WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Decision: September 15, 2017
Case No. DSE2017-0005
The Petitioner is Laboratoires Expanscience S.A., France, represented by Nameshield, France.
2. Domain Holder
The Domain Holder is Alpha Domains Ltd, United Kingdom of Great Britain and Northern Ireland.
3. Domain Name and Procedural History
Alternative dispute resolution proceeding regarding the domain name <mustela.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. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default.
The Center appointed Jan Rosén as the sole panelist in this matter on September 5, 2017. 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 Section 1 of the .se Rules.
The Petitioner has elected to have the dispute decided as an Accelerated proceeding if the Domain Holder does not respond to the Petition.
4. Factual Background
The company Laboratoires Expanscience is a French family-owned company and a pharmaceutical and dermo-cosmetics laboratory. It has been developing its expertise for more than 60 years, selling its products in more than 100 countries. Created by the Petitioner in 1950, MUSTELA is the leading cosmetic brand in the European pharmaceutical market for baby products. Growing steadily, the company now sells more than 10 million products a year throughout the world (annex 1 to the Petition). Numerous websites sell Mustela's products worldwide, such as in Sweden, as demonstrated in annex 2 to the Petition.
The Petitioner is the owner of numerous trademark registrations for the term MUSTELA, including the International Trademark Registration No. 154904, registered July 16, 1951, for goods in classes 3 and 5, and covering a number of countries, including Sweden (annex 3 to the Petition).
The Petitioner also communicates worldwide on the Internet through various websites. The main website is found at the domain name <mustela.com> (registered on December 3, 1998), but the Petitioner has also registered other domain names such as <mustela.be> (registered on March 16, 2001), <mustela.fi> (registered on November 25, 2016) and <mustela.no> (registered on October 1, 2010).
The disputed domain name <mustela.se> was registered on May 23, 2013, by Alpha Domains Ltd. The website in relation with the disputed domain name displays a webpage with information of casinos (annex 6 to the Petition).
The Petitioner claims that the domain name <mustela.se> shall be transferred to the Petitioner.
6. Parties' Contentions
(i) The domain name is identical to a trademark or service mark in which the Petitioner has rights. The Petitioner owns several international trademark registrations consisting in the wording MUSTELA in many countries, of which Sweden is one. The Petitioner contends that the disputed domain name <mustela.se> is identical to its prior trademark MUSTELA. Indeed, the domain name contains the Petitioner's trademark without adjunction of any letter or word. The Petitioner contends that the addition of the country code
Top-Level Domain (ccTLD) ".se" does not change the overall impression of the designation as being connected to the trademark MUSTELA of the Petitioner. Furthermore, a Google search on MUSTELA provides several results, all of them being linked with the Petitioner.
On those facts, the Petitioner contends the disputed domain name <mustela.se> is identical to its prior trademark MUSTELA.
(ii) The Domain Holder has no rights or legitimate interests in respect of the domain name. The Petitioner contends that the Domain Holder has no rights or legitimate interests in respect of the disputed domain name <mustela.se> and is not related in any way with the Petitioner. The Petitioner does not carry out any activity for, nor has any business with the Domain Holder. Neither license nor authorization has been granted to the Domain Holder to make any use of the trademark MUSTELA, or any application for registration of the disputed domain name by the Petitioner.
Furthermore, since the end of 2014, the website in relation with the disputed domain name displays information of online casinos without any connection to the term "mustela". Thus, the Domain Holder has registered the disputed domain name <mustela.se> with the sole aim to prevent the Petitioner to register it, and to divert Internet traffic. In consequence, the Domain Holder has no rights or legitimate interests in respect of the disputed domain name <mustela.se>.
(iii) The domain name was registered and is being used in bad faith. The trademark MUSTELA is exploited in the whole World, especially in Europe and in Sweden. Indeed, the Petitioner authorizes retailers to sell MUSTELA's products. The website in connection with the disputed domain name <mustela.se> displays information of online casinos, without any modification since the end of 2014.
On those facts, the Petitioner contends that the disputed domain name was registered in sole purpose of preventing the Petitioner to register its trademark in a corresponding domain name. Furthermore, the Domain Holder has not, in any way, showed that the domain name was registered in good faith; the content of the website displays information in relation to online casinos.
Thus, the Petitioner contends the Domain Holder has registered and is using the disputed domain name <mustela.se> in bad faith.
B. Domain Holder
The Domain Holder did not reply to the Petitioner's contentions.
7. Discussion and Findings
A. Based on the record, the Arbitrator finds that the domain name <mustela.se> is identical to the trademark MUSTELA (see Section 7.2.1 of the .se Policy), which is legally binding in Sweden and to which the Petitioner can prove its rights.
B. Based on the record, the Arbitrator finds that the domain name <mustela.se> has been both registered and used in bad faith (see Section 7.2.2 of the .se Policy).
C. Based on the record, the Arbitrator finds that the Domain Holder has no rights or justified interests in the domain name (see Section 7.2.3 of the .se Policy).
For the foregoing reasons, in accordance with Section 21 of the .se Rules and Section 7.2 of the .se Policy, the Arbitrator orders that the disputed domain name <mustela.se> be transferred to the Petitioner.
Date: September 15, 2017