Swisher International, Inc. v. Vincent Peres-Tutera
Claim Number: FA2011001921548
Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D’Amore of Lucas & Mercanti, LLP, US. Respondent is Vincent Peres-Tutera (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <swishersososweets.com> and <swishersososweets.net>, registered with Domain.com, LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2020. The Forum received payment on November 20, 2020.
On November 23, 2020, Domain.com, LLC confirmed by e-mail to the Forum that the <swishersososweets.com> and <swishersososweets.net> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swishersososweets.com, postmaster@swishersososweets.net. Also on November 30, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an international cigar company founded in the United States in 1861. Complainant has rights in the SWISHER SWEETS mark through Complainant’s registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <swishersososweets.com> and <swishersososweets.net> domain names are identical or confusingly similar to Complainant’s SWISHER SWEETS mark.
Respondent lacks rights or legitimate interests in the <swishersososweets.com> and <swishersososweets.net> domain names. Respondent is not commonly known by the domain names nor has Respondent been authorized by Complainant to use the SWISHER SWEETS mark. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent uses them misleadingly to divert consumers or to tarnish the SWISHER SWEETS mark.
Respondent registered and uses the <swishersososweets.com> and <swishersososweets.net> domain names in bad faith. Respondent uses them to compete with Complainant. Furthermore, based on Respondent’s use of Complainant’s mark, Respondent had actual knowledge of Complainant’s rights in the SWISHER SWEETS mark prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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."
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.
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 ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the SWISHER SWEETS mark through several registrations of the mark with the USPTO e.g. Reg. No. 1,729,732, registered on November 3, 1992. Respondent’s <swishersososweets.com> and <swishersososweets.net> domain names are confusingly similar to Complainant’s SWISHER SWEETS mark as they contain the mark in its entirety, merely adding the adjectival phrase “soso”, which does not distinguish the domain names from the mark, and the inconsequential gTLDs “.com” and “.net”, which may be disregarded.
Complainant has established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <swishersososweets.com> and <swishersososweets.net> domain names were registered on June 22, 2020. They both resolve to websites with links to online vendors which sell products made by Complainant’s competitors.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <swishersososweets.com> and <swishersososweets.net> domain names under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <swishersososweets.com> and <swishersososweets.net> domain names under Policy ¶ 4(a)(ii).
Complainant has established this element.
Policy ¶ 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of Policy ¶ 4(a)(iii), including:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The <swishersososweets.com> and <swishersososweets.net> domain names were registered many years after Complainant registered its SWISHER SWEETS trademark. Given the use to which Respondent has put the domain names, the Panel finds that Respondent was well aware of Complainant’s mark when registering the domain names and has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and of products promoted on his websites.
The Panel is therefore satisfied that Respondent registered and is using the domain names in bad faith.
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swishersososweets.com> and <swishersososweets.net> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 24, 2020
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