DECISION

Fluke Corporation v. Jon Cullum d/b/a TFunk

Claim Number:  FA0405000267476

PARTIES

Complainant is Fluke Corporation (“Complainant”), represented by Timothy S. Cole, of Ladas & Parry, 5670 Wilshire Blvd., Los Angeles, CA 90036.  Respondent is Jon Cullum d/b/a TFunk (“Respondent”), Brunswick 152, GL50 4HB Cheltenham GB.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <fluke-uk.com> and <fluke-uk.net>, registered with Schlund + Partner AG.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 3, 2004; the Forum received a hard copy of the Complaint on May 5, 2004.

On May 4, 2004, Schlund + Partner AG confirmed by e-mail to the Forum that the domain names <fluke-uk.com> and <fluke-uk.net> are registered with Schlund + Partner AG and that Respondent is the current registrant of the names. Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@fluke-uk.com and postmaster@fluke-uk.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <fluke-uk.com> and <fluke-uk.net> domain names are confusingly similar to Complainant’s FLUKE mark.

2. Respondent does not have any rights or legitimate interests in the <fluke-uk.com> and <fluke-uk.net> domain names.

3. Respondent registered and used the <fluke-uk.com> and <fluke-uk.net> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a world leader in the manufacture, distribution and service of electronic test tools and software.  Complainant has manufacturing centers in the United States, the United Kingdom and the Netherlands. Complainant has sales and service subsidiaries located in Europe, North America, South America, Asia and Australia.

Complainant operates websites at the <fluke.com> and <fluke.co.uk> domain names.

Complainant, along with its subsidiaries around the world, owns numerous registrations for the FLUKE trademark, including U.S. registration number 861,610 (issued Dec. 10, 1968 in connection with “electrical power supplies, precision resistors, frequency synthesizers, frequency comparators, VLF receiver-comparators, distribution amplifiers, and precision voltage dividers”).

Respondent registered the disputed domain names <fluke-uk.com> and <fluke-uk.net> on February 27, 2003.  The registrations for the disputed domain names were set to expire on February 27, 2004 but Respondent renewed the names prior to expiration.  The domain names have not been used by Respondent and merely resolve to a website, presumably hosted by the registrar, that contains the message, “This domain has just been registered for one of our customers!  Domain registration and webhosting at best prices.  1&1 Webhosting.”

DISCUSSION

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

As a result of Complainant’s numerous registrations of its trademark FLUKE with governmental agencies, including its long-standing U.S. registration number 861,610, Complainant has established rights in the FLUKE mark under the Policy.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

The disputed domain names <fluke-uk.com> and <fluke-uk.net> contain Complainant’s FLUKE mark in its entirety.  The domain names are confusingly similar to Complainant’s mark because the domain names merely add the common abbreviation for the United Kingdom, namely “UK,” which signifies the geographic location where Complainant engages in commercial activity under its FLUKE mark.  See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent's addition of the letters ‘uk’ to Complainant's mark does not materially change the impression of the domain name.”); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (“[T]he Panel concludes that the domain name (which involves only the addition of the common designation UK identifying the United Kingdom) is confusingly similar to a trademark in which the Complainants have rights.”).

Moreover, the disputed domain names have each added a hyphen to separate Complainant’s mark from the “UK” abbreviation.  Hyphens are generally irrelevant for the determination of whether a domain name is confusingly similar to a complainant’s mark under the Policy.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sports Authority Michigan Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).

Likewise, the addition of a top-level domain is also irrelevant in determining whether a domain name is confusingly similar to a complainant’s mark under the Policy.  See Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that top-level domains and hyphens are irrelevant for purposes of the Policy); see also Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent failed to respond to the Complaint.  The respondent’s failure to respond has frequently been construed as an implicit admission that the respondent lacks rights and legitimate interests in the domain name.  The Panel follows this line of reasoning.  See Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that, since Respondent did not come forward to explain what legitimate use it may have had in the domain names, “the Panel may presume that Respondent lacks rights and legitimate interests in the domain names at issue”); see also Allergan Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.”); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that Respondent’s failure to respond to the Complaint allows the Panel to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge Complainant’s allegations allows the Panel to accept all of Complainant’s reasonable allegations and inferences as true).

Respondent has not used the domain names in any fashion since the original registration on February 27, 2003.  The domain names merely resolve to a website that is presumably sponsored by the registrar Schlund + Partner AG.  Therefore, given the length of time since the original registration, the Panel concludes Respondent is passively holding the disputed domain names, which does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Not My Kid, Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003) (“[The] Panel finds that the passive holding of the domain name is an indication that Respondent does not have rights or legitimate interests in the domain name.”) see also Ritz-Carlton Hotel Co. LLC v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).

Additionally, there is no evidence in the record that indicates Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii), especially in light of Respondent’s non-use of the domain names.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). 

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Passively holding a domain name has been frequently found to evidence bad faith registration and use under Policy ¶ 4(a)(iii).  The Panel follows this line of reasoning in the instant case.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

Late Response

A purported response was sent to the National Arbitration Forum on June 4, 2004 and promptly forwarded to the undersigned.

The purported Response lacked any proof of service indicating that the purported Response was served upon the other party, and the time for the receipt of the Response was well past due.  Consequently the purported Response is fatally deficient and cannot be considered.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also UFCW Int’l Union v. Union Automation, FA 94665 (Nat. Arb. Forum June 8, 2000) (holding that untimely Response without Motion or Affidavit does not controvert Complainant’s allegations and proof and all reasonable inferences of fact in the allegations of the Complaint will be taken as true).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fluke-uk.com> and <fluke-uk.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: June 4, 2004

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