WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2020-0025
The Petitioner is Jung S.A.S, France, represented by AB INITIO, France.
2. Domain Holder
The Domain Holder is Quantoras KG, E.C., of Austria.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the disputed domain name <backmarket.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 29, 2020. The Domain Holder sent an email to the Center on May 4, 2020, stating “[…] As this domain has already been sold we would like to be able to transfer it. So I would ask you to please delete the transfer lock”. The Center sent a possible settlement email on the same day, but the Domain Holder did not respond. The Domain Holder did not submit any response and, accordingly, the Center notified the Commencement of Panel Appointment on June 2, 2020.
The Center appointed Gunnar Karnell as the sole Arbitrator in this matter on June 8, 2020. 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 disputed domain name was registered for the Domain Holder on August 26, 2018.
The Petitioner, trading as BACK MARKET, is an online marketplace dedicated to refurbished electrical and electronic products all over Europe since 2014. It provides consumers with access to refurbished or reconditioned electrical and electronic goods, such as smartphones, computers and TVs by certified professionals.
The Petitioner refers, in support of its claim in this proceeding, in particular to its European Union trade mark BACK MARKET No. 1 415 150 (word) registered on January 17, 2018, classes 9, 35 and 37, also owning many nationally registered BACK MARKET (word and logo) trademarks and domain names. BACK MARKET business name and shop sign have been registered in France since August 12, 2014, and are in extensive use in many parts of the world ever since.
5. Summing-up the Petitioner’s arguments
The disputed domain name <backmarket.se> is identical to the Petitioner’s BACK MARKET law protected rights. The Domain Holder’s use of the combination BACK MARKET in its disputed domain name <backmarket.se> refers to the Petitioner’s prior rights, letting believe that the Domain Holder be related to the Petitioner’s business.
However, the website at the disputed domain name is to date inactive and there is no evidence that it has ever been associated with any goods or services. Given the repute of the Petitioner, the registration, as appears over time and in the parties’ negotiations, has been for non-use of the disputed domain name. It has primarily been acquired by the Domain Holder for selling, renting or otherwise transferring the disputed domain name to the Petitioner or its competitors “for valuable consideration in excess of the domain name holder’s out-of-pocket costs directly related to the domain name”, as negotiations between the parties have shown.
It is inconceivable that the Domain Holder would have registered the disputed domain name without knowing about the Petitioner’s rights to its BACK MARKET trademarks. The Domain Holder has purchased a number of BACK MARKET domain names with country code Top-Level Domains, such as “.fi”, “.dk”, “.pl”, etc, simultaneously with the registration of the disputed domain name. The Petitioner has been and is currently active to obtain transfer of such domain names. Attempts by the Petitioner to bring about an amicable business solution of transfer from the Domain Holder of those “en bloque” have been without result.
The registration of the disputed domain name demonstrates “a malicious intent” of the Domain Holder, reflecting bad faith.
There is no evidence of any the Domain Holder’s justifying interest in use or making preparations to use the disputed domain name, or any name corresponding to the disputed domain name, in connection with a
bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain.
The Petitioner claims that the disputed domain name <backmarket.se> shall be transferred to the Petitioner.
7. Brief findings of the Arbitrator
The Petitioner has proven that it holds such entitlement as defined in Section 7.2.1 of the .se Policy which is identical or similar to the disputed domain name <backmarket.se>.
The Petitioner has proven that the disputed domain name was registered or used by the Domain Holder in bad faith.
Circumstances in support of a right or justified interest to the disputed domain name for the Domain Holder have not been demonstrated.
The disputed domain name <backmarket.se> shall be transferred to the Petitioner Jung S.A.S.
The Petitioner’s trademark BACK MARKET is identical to the disputed domain name. The Respondent has not supported a legitimate right or justified interest in the email communication. The Arbitrator finds that the use of the inactive page connected to the disputed domain name constitutes bad faith.
Date: June 17, 2020