why Sedo was chosen adding that “advertisement mode is set by sedo automatic default not by manul [sic]”. The Respondent then repeats and expands at some length upon its contentions that the generic use of a word in a domain name does not offend against the Policy. It also asserts that in such circumstances, the principle of “first come first served” applies. 6. Discussion and Findings
6.1 The Complainant must make out its case in all respects as set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements of the Policy in turn, but before it does so it is necessary briefly to deal with the fact that the Complaint is primarily directed to the activities of “Ye tianquan” and shortly prior to the submission of the Complaint the Domain Name was transferred to “acom” / “Dan Naptali”.
6.3 The Complainant contends that this does not matter because in fact “Ye tianquan”, “acom” and “Dan Naptali” are all one person. This is not expressly admitted in the Response, but the Response proceeds on the assumption that the transfer into the name of “acom” is not significant and it is “Ye tianquan” who appears to have prepared and filed the Response in any event. In the circumstances, this decision proceeds on the basis that “Ye tianquan”, “acom” and “Dan Naptali” are all one person or are so connected with one another that they can be treated as if they were one person for the purposes of these proceedings. Save insofar as the context suggests otherwise, the term “Respondent” used in the rest of this decision should be understood accordingly. A. Identical or Confusingly Similar
6.4 The Complainant is clearly the owner of a number of trade marks that comprise the word mark FLUOR. The Domain Name comprises the term “fluor” in combination with the “.mobi” generic Top Level Domain (gTLD). Accordingly, the marks and Domain Name are identical save for the “.mobi” gTLD. In the circumstances, the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.5 The Respondent claims that the term “Fluor” is generic or descriptive are not of relevance so far as this aspect of the Policy is concerned. This is not a case where there is any suggestion that the term “Fluor” is generic or descriptive in respect of the goods or services in respect of which the Complainant’s trade marks have been registered (c.f. Jobs on the Net Limited, Andrew Middleton v. International New Media Limited,WIPO Case No. D2011-1531). Further, the Respondent’s suggestion (if such a suggestion is being made) that there can be no trade mark rights in a term that can be used generically or descriptively if that term is registered in respect of goods or services for which it is not generic or descriptive, simply misunderstands how trade mark law operates.
6.6 That does not mean that the potential generic or descriptive use of the term in which trade mark rights are claimed is not relevant to these proceedings. It may well be highly likely to an assessment of whether there are rights or legitimate interests and whether there has been registration or use of the Domain Name in bad faith. However, it is not in this case relevant to the assessment under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 At one point in its Complaint, the Complainant effectively contends that as it has asserted that the Respondent cannot satisfy any of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy, the burden of production on this issue passes to the Respondent. Although this is an approach that is supported by previous UDRP decisions under the Policy, it is a somewhat an artificial and unnecessary one in this case.
6.8 In essence, there is a fundamental dispute of fact between the parties. The Complainant contends that the Domain Name has been registered to take unfair advantage of the Complainant’s marks. The Respondent contends that it has been registered without knowledge of the Complainant, because of an alleged “descriptive” and “generic” meaning of the term “Fluor” and with the intention of using the Domain Name is respect of an activity that is related to that descriptive or generic use.
6.9 If the Complainant is correct, the Respondent will have no rights or legitimate interests in the Domain Name. If the Respondent is right, there may well exist a right or a legitimate interest in the Domain Name (see for example the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.10 The Respondent’s arguments at times appear to amount to a contention that if it can be shown that the Domain Name has a descriptive or generic use, then that is the end of the matter and a right or legitimate interest exists. But if that is what is contended, this is simply wrong. A domain name owner may have a legitimate interest in a domain name which contains the term “Apple” if it is held for the purpose of use in a website that sells or deals in that fruit. He will not have a legitimate interest if it is held or being used for the purposes of taking advantage of the rights in that term held by the computer company Apple Inc, or the rights in that term held by The Beatles’ record label, Apple Records. See the discussion of this issue at paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
6.11 For reasons that are explained in detail under the heading “Registered and Used in Bad Faith” below, the Panel has had little difficulty in reaching the conclusion that the Complainant’s contentions are to be preferred and that is was with the Complainant’s marks in mind that the Domain Name was both registered and is being held. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.12 It is necessary for the Complainant to show that the Domain Name has been both registered and is being used in bad faith. There is a question in this case as to what is the date of registration for these purposes and therefore at what time the issue of bad faith registration is to be judged. The Respondent contends that it initially acquired the Domain Name in 2011 and then re-registered it in early 2013. There is also the transfer of the Domain Name into the name of “acom” on or about July 10, 2013. It is highly likely that the re-registration of the Domain Name in early 2013 was a fresh registration for the purposes of the Policy and even though this decision proceeds on the assumption that “acom” can be treated as if it the same person as “Ye tianquan”, there is at least an argument (although one that would not be accepted by all panelists) that this change in name was also a fresh registration for the purposes of the Policy (as to which see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.,WIPO Case No. D2009-0785).
6.13 The reason why the possibility that the transfer to “acom” was a fresh registration might be significant is that there can be no argument that at this time the Respondent was not aware of the Complainant’s rights.
6.14 However, ultimately this does not matter as the Panel has reached the conclusion that by far and away the most likely explanation of the Respondent’s acquisition of the Domain Name in 2011 and its continued holding thereafter was in order in some way to take unfair advantage of the Complainant’s rights in the FLUOR mark.
6.15 First, there is the Domain Name itself. The Respondent appears to claim that it is a common English word and a synonym for Fluorite, which is described by the Respondent as “a halide mineral composed of calcium fluoride CaF2”. Although it may well be a synonym for the mineral Fluorite (and the materials supplied by the Respondent suggest this to be so), it is certainly not a common English word. Any claim that such a word was registered because of its generic or descriptive qualities so far as its associations with Fluorite are concerned, is one that is likely to be treated with scepticism and calls for some degree of supporting evidence.
6.16 The Respondent also seems to contend that “Fluor” is also a common or ordinary word in French. However, the evidence suggests that the word instead means the chemical “fluorine” or “fluoride”. Although, the Panel is prepared to accept that these are more common words (not least because of their use in the context of the fluoridation of water and the use of fluorine compounds in toothpaste), it is not with this meaning in mind that the Respondent claims the Domain Name was registered.
6.17 Second, the description of the intended content of the “fluor” website is not particularly coherent or inherently plausible. We are told that it has been acquired either by or on behalf of someone who has interests in the fluorite mineral business (although who that person and what those “interests” may be is not explained) so that it could be uses as a “fluor artistic appreciation mobile forum”. There is also reference elsewhere in the Response to the “mineral art show purpose of the website”. The suggestion here appears to be (particularly when one looks at the webpage that briefly appeared from the Domain Name) that this is a website devoted to an appreciation of the beauty of Fluorite crystals. However, the Response also claims that the Respondent has in mind enabling “people to access the services at time and in locations to suit themselves, to assist people wanting to sit examinations and those who wish to make online exhibition to share or exchange their fluor info”. What these “examinations” might be when it comes to appreciating the beauty of Fluorite crystals is not explained. Further, it is difficult to reconcile these claims with another statement in the Response that the term “Fluor” was chosen:
“based on the French meaning of the word (brutal, sassy) referring to the impertinent injury, and the from Latin fluere (‘to flow’)”.
6.18 Third, there is simply no credible evidence brought before the Panel that the Domain Name was acquired (according to the Respondent in 2011) with this website or project in mind. The Respondent refers to a large number of Annexes to the Response that are said to support these claims, but when these documents are examined none of them say anything about why the Domain Name was registered. As has already been observed, the person who had the fluorite mineral interests on whose behalf the Domain Name was supposedly registered is not identified and his interests are not explained, let alone evidenced. The exhibited material does not include any correspondence with that person or any other correspondence or materials showing any preparatory work on that site for the claimed purpose. At one point the Response appears to quote the person on whose behalf the Domain Name was acquired, but this quote does not appear in any of the documents provided. Further, although the Respondent provides a print out of the intended website is provided, it is simply a printout of the page that appeared on the website after the Respondent was contacted by the Complainant. There is nothing to show that this page existed in any form or work was undertaken to create that page prior to that contact.
6.19 In short, the Response simply gets no where near the showing of “demonstrable preparations to use the website” (as might show rights or legitimate interests). So far as bad faith is concerned, if the website was truly intended to be use in the manner the Respondent claims, one would have expected material of this sort to exist. Given the effort that has been devoted by the Respondent in evidencing other aspects of its case, the failure to provide evidence of this sort in relation to this far more important issue, speaks volumes.
6.20 Fourth, the Complainant has brought forward credible evidence as to the size and the extent of its business. The Respondent contends that the Complainant is not very well-known in China. To what extent this is correct, the Panel does not know. Nevertheless, it seems to be not disputed that the Complainant has operated a website using the domain name in respect of its activities since 1995. In light of this, the Respondent’s claim not to have been at least aware of the entity that had operating from the “.com” equivalent of the “.mobi” domain name registered by the Respondent, strikes the Panel as improbable.
6.21 Fifth, there is the pay-per-click page that appeared on the website operating from the Domain Name prior to the cease and desist letter. The links on that page clearly sought to take advantage of the engineering associations of the term “Fluor”, and as far as the Panel is aware those associations can only have arisen as a result of the use of FLUOR mark by the Complainant. The Response claims that these links were automatically generated, and given the way that pay-per-click algorithms operate, the Panel is prepared to accept this is correct. However, there is no evidence before the Panel which suggest that this “pay-per-click” use was atypical of the way in which the Domain Name has been used since its acquisition by the Respondent. In the circumstances, it is to be reasonably inferred that it is with this sort of use in mind that the Domain Name was registered.
6.22 Sixth, there is the offer for sale of the domain name for USD 7,000 on Sedo. Although the Respondent refers to “advertising” trials, there really is no coherent explanation as to why the Respondent allowed this offer to be made if the Domain Name was really acquired for the purpose claimed. Even if this could be explained away, there is the fact that at one point in correspondence the Complainant was expressly directed to that page by the Respondent as a way in which the Domain Name could be acquired. The obvious inference is that it is with such a possible sale that the Domain Name was initially acquired.
6.23 Seventh, there is the transfer of the Domain Name into the name of “acom” after the Complainant had sent its cease and desist letter. This is never properly explained by the Respondent and it looks as if this is an example of attempted cyberflight of which the Respondent subsequently thought better and sought to downplay. These are not the actions one would expect of an entity that believed it had registered the Domain Name for a legitimate purpose.
6.24 Eighth, there is the holding of other domain names by “Ye tianquan” that appear to incorporate the marks of others and the fact that “acom” has previously held to have been engaged in cybersquatting in the case of the domain name (see Osram GmbH v. Dan Naptali, acom,WIPO Case No. D2011-0319). The Respondent claims that these domain names have nothing to do with the Domain Name. However, what they prima facie show is that the Respondent would appear to have a history of trying to gain some sort of advantage by registering domain names that correspond to the marks of third parties. That is relevant to the Panel’s assessment of why the Domain Name was registered in this particular case.
6.25 When all these factors are considered together, the only sensible conclusion is that the Domain Name was registered and held not for any generic or descriptive purpose but instead to take some advantage of the reputation of the Complainant’s marks, whether that be by the generation of revenue from pay-per-click advertising or by sale to the Complainant or otherwise. In the circumstances, the Domain Name was registered and is being used in bad faith and the Complainant has made out its case under paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: July 18, 2013
1 The Complainant also appears to be the owner of similar Community Trade Marks, but these are not relied upon by the Complainant in these proceedings.
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