{ "case_number": "CAC-UDRP-103935", "time_of_filling": "2021-07-19 09:37:18", "domain_names": [ "swinertonus.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Swinerton Incorporated " ], "complainant_representative": "RiskIQ, Inc. - Incident Investigation and Intelligence (i3), Jonathan Matkowsky", "respondent": [ "Fargo Electrical" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nSwinerton Incorporated traces its roots back to 1888, when a young Swedish immigrant formed a brick masonry and contracting business in Los Angeles to serve the growing city in its post–Gold Rush building boom. Since its earliest days the company has been building along the Western frontier . It is celebrated for exceptional craftsmanship in creating landmark projects throughout the West and beyond. \r\n\r\nComplainant states that the disputed domain name includes the entirety of the SWINERTON mark, with a geographical abbreviation for the United States, appended to the mark, which is merely descriptive of where Swinerton is headquartered, and does nothing to negate the confusing similarity of the registration to the SWINERTON mark.\r\n\r\nGiven Complainant’s prominence in the construction market it is well-known, and in its niche it is famous. Since “Swinerton” is a corporate name that is both distinctive as a mark and distinctive in the marketplace, it is inconceivable that Respondent was unaware of it and registered the domain name for its brand value. The disputed domain name has no independent value except for its association with Complainant.\r\n\r\nComplainant also points out that Respondent has engineered code changes to the MX code such that will confuse consumers to believe that is or has been authorized by Complainant, a fact which is confirmed in that the domain name presently resolves to Complainant’s official website. Complainant states that Respondent configured Mail server (MX) records on the disputed domain name, thusly: . 3600 IN MX 0 swinertonus-com.mail.protection.outlook.com. These preparatory steps (configuring ‘MX’ or mail exchange records) have been considered in relation to ‘use’ for the purposes of the Policy by other Panels. This Panel concurs that such reconfiguration supports an inference directly concerning infringing use of the disputed domain name.\r\n\r\nRespondent can have no legitimate interest in sending or receiving email from the disputed domain name because it will likely lead recipients of the email to mistakenly believe that the mail originates with permission or approval of the trademark owner. Worse, senders might mistakenly send sensitive data to the Respondent under the mistaken assumption that the mail account is under Swinerton's control or management, as would be expected given the disputed domain name likely suggests it is an account authorized or originating with Complainant given it incorporates the entirety of the domain and appends a geographical abbreviation for Complainant's headquarters, thereby only falsely re-enforcing the connection between the disputed domain name and Complainant.\r\n\r\nThis certainly does not constitute making use, or demonstrable preparations for use, of the disputed domain name in connection with a bona fide offering of goods or services, or of making a legitimate non-commercial or fair use of the disputed domain name.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nPARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant submits that is confusingly similar to its trademark in that it contains in whole the term together with the geographic acronym for the United States. The addition does not create a distinctive name independent of Complainant’s mark and is clearly registered to be used to confuse visitors into believing that it belongs to, is associated with, or sponsored by Complainant. \r\n\r\nAccording to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it has not been authorized by the Complainant to use the SWINERTON trademark, and the disputed domain name does not correspond to the name of the Respondent. The Complainant adds that the Respondent does not carry out a fair or non-commercial use of the disputed domain name as it currently resolves to Complainant’s official website.\r\n \r\nThe Complainant contends further that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the SWINERTON trademark is distinctive and well-known, and that it is evident that the Respondent registered the disputed domain name with knowledge of Complainant’s trademark. The addition of the geographic term does not create a separate and independent distinctive term. The disputed domain name is not used for any bona fide purpose and was registered and is being used in bad faith. \r\n\r\nRESPONDENT:\r\n\r\nThe Respondent did not reply to the Complainant's contentions and did not submit any arguments or evidence in its defence. In such event, UDRP Rule 14 provides (a) that the “Panel shall proceed to a decision on the complaint” and (b) that “the Panel shall draw such inferences therefrom as it considers appropriate.” 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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at Para. 4.3.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Gerald M. Levine, Ph.D, Esq." ], "date_of_panel_decision": "2021-08-16 00:00:00", "informal_english_translation": "Swinerton owns U.S. Reg. No. 2,284,825, issued Oct. 12, 1999, in Int'l Cl. 35, first use Oct. 11, 1923, for SWINERTON (Standard Characters); U.S. Reg. No. 2,282,855, issued Oct. 5, 1999, in Int'l Cl. 37, first use 1923, for SWINERTON (Standard Characters); U.S. Reg. No. 5,756,816, issued May 21, 2019, Int'l Cl. 35,37, first use in 2018 for SWINERTON (& Design). Swinerton also has common law rights in the United States going as far back as 1923 based on the certified first-use dates in the '825 and '855 Registrations.\r\n\r\n", "decision_domains": { "SWINERTONUS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }