The Complainant is Fluor Corporation of Texas, United States of America, represented by Melbourne IT DBS, Inc., United States of America.
The Respondent is Above.com Domain Privacy of Australia / Huanglitech, Domain Admin of the People's Republic of China.
The disputed domain name <fluorbenefitcenter.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 16, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 19, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed Amended Complaints on May 11 and 12, 2010. The Center verified that the Complaint together with the Amended Complaints 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 May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 10, 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.
The Complainant is the largest publicly traded engineering, construction and project management company based in the United States of America. The Complainant was founded in 1912 and now has a global workforce of over 36,000 with offices or projects in more than 66 countries, including the People's Republic of China where it has maintained a continuous presence since 1978. The Complainant is the owner of United States (“US”) Trademark No. 0591442, registered on June 15, 1954 for the word mark FLUOR. The Complainant is also the owner of European Community Trademark No. 001409093, registered on January 15, 2001 for the word mark FLUOR. The Complainant manages a website at <fluor.benefitcenter.com> whereby its employees may view and manage their benefits. The Respondent registered the disputed domain name on October 31, 2009. The disputed domain name currently points to a web portal providing sponsored hyperlinks including “employee benefit” and “health insurance coverage”.
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that it has found no evidence that the Respondent uses the disputed domain name as a company name or has any other legal right to it. The Complainant believes that the Respondent registered the disputed domain name to create the impression of association with the Complainant, its agents, products and services; to trade off the goodwill associated with the Complainant's FLUOR trademark; and/or to create initial interest confusion for individuals or in this case, employees looking for information about the Complainant and its benefits. The Respondent is not using the website associated with the disputed domain name in connection with any bona fide offering of goods or services, instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to the associated web site and through this procedure generate income.
The Respondent is neither a licensee nor is authorized by the Complainant to register or sell any domain names (or other goods/services of any kind) incorporating the Complainant's trademarks. The Complainant sent two cease and desist letters to the Respondent in November and December 2009 and two further letters in March 2010. The Respondent did not reply to any of this correspondence.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has demonstrated to the satisfaction of the Panel that it has rights in the registered trademark FLUOR. The disputed domain name incorporates this term in its entirety, adding the additional words “benefit” and “center”. As is customary in cases under the Policy the top level domain “.com” should be disregarded for the purposes of comparison. The Complainant's mark is distinctive and widely known. It is well recognized in previous cases under the Policy that where such a mark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the mark (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). The dominant part of the disputed domain name is the Complainant's trademark and not the words “benefit” and “center”. Furthermore, the Complainant also operates an online employee benefit portal at <fluor.benefitcenter.com> such that the generic phrase “benefit center” is itself associated with the Complainant's FLUOR trademark, at least in the minds of the Complainant's 36,000 employees. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests. The Complainant has asserted that it has found no evidence that the Respondent uses the disputed domain name as a company name or has any other legal right to it. The Complainant has also stated that the Respondent is neither a licensee nor is authorized by the Complainant to register or sell any domain names incorporating the Complainant's trademarks and is not using the website associated with the disputed domain name in connection with any bona fide offering of goods or services. The Complainant has provided evidence that the website associated with the disputed domain name has been used to publish sponsored links for third party websites, where the links promote various goods or services connected with employee benefits.
It is immediately apparent to the Panel that the Respondent has registered the disputed domain name to cause confusion with the website operated on the Complainant's behalf at <fluor.benefitcenter.com>. The Respondent seeks to encourage visitors to the website associated with the disputed domain name (most likely the Complainant's employees who have been confused by the similarity of the uniform resource locator) to click on the hyperlinks therein provided in order to generate revenue for the Respondent. It is well established that this type of use of a domain name, which in effect trades off the Complainant's trademark, is not bona fide and it is clear that the Respondent's use of the disputed domain name in this manner cannot confer any rights or legitimate interests upon it.
The Panel cannot conceive of any possible legitimate interest or right that the Respondent might have in the disputed domain name. The Respondent has not filed a response in this administrative proceeding and thus has failed to provide evidence of any circumstance which might convince the Panel to the contrary.
Accordingly the second element under the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present case the Complainant believes that the Respondent registered the disputed domain name to create the impression of association with the Complainant, its agents, products and services; to trade off the goodwill associated with the Complainant's FLUOR trademark; and/or to create initial interest confusion for individuals or in this case, employees looking for information about the Complainant and its benefits. The Panel considers that the Complainant's belief is well-founded. There is little doubt in the Panel's mind that the disputed domain name was selected by the Respondent entirely as a result of its close similarity to the uniform resource locator for the Complainant's official employee benefits website, namely fluor.benefitcenter.com. As such, it is reasonable for the Panel to infer that the Respondent was fully aware of the Complainant's trademark at the point of registration of the disputed domain name and was deliberately intending to target that trademark by virtue of a website containing hyperlinked commercial advertising.
The Respondent has had several opportunities to explain its registration and use of the disputed domain name and in particular to set out any alleged good faith motivation either by replying to the Complainant's correspondence or by filing a Response in the present administrative proceeding but it has failed to do so. In the absence of any such explanation, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and therefore that the disputed domain name has been registered and used in bad faith.
Accordingly the third element under the Policy has been established.
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 name <fluorbenefitcenter.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: June 24, 2010