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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2021-0010

1. Petitioner

The Petitioner is Insurance Auto Auctions, Inc.United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

2. Domain Holder

The Domain Holder is Mirio Limited, Cyprus.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <iaa.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 19, 2021. The Domain Holder submitted a response on April 18, 2021.

The Center appointed Per Carlson as the sole Arbitrator in this matter on April 23, 2021. 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 a company providing auction solutions for total loss, damaged, and low-value vehicles. The petitioner is the holder of inter alia the European Union trademark (“EUTM”) IAA (registration No. 0889469) registered on March 29, 2006, for “Holding auctions open exclusively to registered buyers composed principally of licensed dealers and automobile dismantlers, of salvaged and severely damaged vehicles”, in class 35 of the Nice Classification.

The Domain Holder is the holder of the disputed domain name <iaa.se>, registered on February 22, 2019.

5. Claims

The Petitioner has requested that the disputed domain name <iaa.se> be transferred to the Petitioner.

The Domain Holder has contested the request.

6. Parties’ Contentions

A. Petitioner

In support of its claim the Petitioner has relied on the grounds, that the disputed domain name <iaa.se>, is identical or similar to the Petitioner’s EUTM IAA, that the disputed domain name has been registered or used in bad faith and that the Domain Holder has no rights or justified interest in the disputed domain name. In substance the Petitioner has submitted the following:

The Domain Name is identical or similar to the trademark AAI

The disputed domain name contains the Petitioner’s IAA mark in its entirety. The addition of the country code Top-Level Domain (“ccTLD”) “.se” does not alleviate the confusion between the disputed domain name and the IAA mark. Thus, it is established that the disputed domain name is similar to Petitioner’s IAA mark.

The Petitioner has been providing auction solutions under the trademark IAA for total loss, damaged, and low-value vehicles for more than 35 years. Leveraging leading-edge technology, the Petitioner’s unique platform facilitates the marketing and sale of total-loss, damaged, and low-value vehicles across the globe. The Petitioner has nearly 4,000 employees and more than 200 facilities throughout Canada, the United Kingdom, and the United States. The Petitioner serves a global buyer base – located in more than 170 countries – and a full spectrum of sellers, including insurers, dealerships, fleet lease and rental car companies, and charitable organizations. Buyers have access to multiple digital bidding and buying channels, innovative vehicle merchandising and efficient evaluation services, enhancing the overall purchasing experience. The Petitioner offers sellers a comprehensive suite of services aimed at maximizing vehicle value, reducing administrative costs, shortening selling cycle time and delivering the highest economic returns.

As a result of the Petitioner’s extensive marketing efforts and continuous use of the IAA mark, the Petitioner has developed substantial rights and goodwill in the IAA mark, and the public has come to associate the IAA mark with the Petitioner.

The Domain Name has been registered or used in bad faith

The disputed domain name <iaa.se> was registered more than twelve years after the registration of the Petitioner’s EUTM IAA. At the time of registration of the disputed domain name, the Domain Holder knew, or at least should have known, of the existence of the Petitioner’s mark.

The Domain Holder is using the disputed domain name to confuse and mislead Internet users looking for the Petitioner’s auction services. At present, the disputed domain name resolves to a Pay-Per-Click (“PPC”) website that displays various PPC links to third-party auto sales and car auctions including links referencing Copart, a direct competitor of the Petitioner. In fact, two PPC links lead to a Copart registered broker located in Portland, Oregon, United States (Copart Auction and Copart Subasta). Use of third-party PPC links demonstrates that the Domain Holder intended to capitalize on the reputation and goodwill of the Petitioner’s mark in order to increase traffic to the subject website for the Domain Holder’s own pecuniary gain. Such use does not represent a bona fide offering of goods or services.

Moreover, The Domain Holder’s use of a domain name that incorporates the Petitioner’s mark has the potential to cause confusion for consumers who may either believe that the disputed domain name will take them to the Petitioner’s official website, or that the Domain Holder is affiliated with or authorized by the Petitioner. Even if ultimately the consumer realizes that the Domain Holder’s website is not connected with the Petitioner, the consumer has already been deceived.

By registering and using the disputed domain name, the Domain Holder has unfairly capitalized on the goodwill and reputation of the Petitioner’s mark and is attempting to improperly reap financial gain in violation of the .se Policy.

The Domain Holder has no rights or justified interest in the Domain Name

The Domain Holder is not sponsored by or affiliated with the Petitioner in any way, and the Petitioner has not given the Domain Holder permission to use the Petitioner’s mark in any manner.

B. Domain Holder

The Domain Holder has not contested that the disputed domain name <iaa.se> is identical or similar to the Petitioner’s EUTM IAA. But the Domain Holder has disputed that the domain name <iaa.se> has been registered or used in bad faith, as well as that the Domain Holder has no rights or justified interest in the domain name. In substance the Domain Holder has submitted the following:

The disputed domain name is a generic 3-letter domain name and this type of domain name is much coveted. The reason is that 3-letter domain names are short and easier to remember. They can represent many different things and due to their generic nature they may be used by various operators.

The Domain Holder has a large portfolio of domain names in Sweden containing many 2-, 3-, and 4-letter domain names, used in different contexts. The Domain Holder’s business providing sponsored PPC links for various domain names is a legitimate business (see ATF-case 137, <diligensen.se>).

The sponsored PPC-links displayed at the web site “www.iaa.se” are listed at Google’s parked domain site. According to Google’s policy, only generic domain names may be listed at a parked domain site. As the disputed domain name is listed on this site, it is clear that is considered to be generic.

The Domain Holder has been the owner of the domain name and has used it for more than two years. According to paragraph 7.2 of the Instructions pertaining to ADR, this indicates that the Domain Holder has not registered or used the domain name in bad faith.

Used in Sweden, the PPC-links on the website “www.iaa.se” does not interfere with the Petitioner’s business, since they relate to inter alia the “delivery of food” and the “delivery of provisions”. And used on a mobile phone in Sweden, the links on website relate to, among other things, “boat show”.

Used in the United States, with an American IP-adress, the links point to American advertisements. Furthermore, the Petitioner and the Petitioner’s Representative has a web surfing history which means that the system of Google will match these advertisements.

The Petitioner has no business in Sweden and is not known to the general public in Sweden. Therefore, it is far-fetched to assume that Internet users in Sweden would search for information on the Petitioner’s business.

7. Discussion and Findings

In accordance with article 7.2 of the .se Policy, a domain name may be transferred to the party requesting dispute resolution proceedings, if the following three conditions are fulfilled:

1. the domain name is identical or similar to inter alia a trademark, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights,
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.

A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights

The Petitioner is the holder of the EUTM IAA. An EU trademark has a unitary character and equal effect throughout the European Union. Thus, the Petitioner’s trademark IAA is legally recognized in Sweden. The disputed domain name <iaa.se> is identical with the Petitioner’s said trademark IAA.

B. The Domain Name has been registered or used in bad faith

The Petitioner has stated, that the company has more than 200 facilities throughout Canada, the United Kingdom and the United States, and that the Petitioner serves a global buyer base in more than 170 countries. Furthermore the Petitioner has stated, that the company has developed substantial rights and goodwill in the trademark IAA and that the public has come to associate the IAA trademark with the Petitioner.

However, the Petitioner has not asserted that the company is running a business in Sweden, nor to what extent the company is serving a buyer base in Sweden. Neither has the Petitioner asserted, that the public in Sweden has come to associate the IAA trademark with the Petitioner, nor that the trademark IAA has an established position on the Swedish market. Consequently, the Petitioner has not presented any evidence on the reputation of the IAA trademark in Sweden or on the position of the IAA trademark on the Swedish market.

But as the Petitioner has stated, a screen capture of the landing page for the disputed domain name <iaa.se>, dated February 5, 2021, shows that links on the web page “www.iaa.se” lead to a company in the United States running a business comprising online car auctions, and thus being a competitor to the Petitioner. This indicates, that the Domain Holder, at that point of time, in all likelihood was aware of the fact that the trademark IAA was used in the United States for car auctions. But it does not prove, that the Domain Holder was in fact aware of, or should have been aware of, the Petitioner’s use of the trademark when registering the domain name in February 2019 and for that reason being in bad faith.

Furthermore, the the Domain Holder’s objection that the disputed domain name, when used in Sweden, does not interfere with the Petitioner’s business since it relates to inter alia “delivery of food” and “boat show” (cf. the European Court of Justice, case C324/09, L´Oréal and Others, paragraph 65). With respect to the use of the domain name in Sweden, where the Petitioner’s EUTM is protected, the Domain Holder cannot be considered to have utilized the Petitioner’s trademark IAA to attract Internet traffic to the Petitioner’s own website or to increase revenue in this manner. Thus, the disputed domain name has not been used in bad faith within the meaning of article 7.2 of the .se Policy.

C. The Domain Holder has no rights or justified interest in the Domain Name.

With regard to the fact that the disputed domain name has not been registered or used in bad faith, the Petitioner’s request for transfer of the disputed domain name cannot be granted. Therefore, there is no need for an assessment whether the Domain Holder has any rights or justified interest in the domain name.

8. Decision

On the basis of the foregoing the Petitioner’s request for transfer of the disputed domain name is denied.

9. Summary

The disputed domain name <iaa.se> is identical to the EUTM IAA. Not proven that the disputed domain name has been registered or used in bad faith in the meaning of the .se Policy, the Petitioner’s claim to transfer of the disputed domain name is denied.

Per Carlson
Date: May 13, 2021

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