WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2019-0024
The Petitioner is Vacasol GmbH, Germany, represented by K. S., Denmark.
2. Domain Holder
The Domain Holder is O. M., Germany.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <vacasol.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 June 27, 2019. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on July 29, 2019.
The Center appointed Jon Dal as the sole Arbitrator in this matter on August 12, 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.
The Petitioner claims that the Domain Name shall be transferred to the Petitioner.
The Domain Holder did not submit any response.
5. Parties’ Contentions
A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights
As VACASOL has been registered as an EU trademark under reg no 004996658, the Petitioner has a clear and valid right to the VACASOL brand in the EU, of which Sweden is a member state.
VACASOL is an established brand in the holiday home rental business and has been active in several countries for years. Further, VACASOL has been a registered trademark since June 2010 in Denmark and in the EU.
The Petitioner’s sister company, Sima.dk A/S, acquired the VACASOL brand along with the trademark and a number of top level domains at the end of 2016 from Your.Rentals A/S. Following conclusion of the sale the seller filed a domain transfer request on January 20, 2017 in order to transfer ownership of <vacasol.se> to Sima.dk A/S. At the end of 2018 we transferred the Vacasol-domains from one Danish provider to another. Due to a mistake <vacasol.se> was deregistered on March 27, 2019 and registered by another domain holder on April 3, 2019. We had no intention of giving up our <vacasol.se> domain; we only wanted to transfer this domain as well as the rest of our Vacasol-domains to another provider for administrative purposes.
As VACASOL has been registered as a trademark in accordance with EU rules (No. 004996658), valid until June 2020, the Petitioner has a clear and valid right to the VACASOL brand in the EU, of which Sweden is a member state.
B. The domain name has been registered or used in bad faith
The Domain Holder violates the Petitioner’s trademark rights. The Domain Holder acquired <vacasol.se> in spite of the fact that the domain contains our brand name and thus clearly is a part of the Vacasol family.
The Domain Holder went on to launch http://www.vacasol.se/ in a layout that clearly differs from the Petitioner’s layout, e.g. https://www.vacasol.de/.
The Domain Holder uses the Petitioner’s .se domain to sell shoes; as this has nothing to do with the holiday home rental business, this fact is detrimental to our branding efforts as a holiday home rental business.
C. The domain holder has no rights or justified interest in the domain name
The Domain Holder has no right to use our brand name. It is a registered trademark, which belongs to us. The Domain Holder has no justified interest to use our brand and trademark to further its own business.
The Petitioner has submitted, i.a., a copy of the EU trademark registration and a copy of the negotiations with the seller of the Vacasol-domains and VACASOL brand as evidence in support of its application.
5.2. Domain Holder
The Domain Holder did not submit any response.
6. Discussion and Findings
A domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:
A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
B. The domain name has been registered or used in bad faith, and
C. The domain holder has no rights or justified interest in the domain name.
All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.
A. The Domain Names are identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner claims it is the owner of an EU trademark registration for VACASOL, reg. no. 004996658. In support of this, the Petitioner has submitted a copy of the EU registration certificate. However, according to the registration certificate Vacasol International A/S is the owner of the trademark registration. The Petitioner or its sister company Sima.dk A/S is, thus, not the registered owner of the trademark registration according to the evidence provided by the Petitioner.
According to the Petitioner, the VACASOL brand was purchased by Sima.dk A/S from Your.Rentals A/S in December 2016. As proof of the assignment of the VACASOL brand and domain names the Petitioner has submitted a copy of the correspondence regarding the assignment between the seller and the purchaser. The correspondence refers to VACASOL trademark registrations and VACASOL brand but does not specify which trademark registrations were included in the assignment.
It is not clear from the Petitioner’s petition and the evidence provided by the Petitioner that the Petitioner or its sister company is the registered owner of the EU trademark registration for VACASOL, reg. no. 004996658.
The Petitioner also claims that VACASOL is an established brand in the holiday home rental business and has been active in several countries for years. However, the Petitioner has not provided any evidence that VACASOL is an established trademark in Sweden owned by the Petitioner or its sister company.
The Petitioner does not fulfil the first requirement and, therefore, the petition shall be rejected.
The Domain Name <vacasol.se> shall not be transferred to the Petitioner.
Date: August 22, 2019