The Complainants are SWECO AB and SWECO Sverige AB, both Sweden, both represented by Groth & Co, Sweden.
The Respondent is Vargas Victor, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
On September 15, 2021, the Center received an email communication from an unidentified third party with unclear relationship (if any) to the Respondent, containing an out of court settlement proposal. The Panel takes note of the email communication of September 15, 2021, but does not consider it relevant to the outcome of the case, as is within the Panel’s authority pursuant to the Rules, paragraph 10.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 13, 2021. 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.
4. Factual BackgroundThe Complainants are Swedish companies active in the architecture and engineering sectors, employing around 17,500 architects, engineers and other specialists.
The Complainants own trademark registrations in various jurisdictions, including the Swedish trademark SWECO (Reg. No. 346697, registered on June 8, 2001) and the European Union trademark SWECO (Reg. No. 000674556, registered on June 25, 1999).
The Complainants further hold the domain name
The disputed domain name was registered on January 19, 2018, and resolved to a website with user content similar to the Complainants’ official website. Fraudulent emails regarding non-existent contracts and commercial orders allegedly related to the Complainants were sent from an email address incorporating the disputed domain name. In the meantime, the website has been deactivated.
Before initiating the present proceeding, the Complainants made some effort to resolve the matter amicably. The Complainants’ settlement attempts remained unsuccessful.
5. Parties’ Contentions A. ComplainantsThe Complainants allege that they have satisfied all elements of the Policy, paragraph 4.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsBased on the facts and evidence introduced by the Complainants, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Complainants have submitted sufficient evidence to demonstrate their registered rights in the SWECO trademark.
The Complainants’ trademark is wholly reproduced in the disputed domain name.
A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “engineering” to the Complainants’ SWECO trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainants’ trademark.
The Complainants have thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThere are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainants contend that the Respondent is neither affiliated with the Complainants nor making any bona fide use of the disputed domain name.
The Complainants have credibly demonstrated that the Respondent used the disputed domain name and an email address incorporating the disputed domain name to conduct a fraud scheme. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.
Furthermore, the composition of the disputed domain name, wholly incorporating the Complainants’ trademark and the term “engineering”, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1.
Based on the Complainants’ credible contentions, the Panel finds that the Complainants, having made out a prima facie case which remains unrebutted by the Respondent, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainants’ trademark, it can be inferred that the Respondent was aware of the Complainants’ trademark when registering the disputed domain name.
The Panel finds that the reproduction of the Complainants’ trademark along with the term “engineering” creates a likelihood of confusion between the Complainants’ trademark and the disputed domain name, noting that the added term “engineering” appears to be related to the Complainants’ activities.
The evidence and allegations submitted by the Complainants support a finding that the Respondent was engaged in an attempt to pass himself off as the Complainants by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of his website and to use an email address related to the disputed domain name for his own commercial benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466). The fact that the website at the disputed domain name has been deactivated in the meantime does not prevent a finding of bad faith.
Accordingly, the Complainants have also fulfilled paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Tobias Zuberbühler
Sole Panelist
Date: October 25, 2021