WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0046
The Petitioner is Optoma Corporation of China, represented by Optoma Europe Limited, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. Domain Holder
The Domain Holder is Visneto AB of Sweden1.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <optoma.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 August 2, 2018. The Domain Holder submitted a request for extension of the date to submit a response and the Center subsequently granted a seven-day extension of the response due date. The Domain Holder submitted a response on September 6, 2018.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on September 20, 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 proprietor of three European Union (EU) trademark registrations for OPTOMA as word and combined word and figurative marks; No. 001609973 registered on June 18, 2001, No. 005006523 registered on February 15, 2007 and No. 006542633 registered on May 11, 2008.
The Domain Name was registered on February 28, 2005, and it currently resolves to a parking page.
The Petitioner claims that the Domain Name shall be transferred to the Petitioner.
The Domain Holder has contested the claim for transfer.
6. Parties’ Contentions
The Petitioner enjoys a reputation for import and sale of electronic audio and video equipment throughout Europe. The Domain Name is identical or confusingly similar to the Petitioner’s trademarks which are registered in Sweden as EU trademarks. The Petitioner holds an exclusive license to the rights in the trademarks throughout Europe and to pursue claims against infringements. The Petitioner owns the domain name <optoma.co.uk> which was registered on December 17, 1999, and its subsidiary Optoma Technology Inc. of California, United States of America (“US”) is the owner of the domain name <optoma.com>. The Petitioner has used the mark OPTOMA in connection with sale of various goods in class 9. The registered word mark and the Domain Name are identical.
The Domain Holder has not been authorized to use the trademarks as a domain name. Directing the Domain Name to a website through which a software application is sold does not represent a bona fide offering of services or goods under the trademarks. The Domain Holder de-activated the pointing following a cease and desist letter sent by the Petitioner dated February 28, 2018. This shows that the Domain Holder understands it has no right or legitimate interest in the Domain Name.
It is not known whether the Domain Holder registered the domain name on February 28, 2005 or obtained it on June 3, 2009. However, the Domain Holder never had the Petitioner’s or the licensee’s express permission to use the trademark. The EU trademark No. 001609973 OPTOMA (fig) was registered before the Domain Name.
The Petitioner’s licensee’s global fame within Europe is evident from its online presence. The trademark is highly prominent in the industry in which the Petitioner is active (particularly in class 9). Previous arbitrators have, under the .se Policy and the .se Rules, been willing to infer bad faith on the grounds that the Domain Holder knew or must have known of the Petitioner’s rights and the business activities of its licensee at the time the Domain Name was registered.
The Domain Holder has not responded to reasonable requests regarding returning the Domain Name and cessation of use of the trademark. The Domain Holder used the Domain Name for some months before the cease and desist letter to direct the Domain Name to the Domain Holder’s current business without any legitimate interest. The purpose of this was to divert business from the Petitioner to the Domain Holder’s new enterprise. The Domain Holder does not currently use the Domain Name. It is parked with “loopia.se”. The Domain Holder has however shown a propensity to use the Domain Name. Thus, the fact that it is not currently used does not prevent a finding of bad faith.
The Domain Holder started to buy goods from the Petitioner for re-sale in Sweden via the company Projektor System Salem AB in or around October 2001. The Domain Holder was never authorised or otherwise given permission to use the trademark OPTOMA except for the sale of the Petitioner’s goods. The business relationship ended on or around August 2017 when the company Projektor System Salem AB entered into liquidation proceedings. The Domain Holder is no longer in the business of selling goods that are identical or similar to those offered by the Petitioner. At no time has the Domain Holder had any legitimate interest in or permission from the Petitioner or its licensor to utilise the trademark as a domain name.
B. Domain Holder
The Domain Holder did not register the Domain Name but has acquired it. Projektor System Salem AB was known as, or equal to, “Optoma” in Sweden during many years and invested aggressively in the sale and marketing of projectors. The Petitioner has never objected to the Domain Holder representing the Petitioner, nor did the Petitioner object to the fact that <optoma.se> was directed to <projector.se> for 5-7 years. The latter domain name was the homepage of Projektor System Salem AB. What is here said is evident from the large number of confirmations and the discussions with Optoma. The Domain Name has been parked as of 2017.
The Domain Holder has every right – and a legitimate interest – to own the Domain Name and has tended to it by building it from an insignificant brand in Sweden to being occasionally the biggest in the country. The Petitioner has never forwarded a reasonable request to buy the Domain Name. The Petitioner has of course been aware of the Domain Holder representing the Petitioner and using The Petitioner´s trademarks. This is evident from marketing documentation and work with the Petitioner’s marketing director. It should be an undisputed fact in this case that the parties have cooperated for at least 15 years.
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
The Domain Name incorporates the Petitioner’s OPTOMA trademark with the addition of the country code Top-Level Domain (“ccTLD”) “.se”. The ccTLD is not distinguishing for the purposes of establishing identical or confusing similarity. Thus, the Arbitrator finds that the Domain Name is identical or similar to the Petitioner’s EU trademarks, which are legally recognized in Sweden.
B. The Domain Name has been registered or used in bad faith
Through what has been stated and informed in the case by both parties, it is clear that a company named Projektor System Salem AB cooperated with a subsidiary of the Petitioner from the year 2001 until 2017. In 2017 the company Projektor System Salem AB went into liquidation and it has later filed for bankruptcy. The proprietor of the Domain Name is Visneto AB and the connection between this company and Projektor System Salem AB is somewhat unclear, however it is clear and not questioned that the same person, Mr. L.‑Å. T., has been involved and operated both companies and did it successfully as the Arbitrator understands it.
Documentation such as email correspondence during several years between the said person and the subsidiary of the Petitioner has been filed in the case.
The Petitioner claims that Projektor System Salem AB was owned or controlled by Visneto AB and this has not been denied or even commented by the Domain Holder.
Through the case it is established that the Domain Holder is (and was) well aware of the Petitioner and its business, as well as its trademarks. There is currently no connection between the parties. Furthermore, there was no written agreement that gave the Domain Holder a license or otherwise a right to use the Petitioner’s trademarks as a domain name. The Domain Holder admits that it is unclear what the parties have agreed on regarding the Domain Name, but the Domain Holder claims that at least there is a silent consent for the Domain Holder to own the Domain Name. The Petitioner denies that there have been any expressed or silent consents throughout the years or any other action that would constitute a right for the Domain Holder to own the Domain Name.
The facts of this case are very similar to a situation where a company has been given a license to use a specific trademark to market and sell products under the licensor’s mark. When such agreement is terminated there is no right for the former licensee to use the trademarks in question in the course of trade, nor hindering the licensor to use its intellectual property.
Even if the Domain Name is not active or in explicit commercial use, it is obvious that the Domain Holder’s parking and mere possession of the Domain Name prevents or makes it difficult for the Petitioner to register its trademark (or other right on which the petitioner bases the application) as Domain Name. Under the specific circumstances in the case, when all relevant factors are assessed, the Arbitrator finds that the Domain Holder is in bad faith. While it is not clear from the case records that the registration of the Domain Name was in bad faith, the fact that the Domain Holder, after the business relationship ended, keeps the Domain Name, is clear evidence that the Domain Name is used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The Domain Holder has not demonstrated any circumstances which would constitute rights or justified interest in the Domain Name.
The Domain Name <optoma.se> shall be transferred from the Domain Holder to the Petitioner.
The Domain Name is identical to trademarks that are legally recognized in Sweden to which the Petitioner can prove its rights.
The submitted material shows that the Petitioner and people/company closely related to the Domain Holder were parties to a reseller contract for 16 years. Following the termination of the business relationship the Domain Holder maintained the Domain Name, thus hindering the Petitioner to exercise its trademark by registering the Domain Name.
The Domain Holder has not showed any circumstances that would constitute rights or justified interest in the Domain Name.
Date: October 23, 2018
1 The Arbitrator notes that the .se Registry (IIS) confirmed that the registrant was L.-Å. T., Frontcast Media Europe AB, however, the Domain Holder confirmed that the Domain Name owner is Visneto AB.