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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2019-0047

1. Petitioner

The Petitioner is Edward Green & Company Limited ofUnited Kingdom, represented by SafeNames Ltd., United Kingdom.

2. Domain Holder

The Domain Holder is P.I., of Bulgaria.

3. Disputed Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the disputed domain name <edward-green.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 November 28, 2019. The Domain Holder submitted a response on December 6, 2019.

The Center appointed Per Carlson as the sole Arbitrator in this matter on December 19, 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.

4. Factual Background

The Petitioner is an English shoemaker based in Northampton, United Kingdom. The Petitioner is the holder of trade marks consisting of the name EDWARD GREEN, inter alia the European Union Trade mark (“EUTM”) registered on January 30, 2008, under the registration no. 005708656, covering footwear and belts in class 25.

The Domain Holder is the holder of the disputed domain name <edward-green.se>, registered on August 25, 2019.

5. Claims

The Petitioner has requested that the disputed domain name <edward-green.se> be transferred to the Petitioner.

The Domain Holder has contested the request.

6. Parties’ Contentions

A. Petitioner

In support of its claim the Petitioner has relied on the grounds, that the disputed domain name <edward-green.se>, is identical or similar to the Petitioner’s registered trade marks consisting of the name EDWARD GREEN, that the domain name has been registered or used in bad faith and that the Domain Holder has no rights or justified interest in the domain name.

The Petitioner has stated, inter alia, the following allegations.

The EDWARD GREEN trade mark has been used since 1890 in respect of high-quality men’s shoes made with superior French and Italian leather. Because of the brands high level of craftsmanship, it has established an exceptional reputation among luxury retailers and fashion experts.

At present, the disputed domain name resolves to a webpage, defined as a Pay-Per-Click (“PPC”) landing page. The PPC webpage displays links for men and women shoes which compete with the Petitioner’s goods.

The website does not represent a bona fide offering whereas such links compete with or capitalise on the reputation and goodwill of the Petitioner’s mark or otherwise mislead Internet users.

The Domain Holder’s use of a domain name that incorporates the Petitioner’s trade mark also has the potential to cause confusion for consumers who may either believe that the domain will take them to the official site of the Petitioner, or that the Domain Holder is affiliated or authorised to sell the Petitioner’s goods.

Even if the visitor realizes that the site is not connected with the Petitioner, the visitor has already been deceived.

By registering and using the disputed domain name, the Domain Holder has unfairly capitalized on the goodwill and fame of the Petitioner’s marks and is attempting to improperly benefit financially in violation of the .se Policy.

This is further exacerbated by the Domain Holder’s attempt to sell the disputed domain name for sums which exceed the registration and renewal fees.

B. Domain Holder

The Domain Holder has, as his reply must be understood, disputed that the domain name
<edward-green.se> is identical or similar to the Petitioner’s trade marks, that the domain name has been registered or used in bad faith, as well as that the Domain Holder has no rights to nor justified interest in the domain name.

The Domain Holder has not in any detail responded to the allegations put forward by the Petitioner.

7. Discussion and Findings

In accordance with article 7.2 of the .se Policy, a domain name may be transferred to the party requesting dispute resolution proceedings, if the following three conditions are fulfilled:

1. the domain name is identical or similar to a distinguishing product feature, inter alia a trade mark, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights,
2. the domain name has been registered or used in bad faith; and
3. the domain holder has no rights or justified interest in the domain name.

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

The Petitioner is the holder of trade marks, legally binding in Sweden, consisting of the name EDWARD GREEN, inter alia the EUTM with the registration no. 005708656. The disputed domain name
<edward-green.se> is all but identical with the Petitioner’s said EUTM EDWARD GREEN.

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

It is clear from the evidence that the Domain Holder has used the disputed domain name in connection with a website, not offering anything but links to some of the Petitioner’s competitors on the shoe market. Moreover it is established, that the Domain Holder, on the website, has put up the domain name for sale, requesting a minimum offer of EUR 200.

Thus, the Domain Holder must have been aware of the fact, that the Petitioner used EDWARD GREEN as a trade mark at the point of time of the registration of the domain name. By his registration of the domain name, the Domain Holder has made it difficult for the Petitioner to register its trade mark as a domain name. And the Domain Holder has obviously registered the domain name with a view to sell it, apparently to the Petitioner.

The domain name must for these reasons be considered to have been registered and used in bad faith in the meaning of the .se Policy.

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

The Domain Holder has not stated any fact that would constitute a right to or a justified interest in the domain name.

8. Decision

On the basis of the foregoing, the disputed domain name <edward-green.se> shall be transferred to the Petitioner.

9. Summary

The disputed domain name <edward-green.se> is identical to the trade mark EDWARD GREEN. The disputed domain name has been registered and used in bad faith in the meaning of the .se Policy. And the Domain Holder has not stated any fact that would constitute a right or a justified interest in the disputed domain name.

Per Carlson
Date: January 7, 2020

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