Swinerton Incorporated v. [NAME REDACTED]
Claim Number: FA2005001896039
Complainant is Swinerton Incorporated (“Complainant”), represented by Jonathan Matkowsky of RiskIQ, Inc., California, USA. Respondent[i] is [Name Redacted] (“Respondent”), [Location Redacted].
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swinertonbuilders.us> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2020; the Forum received payment on May 12, 2020.
On May 18, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <swinertonbuilders.us> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the disputed domain name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 May 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@swinertonbuilders.us. Also on May 21, 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 informal emails[ii] from Respondent but no formal response after the Respondent received the Complaint and other case materials, the Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2020, the Forum received email communications from Respondent stating that Respondent did not own the disputed domain name and that someone was using Respondent’s business name and information to register the disputed domain name. The Respondent claimed that it had been contacted by the FBI regarding the theft of its identity in registering several other domain names. The Complainant replied on May 28, 2020, stating that if the Respondent’s information had been used by a fraudulent actor to steal its identity and register the disputed domain name, the Center could redact the name of the Respondent in the Decision.
On June 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the SWINERTON trademark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,284,825, registered October 12, 1999), with a date of first use of October 11, 1923 (hereinafter the “SWINERTON Mark”). Respondent’s <swinertonbuilders.us> disputed domain name is confusingly similar to Complainant’s SWINERTON mark, as the disputed domain name incorporates the SWINERTON Mark in its entirety, adds the dictionary term “builders”, and is followed by the usTop-Level Domain (“usTLD”) “.us”.
Respondent has no rights or legitimate interests in the <swinertonbuilders.us> disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of SWINERTON in a domain name per Policy ¶ 4(c)(iii). Moreover, Respondent is not making a bona fide offering of goods or services through use of the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and (iv), respectively. Rather, Respondent initially used the disputed domain name to redirect to Complainant’s own official website. Subsequently, the disputed domain name resolved to an inactive webpage, although the disputed domain name was used to send and receive fraudulent emails intended to be from Complainant as a likely phishing scheme.
Respondent registered and is using the <swinertonbuilders.us> disputed domain name in bad faith. Respondent has used the disputed domain name for commercial gain by creating a likelihood of confusion between Complainant and Respondent. Further, Respondent has provided false contact information in connection with the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. As stated above, Respondent submitted several emails stating that another individual had stolen its identity to register the disputed domain name.
C. Additional Submissions
Additional informal submissions by Complainant and Respondent are described above.
Complainant holds trademark rights in the SWINERTON Mark. The disputed domain name is confusingly similar to Complainant’s SWINERTON Mark, Respondent lacks rights or legitimate interests in the use of the disputed domain name and Respondent registered and is using the disputed domain name in bad faith.
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 disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal 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”).
Preliminary Issue: Redaction of Respondent Name and Location
Prior to discussing the three elements of the Policy, the Panel must decide whether the name and location of Respondent should be redacted in this decision.
The Panel has determined that the present case is an exception to the Policy that all decisions should be published on the Internet in their entirety, and that conversely, the name and location of Respondent shall be redacted. According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
In the present case, neither Claimant nor Respondent have explicitly requested such redaction, but the Panel concludes that one of Respondent’s emails implies such request and one of Complainant’s additional email submissions indicates agreement with such request. Therefore, the Panel concludes that the claim of identity theft by Respondent warrants the redaction of Respondent’s name and location from this decision.
The Panel finds that Complainant has rights in the SWINERTON Mark based on registration of the SWINERTON Mark with the USPTO as referenced above. Registration of a trademark with the USPTO is sufficient to establish rights in that trademark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Sammy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The Panel also finds that Respondent’s <swinertonbuilders.us> disputed domain name is confusingly similar to the SWINERTON Mark, as the disputed domain name incorporates the mark in its entirety, adds the dictionary term “builders”, and the “.us” usTLD. Such additions to the disputed domain name are not sufficient to distinguish the disputed domain name from the SWINERTON Mark. See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SWINERTON Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the disputed domain name initially resolved to Complainant‘s official website and later resolved to an inactive landing page. Respondent was attempting to impersonate Complainant for commercial gain, an indication of bad faith. In addition, failing to actively use a disputed domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Further, Respondent subsequently used the disputed domain name to send and receive fraudulent emails in furtherance of a fraudulent phishing scheme. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Finally, Complainant contends that Respondent has provided false contact information in connection with the registration of the disputed domain name. Use of false contact information in registering a domain name can be evidence of bad faith registration per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). The Panel agrees with Complainant that Respondent falsely claims to be a certain company at a specified location that turns out not to be the case. The Complainant also claims that Respondent uses the same false information to register many other domain names.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <swinertonbuilders.us> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 8, 2020
[i] Any reference to "Respondent" in this Decision refers to the individual listed under WhoIs as the registrant of the disputed domain name. Here, the Respondent’s name and location is redacted since Respondent claims and the Panel agrees that it is a victim of identity theft.
[ii] With the exception of Respondent’s emails denying registration of the disputed domain name and stating that Respondent also owns several other domain names fraudulently, Respondent had not provided additional evidence in support of a claim of stolen identity.
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