The Petitioner is ABG-Tretorn, LLC,United States of America (“US”), represented by Authentic Brands Group, United States of America.
The Domain Holder is Domain Department, Arcanite Media Ltd., Belize.
This Alternative Dispute Resolution proceeding relates to the domain name <tretorn.se> (“the Domain Name”)
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. The Center sent an invitation to amend the Petition on March 1, 2022. The Petitioner submitted an amended Petition the same day. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on March 2, 2022. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on April 4, 2022.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on April 6, 2022. 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.
The Petitioner is an US company with the roots in Sweden and the holder of several trademark registrations for TRETORN, as example a European Union (“EU”) trademark registration No. 000910240, TRETORN, registered on November 26, 1999. The Domain Name was registered in March 2018, and resolved to a pay-per-click(“PPC”) website.
The Petitioner has elected to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition. Since the Domain Holder has failed to file a Response to the Petition, within the deadline indicated in the Notification of Petition and Commencement of Administrative Proceeding, the case is handled as an Accelerated Proceeding in accordance with the Petitioner’s request.
The Petitioner claims that the Domain Name shall be transferred to the Petitioner.
ABG-Tretorn, LLC (“Tretorn”) is the owner of the world-famous TRETORN brand, an outdoor-lifestyle brand. Tretorn is directly inspired by the clean, fresh, graphic and playful spirit of Swedish design infusing a style statement in all products. This authentic framework has come to define the brand. Today, Tretorn embraces its heritage while infusing trend, luxe details, and utility elements in every style. Since the brand was founded in 1891, it has expanded from sneakers to other categories that include rubber boots, outerwear, hosiery, tennis balls and accessories, bags, loungewear and others. TRETORN products are currently sold in North America, Europe and Asia through prominent retailers such as Nordstrom, Bloomingdales and Nieman Marcus, to name a few.
The TRETORN brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of more than 200 trademarks covering a wide variety of goods and services and a large portfolio of copyrights for images used in association with the advertising, marketing and sale of TRETORN-branded products globally. More particularly, the Petitioner owns for example, the following trademarks with rights in Sweden; EU Registration No. 000910240 in International classes 18, 25 and 28, registered on November 26, 1999, and EU Registration No. 018484291 in International class 35, registered on December 17, 2021.
The Domain Name is identical to the Petitioner’s registered trademarks. TRETORN relies on the extensive range of registered trademarks for TRETORN to which references have already been made.
Domain Holder was well aware of the Petitioner’s trademark at the time Domain Holder registered the Domain Name. The Petitioner’s trademarks are well-known around the world. The Petitioner relies on the extensive range of registered TRETORN trademarks, to which references have already been made. This is proof of bad faith at the time of registration.
Additionally, the Petitioner submitted a complaint to Domain Holder through the Registrar, asking the Domain Holder to disable and transfer the Domain Name to the Petitioner. An alleged representative of the Domain Holder replied by conceding it was operating a PPCwebsite and thereafter demanding money for transfer of the Domain Name. Additionally, the Domain Holder continued to use the Domain Name after the Petitioner warned the Domain Holder of its rights in the TRETORN marks.
The Domain Holder has not been licensed, contracted, or otherwise permitted by the Petitioner in any way to use the TRETORN trademark or to apply for any domain names incorporating the TRETORN trademark, nor has the Petitioner acquiesced in any way to such use or application of the TRETORN trademark by the Domain Holder. Additionally, there is no evidence of fair use. Furthermore, there is no evidence that the Domain Holder is using or plans to use the TRETORN trademark or the Domain Name incorporating the TRETORN trademark for a bona fide offering of goods or services that does not infringe the Petitioner’s intellectual property rights. It is clear that the Domain Holder is utilizing or plans to utilize the good reputation, market position or characteristic feature of the Petitioner to attract traffic to its own website or to increase revenue in this manner.
The Domain Holder has been actively using the TRETORN trademarks in the Domain Name and the website, which the Domain Name resolves to, is used for illegitimate commercial gains, more specifically, by operating a PPCwebsite.
The Domain Holder did not respond to the Petition.
The Petitioner is the holder of several TRETORN trademarks. The Domain Name is identical or similar to trademarks held by the Petitioner.
TRETORN is a well-known trademark and the Domain Holder must have been aware of the Petitioner’s trademarks rights connected to TRETORN prior to registration of the Domain Name. The Domain Name was registered by the Domain Holder without consent from the Petitioner. Furthermore, the use of the Domain Name is in bad faith, as the website, to which the Domain Name resolves to, is used to attract Internet users to a PPC website and taking benefit from the goodwill and repute of the Petitioner’s TRETORN brand. The Arbitrator’s conclusion is that the registration and use of the Domain Name was made in bad faith.
No circumstance has arisen in the present proceeding that would indicate that the Domain Holder has any right or justified interest in the Domain Name.
The Domain Name shall be transferred to the Petitioner.
Peter Hedberg
Date: April 12, 2022