Mastec North America, Inc. v John steward

WIPO Case No. D2025-2042

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
MASTEC NORTH AMERICA, INC. v. John steward

Case No. D2025-2042

1. The Parties

The Complainant is Mastec North America, Inc., United States of America (“U.S.”), represented by

Greenberg Traurig, LLP, U.S.

The Respondent is John steward, U.S.

2. The Domain Name and Registrar

The disputed domain name <mastecconstruction.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2025. On May 23, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domain Administrator, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2025.

The Center verified that the Complaint together with the amended 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 May 30, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2025.

The Center appointed Dennis A. Foster as the sole panelist in this matter on June 26, 2025. 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.

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4. Factual Background

The Complainant is a U.S. infrastructure engineering and construction company based in Florida that has been in business for some 80 years. The Complainant’s business is far-reaching, and covers inter alia electrical power transmission and distribution, wind and solar farms, natural gas and petroleum pipelines, telecommunications, and water and sewer systems.

The Complainant has used its MASTEC service mark in its business for all of its 80 years of operation, and it owns the following U.S. Federal MASTEC word service mark registration:

Registration no. 2130081, registration date January 20, 1998, International Class 037 for public service utility industry construction, and International Class 042 for engineering, design, and technical consulting.

The Complainant operates a website at its domain name <mastec.com> which was registered on April 25,
1996, and the Complainant has been listed on the New York Stock Exchange since 1998.

The Respondent is an individual who also is located in the U.S. The disputed domain name was registered on November 21, 2024. The disputed domain name does not resolve to a website, but only a landing page.

The Complainant sent a cease-and-desist letter to the Respondent on March 23, 2025, but the Respondent did not reply.

5. Parties’ Contentions

A. Complainant

- The disputed domain name is confusingly similar to the Complainant’s MASTEC service mark, and simply

adds the generic term “construction” and the generic Top-Level Domain (“gTLD”) “.com”.

- The disputed domain name wholly incorporates the Complainant’s MASTEC service mark.

- The Respondent has no rights or legitimate interests in the disputed domain name.

- The Respondent has no authorization or consent to register the disputed domain name using the

Complainant’s MASTEC service mark.

- The Respondent is not making any apparent use of the disputed domain name, and there is no website or

other content at the disputed domain name.

- To the Complainant’s knowledge there are no prior trademark registrations or applications in the name of
the Respondent, and therefore the Respondent probably has not been commonly known by the disputed

domain name.

- Although the disputed domain name does not resolve to any content, the doctrine of passive holding

demonstrates the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

In accordance with paragraphs 4(a)(i) - (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name provided the Complainant can show that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has exhibited copies of its U.S. Federal MASTEC word service mark registration whose details the Panel summarized above in the Factual Background section. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The disputed domain name reproduces the entirety of the Complainant’s service mark, and the Panel finds this is sufficient to show that the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Respondent has added the term “construction” to the Complainant’s service mark in the disputed domain name, but the Panel finds that the addition of this common term is insufficient to prevent the disputed domain name from being confusingly similar to the Complainant’s service mark. WIPO Overview 3.0, section 1.8. And see Starbucks Corporation v. Contact Privacy Inc. Customer 1242735021 / Green Starbuck Coffee Cafe, WIPO Case No. D2019-1234.

The Panel therefore finds that the Complainant has carried its burden of proof under Policy paragraph 4(a)(i) to show that the disputed domain name is confusingly similar to the Complainant’s service mark.

B. Rights or Legitimate Interests

Owing to the difficulty of the Complainant proving that the Respondent does not have rights or legitimate interests in the disputed domain name, proving a negative as it were, the Policy consensus is that it is sufficient for the Complainant to make out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to come forward and show that it does have rights or legitimate interests in the disputed domain name, but the overall burden of proof remains on the Complainant. WIPO Overview 3.0, section 2.1.

The Complainant has contended that the Respondent does not have a license or other permission to use the
Complainant’s service mark in the disputed domain name. This constitutes a prima facie case under the
Policy. WIPO Overview 3.0, section 2.1.

Being in default, the Respondent has not come forward to try to rebut the Complainant’s prima facie case. However, for the sake of fairness, the Panel will review the record to see whether there might be evidence that the Respondent does have rights or legitimate interests in the disputed domain name per Policy

paragraph 4(c)(i, ii, or iii).

The Policy at paragraph 4(c)(i) allows the Respondent to claim rights or legitimate interests in the disputed domain name if, before being notified of this dispute, the Respondent was using the disputed domain name to make a bona fide offering of goods or services. However, in the present case, the Respondent has made no apparent use of the disputed domain name.

Further, the Respondent does not appear to have been commonly known as the disputed domain name and thus cannot claim rights or legitimate interests per Policy paragraph 4(c)(ii). And finally, it is not apparent in the case record that the Respondent ever made a fair use of the disputed domain name or used it for

legitimate noncommercial purposes per Policy paragraph 4(c)(iii).

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The Panel finds, therefore, that the Complainant has met its burden of proof under Policy paragraph 4(a)(ii) to show that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy at paragraph 4(b) provides, without limitation, four circumstances in which the Respondent may be found to have registered and to be using a disputed domain name in bad faith. However, the Panel finds that these four circumstances are not quite applicable to the Respondent’s course of conduct in this case primarily because the Respondent has apparently refrained from any action after registering the disputed domain name.

The Panel finds that the Respondent had the Complainant in mind when he registered the disputed domain name because the Complainant is prominent in its field and its business and service mark use go back almost a century.

Next, the Panel finds that the Respondent’s course of conduct in this case comprises the elements of passive holding of the disputed domain name in bad faith. WIPO Overview 3.0, sections 3.2.1 and 3.3.

Notably:

- The Respondent registered the disputed domain name which includes the Complainant’s distinctive mark.

- The Respondent to date has shown no use or plans for use of the disputed domain name.

- The Respondent took steps to hide his identity.

- The Respondent did not respond to the Complainant’s inquiry asserting trademark infringement.

- The Respondent has equipped the disputed domain name to provide mail exchange (“MX”) or email

service.

- The composition of the disputed domain name, which reproduces the entirety of the Complainant’s service
mark with the addition of the term “construction” that relates to the Complainant’s area of activity and

suggests targeting of the Complainant.

- The implausibility of any good faith use of the disputed domain name.

The Panel finds that the above factors support a finding that the Respondent registered and is using the
disputed domain name in bad faith and that the Complainant has carried its burden of proof to show that the
Respondent registered and is using the disputed domain name in bad faith per Policy paragraph 4(a)(iii).

Regarding passive holding in general, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. For MX use, see Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472.

7. Decision

For 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 <mastecconstruction.com> be transferred to the Complainant.

/Dennis A. Foster/
Dennis A. Foster
Sole Panelist
Date: July 10, 2025