WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0021
The Petitioner is The North Face Apparel Corp. of the United States of America, represented by SILKA Law AB, Sweden.
2. Domain Holder
The Domain Holder is S.W. of Germany.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <thenorthfacesverige.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 April 25, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on May 28, 2018.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on June 7, 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 the European Union (EU) trademark No. 003731502 THE NORTH FACE, registered on June 22, 2005, for services in international classes 35, 37 and 41.
The Domain Holder is the holder of the domain name <thenorthfacesverige.se> (the “Domain Name”), registered on November 13, 2017.
The Petitioner has requested that the Domain Name <thenorthfacesverige.se> shall be transferred to the Petitioner.
The Domain Holder has been invited to respond to the Petition, but has failed to comply with the deadline for the submission of Response.
The Petitioner has requested that the case shall be administered as an Accelerated Proceeding if the Domain Holder does not respond to the Petition.
6. Petitioner’s Contentions
In support of its claim the Petitioner has relied on the grounds: (i) that the Domain Name is highly similar to the Petitioner’s THE NORTH FACE trademark; (ii) that the Domain Name has been registered in bad faith; and (iii) that the Domain Holder has no rights to or justified interest in the Domain Name. The Petitioner has stated that the trademark THE NORTH FACE is well-known in Sweden. The Petitioner has stated that the website at the Domain Name directly competes with the Petitioner’s authorized dealers and its official website. The Petitioner has further stated that at least one reported case of a potential customer has been identified who bought products from the website at the Domain Name and did not receive the products (Annex 9 of the Petition). Additionally, the Petitioner stated that the Domain Holder is using the Petitioner’s copyright protected images without authorization.
7. Discussion and Findings
A. The Domain Name is highly similar to the trademark THE NORTH FACE which is legally binding in Sweden and to which the Petitioner can prove its rights.
B. Based on the record, the Domain Name has been registered or used in bad faith.
C. Based on the record, the Domain Holder has no rights or justified interest in the Domain Name.
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 Domain Name <thenorthfacesverige.se> be transferred to the Petitioner.
Date: June 18, 2018