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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2019-0023

1. Petitioner

The Petitioner is Obschestvo s Ogranichennoy Otvetstvennostyu "Dilab Development", Russian Federation.

2. Domain Holder

The Domain Holder is N Partner AB, Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the Domain Name <isofon.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 June 21, 2019. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on July 23, 2019.

The Center appointed Monique Wadsted as the sole Arbitrator in this matter on July 30, 2019. 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.

On August 12, 2019, the Arbitrator requested additional evidence from the Petitioner, in accordance with paragraph 18 of the .se Rules. On August 12, 2019, the Domain Holder sent an email communication to the Center, stating that it was not using the Domain Name and had no problem in transferring it against a fee. The Center sent an email communication to the Parties regarding a possible settlement, but no settlement was reached by the Parties. On September 6, 2019, the Domain Holder replied to the evidence request made by the Panel by sending evidence of the Russian Federation trademark ISOFON, Registration
No. 357645, registered in 2007.

4. Factual Background

The Petitioner is a company active within the ceiling industry with head office in the Russian Federation. The Petitioner has been operating its business since 2007. The Petitioner is the registered holder of the figurative trademark ISOFON, which was registered by the WIPO on June 7, 2016. The international trademark application designates inter alia Sweden. The trademark ISOFON was granted protection by the Swedish Intellectual Property Office on August 18, 2017 with registration number 1315960 and registration date June 7, 2016. The trademark is registered in class 19.

An application for Alternative Dispute Resolution for the Domain Name <isofon.se> was filed by the Petitioner on June 18, 2019.

The Domain Name <isofon.se> was registered on October 8, 2015 and is currently not in active use. The registered owner of the Domain Name is the Domain Holder.

5. Claim

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

6. Parties’ Contentions

A. Petitioner

The Petitioner is the owner of the trademark ISOFON, which was registered on June 7, 2016. The trademark designates inter alia Sweden and was granted protection by the Swedish Patent and Registration Office on August 18, 2017. The trademark ISOFON is commonly used in the suspended ceiling industry, and the Petitioner has been running the company “Isofon”, with head office in the Russian Federation, since 2007.

The Domain Holder has not been granted any right at any point in time to use the trademark ISOFON. The Domain Name <isofon.se> has been registered in bad faith since the purpose of the registration is to hinder the use of the trademark ISOFON, or to attempt to sell it to the Petitioner. The Domain Holder does not use the word “isofon” anywhere on its website at “www.npartners.se”, and the website at “www.isofon.se” only displays a placeholder page. According to the website “www.archive.org”, the domain name <isofon.se> has not been in active use.

B. Domain Holder

The Domain Holder has not formally replied to the Petition.

7. Discussion and Findings

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

The Petitioner is the registered owner of the figurative trademark ISOFON, with registration number 1315960, which was registered on June 7, 2016 and was granted protection in Sweden on August 18, 2017 with registration date June 7, 2016. The trademark includes the term “isofon” both in Latin and Cyrillic characters and it does not include any other words or stylized elements. The Arbitrator finds that there are both aural and visual similarities between the trademark and the Domain Name since the word ISOFON is the only element included in the trademark, albeit both in Latin and Cyrillic characters. Therefore the condition of Section 7.2 p.1 of the .se Policy is fulfilled.

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

The Domain Name <isofon.se> was registered prior to the Petitioner’s International trademark ISOFON, whereas the Domain Holder cannot have had knowledge of the Petitioner’s International registered trademark at the time of registration of the Domain Name. While the Petitioner has provided evidence of a Russian Federation trademark registration registered in 2007, the Petitioner has not provided any evidence showing that the Domain Holder at the time of registration or afterwards had any knowledge of the existence of the Petitioner’s use of ISOFON as a trademark, such as correspondence between the parties or any offer from the Domain Holder to sell the Domain Name to the Petitioner. Also, the Domain Name is currently not in use by the Domain Holder. The Arbitrator therefore concludes that the Domain Name was not registered nor has been used in bad faith and the condition of Section 7.2 p.2 of the .se Policy is not fulfilled.

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

As the condition of bad faith is not fulfilled (Section 7.2 p.2 of the .se Policy), the Arbitrator finds that there is no reason to assess whether the Domain Holder has any right or justified interest in the Domain Name.

8. Decision

The Domain Name shall not be transferred to the Petitioner.

9. Summary

The Domain Name is similar to the Petitioner’s International trademark ISOFON. As the Domain Name was registered before the registration of the International trademark occurred, and the Petitioner has not provided any evidence showing that the Domain Holder knew about the Petitioner’s use of ISOFON as a trademark, it is not shown that the Domain Name was registered or used in bad faith.

Monique Wadsted
Sole Panelist
Date: September 23, 2019

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