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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2017-0019

1. Petitioner

The Petitioner is MySoda Oy ofFinland, represented by Properta Attorneys Ltd, Finland.

2. Domain Holder

The Domain Holder is Sodastream Nordics AB of Sweden, represented by Borenius Attorneys Ltd, Finland.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <mysoda.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. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on October 30, 2017. The Domain Holder submitted a response on November 29, 2017.

The Center appointed Monique Wadsted as the sole Arbitrator in this matter on January 11, 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.

The Arbitrator issued a Procedural Order on February 6, 2018, requesting the Petitioner to submit comments in relation to the response submitted by the Domain Holder, and offering the Domain Holder to respond to such submission. The Petitioner submitted its comments to the Center on February 12, 2018, and the Domain Holder subsequently submitted its comments to the Center on February 19, 2018.

4. Factual Background

The Petitioner is the owner of the European Union trademark registration No. 016236895 MYSODA (figurative), which is in force in Sweden. The application date was January 11, 2017 and it enjoys protection starting from that date. The trademark was registered on June 18, 2017.

The Domain Holder registered the Domain Name <mysoda.se> on August 11, 2016.

5. Claim

The Petitioner claims that the Domain Name <mysoda.se> shall be transferred to the Petitioner.

6. Parties' Contentions

A. Petitioner

The Petitioner claims that its European Union trademark MYSODA is identical or similar to <mysoda.se>, that the Domain Holder has registered and used <mysoda.se> in bad faith and has no right or justified interest in the Domain Name.

B. Domain Holder

The Domain Holder disputes the Petitioner's claims.

7. Discussion and Findings

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

A first condition is that the domain name must be identical or confusingly similar to a sign which is legally binding in Sweden and to which the Applicant can prove its rights.

The Petitioner filed a European Union application for MYSODA on January 11, 2017. According to applicable rules, the Petitioner received protection from that date also in Sweden. The fact that the Domain Holder registered the disputed domain name before that date has no importance for the issue at hand under this section.

The condition that a domain name must be identical or confusingly similar to a sign which is legally binding in Sweden and to which the Applicant can prove its rights is therefore satisfied.

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

When assessing whether or not a disputed domain name has been registered or used in bad faith e.g. the following may be taken into consideration.

(i) The Domain Holder's registration of the Domain Name prevents or makes it difficult for the Petitioner to register the brand (or other right on which the Petitioner bases the application) as Domain Name;

(ii) The Domain Name is being used or planned to be used to disrupt the Petitioner's operations.

Both Parties seem to agree upon the fact that they are competitors that market and sell similar products. The Petitioner claims that the Domain Holder already in 2015, thus one year before its registration of <mysoda.se>, knew that the Petitioner used MYSODA as unregistered trademark for its products. Further, the Petitioner claims that the Domain Holder used <mysoda.se> to redirect Internet users to its own site. These facts have not been disputed by the Domain Holder. The Domain Holder, thus, must have been aware of the Petitioner's unregistered trademark and business at the time it filed its application for registration of <mysoda.se>. Further, the Domain Holder has used <mysoda.se> to redirect Internet users to its own site. Therefore the Domain Holder's registration of the Domain Name prevents or makes it difficult for the Petitioner to register its trademark as Domain Name and the Domain Name has been used to disrupt the Petitioner's operations in such a manner required in order to constitute a registration and use of <mysoda.se> in bad faith.

The Arbitrator therefore finds that the Domain Holder has registered and used the <mysoda.se> in bad faith.

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

When assessing whether or not the Domain Holder has any rights or justified interest in the Domain Name the following may be taken into consideration. It is the Domain Holder that has to show that it has a right and justified interest in the Domain Name.

(i) The Domain Holder owns a registered brand (or other right) that is identical or similar to the Domain Name;

(ii) The Domain Name is being used or has been registered to be used in commercial or private operations that do not infringe on the Petitioner's rights;

(iii) The Domain Name is older than the brand (or other right) on which the Petitioner bases the Petition.

The Domain Holder claims that its trademark SODASTREAM is similar to <mysoda.se> and argues that the word "soda" is dominant in both. The Arbitrator does not share this view. The word "soda" is generic and does not itself create such similarity that is required to create a justified interest. The Domain Name <mysoda.se> has been used by the Domain Holder to redirect Internet users to its own website. The parties markets similar products. The Domain Name <mysoda.se> has therefore not been used in a way that does not infringe on the Petitioner's rights.

It is true, as the Domain Holder claims, that the trademark MYSODA was registered after the Domain Holder registered <mysoda.se>. However, the Domain Holder does not dispute that it knew about the Petitioner's use of MYSODA as unregistered trademark when it registered <mysoda.se>. Further, the Domain Holder claims that its registration and use of the domain name <mysodastream.ch> include that it has a legitimate interest. The Arbitrator does not share that view. The dominant part in <mysodastream.ch> is not "mysoda" but rather "sodastream" that is a well-known trademark. The addition of "my" does not change its perception and therefore does not create any justified interest in <mysoda.se>.

Taking all these circumstances into consideration the Arbitrator finds that the Domain Holder has not demonstrated any right or justified interest in the Domain Name.

The Domain Name <mysoda.se> shall therefore be transferred to the Petitioner.

8. Decision

The Domain Name <mysoda.se> shall be transferred to the Petitioner.

9. Summary

The Petitioner has a registered European Union trademark that is valid in Sweden and that is identical or similar to the Domain Name. The Domain Holder has registered and used the Domain Name in bad faith. The Domain Holder has not demonstrated any right or justified interest in the Domain Name. The Domain Name shall therefore be transferred to the Petitioner.

Monique Wadsted
Date: February 28, 2018

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