WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0015
The Petitioner is Guideline AS of Norway, represented by Zacco Sweden AB, Sweden.
2. Domain Holder
The Domain Holder is Domain Department, Arcanite Media Ltd., of Belize.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <guideline.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (the “Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on March 23, 2018. The Domain Holder submitted a response on April 23, 2018.
The Center appointed Jonas Gulliksson as the sole Arbitrator in this matter on May 16, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner is the holder of, inter alia, two EU trademark registrations for GUIDELINE (registration numbers 000994871 and 003631281), registered on October 9, 2000, and May 14, 2008.
The disputed domain name was registered on September 5, 2014.
The Petitioner claims that the disputed domain name <guideline.se> shall be transferred to the Petitioner.
6. Parties’ Contentions
The Petitioner is originally a Norwegian fly-fishing company, which has designed and developed fly-fishing equipment since 1991. A Swedish entity was established in 2001 leading to an international expansion of sales and distribution of the Petitioner’s products in more than 25 countries around the world.
The Petitioner has successfully used and marketed its GUIDELINE trademark for its products since its inception. The trademark is highly distinctive in relation to the goods the Petitioner is selling.
The Petitioner is also the holder of the Swedish company name GUIDELINE SWEDEN AB.
The disputed domain name is identical to the Petitioner’s trademark, and confusingly similar to the Petitioner’s company name.
In February 2018, the Petitioner sent a letter to the Domain Holder, requesting that the disputed domain name should be transferred to the Petitioner. The Domain holder refused to adhere to the request, stating that the disputed domain name was of generic nature and that the claims presented to them was to be considered “high jacking of generic domain names”.
The Domain Holder has no intellectual property rights in respect of the word “guideline”. The disputed domain name has only been used for a website on which the Domain Holder publish pay-per click advertisements. The advertisements have primarily concerned goods and services for which the Petitioner has registered its trademarks, namely sports fishing articles and outdoor sporting goods. Such use of the disputed domain name constitutes both an infringement in the Petitioner’s trademark rights, and bad faith under the Policy.
The Domain Holder claims that the advertisements which show up on the website depend on the visitor of the site, and that the Domain Holder has no control of the content. This claim is false, which can be clearly shown by visiting different domain names, which belong to the Domain Holder from different locations, servers and devices in the world. The same website platform which was used for the disputed domain name is also used by the Domain holder for numerous other domain names which are identical or confusingly similar to trademarks belonging to third parties. These websites contain advertisements infringing third party rights, and the content is repeated regardless of from where access was gained. It is obvious that any user who visits one of the Domain Holder’s pay-per click websites will see the same content, regardless of where they come from.
Even if it was true that the advertisements were presented based on each unique visitor, the damage would be even greater since people who have an interest in fly fishing and the Petitioner’s trademarks would be diverted to competing websites, and the Domain Holder would gain unfair commercial benefits from the traffic based on the rights belonging to the Petitioner. The Domain Holder can at any time edit, add or block any content on its website, and is solely responsible for the content on the subject website.
The Domain Holder claims that “guideline” is a generic word. However, the Domain Holder has not used the disputed domain name in its generic sense.
The Domain Holder registered the disputed domain name more than 20 years after the Petitioner started using its trademark. It is clear that the Domain Holder registered the disputed domain name in bad faith since its intention was to connect the disputed domain name to a pay-per click website and exploit the Petitioner’s trademark by increasing traffic to its website and thereby gain unfair commercial benefits in relation to the Petitioner.
B. Domain Holder
The Domain Holder has been actively involved in the domain name business since 2004. The Domain Holder specializes in valuable generic domain names and is primarily involved in acquisitions and the management of those assets. Furthermore, the Domain Holder operates websites that deliver topical content to visitors and generate leads to advertisers. Today, the Domain Holder directly or indirectly owns approximately 18,000 generic domain names. The vast majority of those assets is held as long-term investments and is not for sale in the near future.
In July 2014, the Domain Holder noticed that the disputed domain name was added to the publicly available domain droplist provided by the .SE registry. The Domain Holder managed to register the disputed domain name through a well-renowned backorder service provider in September 2014. In November 2014, the Petitioner approached the Domain Holder with the purpose of acquiring the rights to the disputed domain name. The Petitioner offered the Domain Holder USD 500, and the Domain Holder came with a counter offer of USD 3,000. The parties did not come to an agreement and the Domain Holder decided to keep the disputed domain name as a long-term investment.
The Petitioner does not have an exclusive right to the term “guideline”. It is an extremely common generic word, and is typically used as an indication or outline of policy or conduct. Furthermore, it is used by several Swedish companies, with no connection to the Petitioner, and in several domain names under most top level domains. The Petitioner does not own any of those domain names.
The Domain Holder has a legitimate interest in the disputed domain name. Generic domain names are considered valuable assets and have been bought by investors for over 20 years. Domain names are in most cases registered on a first-come first-served basis, and domain investors would not have a registered trademark for each and every domain name in their portfolio.
Most of the Domain Holder’s domain names serve third party advertisements from the Domain Holder’s partner Google. The advertisements shown on the websites are based on the visitor’s preferences and browsing history. Some of the domain names are developed into informational websites with the purpose of generating relevant leads to advertisers (so-called affiliate marketing).
The Domain Holder has not registered or used the disputed domain name in bad faith. It would be close to impossible for the Domain Holder to know about the Petitioner or its trademarks at the time of registration, since the Petitioner has close to no recognition outside of Norway. The first time the Domain Holder heard about the Petitioner was on November 25, 2014, when the Petitioner offered to buy the disputed domain name.
Google is the only party that could determine the relevance of the advertisements shown on the website, and the Domain Holder could not by any means decide to change the advertisements. Furthermore, presenting relevant advertisements to visitors is not considered bad faith unless it directly shows advertisements for its competitors.
The Domain holder has not used the disputed domain name in a way that could be deemed to mislead any visitors to believe that the domain name is actually owned by the Petitioner, and the disputed domain name has not been used in a way that damages the Petitioner.
The Petition is a so-called Reverse Domain name Hijacking attempt, with the sole purpose of harassing the Domain Holder and abuse the administrative process.
7. Discussion and Findings
A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:
1. The domain name is identical or similar to:
a. a distinguishing product feature,
b. a distinguishing business feature,
c. a family name,
d. an artist’s name (if the name is not associated with someone who deceased a long time ago),
e. a title of another party’s copyrighted literary or artistic work,
f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),
g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006,
h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008,
i. a geographic designation that is protected by the European Council’s Regulation (EU) 1234/2007, or
j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation, which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The domain name has been registered or used in bad faith, and
3. The domain holder has no rights or justified interest in the domain name.
All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.
A. The Domain Name is identical or similar to a trademark which is legally binding in Sweden and to which the Petitioner can prove its rights
The disputed domain name incorporates the Petitioner’s GUIDELINE trademark, with the addition of the country code Top-Level Domain (“ccTLD”) “.se”. The ccTLD is not distinguishing for the purposes of establishing identical or confusing similarity. Thus, the Arbitrator finds that the disputed domain name is identical to the Petitioner’s EU trademark, which is legally recognized in Sweden.
B. The Domain Name has been registered or used in bad faith
The disputed domain name was registered by the Domain Holder on September 5, 2014, which is almost fourteen years after the registration of the Petitioner’s first EU trademark for GUIDELINE. The Domain Holder has stated that it did not know about the Petitioner or its trademarks at the time of registration of the disputed domain name. According to the email correspondence submitted by the Domain Holder, it is however clear that the Domain Holder became aware of the Petitioner and its trademark rights in 2014, when the Petitioner contacted the Domain Holder for the purpose of purchasing the disputed domain name.
Furthermore, the Domain Holder has emphasized that the disputed domain name consists of a generic word. The concepts of “genericness” or distinctiveness are relevant and the word “guideline” would be considered generic and descriptive in relation to, e.g., instruction manuals, descriptive literature etc. However, GUIDELINE is highly distinctive in relation to a wide range of goods and services and also in relation to fishing-lines since there is nothing in the use or properties of these goods that can be described as “guideline”. On the contrary, GUIDELINE is suggestive and protectable according to Swedish and EU trademark law.
The Domain Holder has further stated that the advertisements on the subject website are determined by a third party (Google), based on the visitor’s browsing history. Notwithstanding these statements, the submitted material shows that the pay-per-click links have included advertisements for products within the main field of the Petitioner’s business, namely sport fishing articles. Given that the Domain Holder has been informed of the Petitioner’s trademark rights, and even has discussed a transfer as early as in 2014, it is in the Arbitrator’s view evident that the disputed domain name, which is identical to the Petitioner’s EU trademarks, has been used for commercial gain to direct Internet users to the Domain Holder’s website. The Domain Holder’s statements, suggesting that bad faith cannot be at hand when a third party – in this case Google – is generating the advertisements, is under these circumstances not sufficient to avoid a finding of bad faith.
While it has not been undisputedly shown that the disputed domain name was registered in bad faith, the Arbitrator finds that the disputed domain name has been used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The Arbitrator notes that the Domain holder has no registered trademark rights or other intellectual property rights in respect of the word “guideline”. The Domain holder is not connected with the Petitioner, and has not been authorized to use the Petitioner’s trademarks in the disputed domain name. The Domain holder’s use of the disputed domain name – to host a page comprising pay-per-click links – does in the Arbitrator’s view not support that the Domain Holder have a legitimate interest in the disputed domain name. Furthermore, it is clear that the disputed domain name is not being used in its linguistic sense. Neither does the Arbitrator find any other indications that the Domain Holder is making a legitimate noncommercial or fair use of the disputed domain name.
All in all, the Arbitrator finds that the Domain Holder has no rights or justified interest in the disputed domain name. The third element of the Policy is thus fulfilled.
As all the criteria are fulfilled, the requested relief of the Petitioner shall be granted and the disputed domain name <guideline.se> shall be transferred to the Petitioner.
The Domain Name is identical to a trademark which is legally recognized in Sweden and to which the Petitioner can prove its rights.
The submitted material shows that the Domain Holder has become aware of the Petitioner’s trademark rights, and yet continued to use the disputed domain name for a website showing, inter alia, advertisements for products corresponding to the goods for which the Petitioner’s trademarks are registered. All in all, the Arbitrator finds that the disputed domain name has been used in bad faith.
In the light of the evidence and statements presented, the Arbitrator finds that the Domain Holder has no rights or justified interests in the disputed domain name.
Date: June 5, 2018