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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2020-0029

1. Petitioner

The Petitioner is Smarkets Limited, United Kingdom, represented internally.

2. Domain Holder

The Domain Holder is Bioventus KB, Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <smarkets.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 3, 2020. The Domain Holder submitted a response on July 3, 2020.

The Center appointed Per Carlson as the sole Arbitrator in this matter on July 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

Smarkets Limited (the Petitioner) is the holder of the European Union Trade Mark SMARKETS (registration No. 009848706) registered on July 18, 2012 for, among other things, Computer software; Electronic publications in class 9 and Monetary services; Financial services; Financial exchange services in class 38. The trademark is consequently protected in Sweden.

Bioventus KB (the Domain Holder) is the holder of the disputed domain name <smarkets.se>, registered on November 13, 2017. The disputed domain name resolves to a website with Pay-Per-Click (“PPC”) links.

5. Claim

The Petitioner has requested that the disputed domain name <smarkets.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 <smarkets.se>, is identical to the Petitioner’s registered trademark SMARKETS, that the disputed domain name has been registered or used in bad faith and that the Domain Holder has no rights or justified interest in the disputed domain name.

The Petitioner has stated, principally, the following allegations.

The Petitioner is the holder of the European Union Trade Mark SMARKETS and has operated the website <smarkets.com> since 2009. The disputed domain name <smarkets.se> is identical to the Petitioner’s trademark SMARKETS. The Domain Holder’s website “www.smarkets.se” only contains sponsored links and is looking to sell the disputed domain name. The disputed domain name should therefore be considered to have been registered with a view to sell it to the Petitioner. The disputed domain name has consequently been registered in bad faith. The Domain Holder’s website “www.smarkets.se” is unused and no trademark for the Domain Holder exists. Accordingly, the Domain Holder has no rights or justified interest in the disputed domain name.

B. Domain Holder

The Domain Holder has stated that it cannot determine whether the disputed domain name is identical or similar to any right legally recognized in Sweden and to which the party left it up to the Arbitrator. The Domain Holder has disputed that the disputed domain name has been registered or used in bad faith, as well as that the Domain Holder has no rights nor justified interest in the disputed domain name.

The Domain Holder has in substance submitted the following.

The Domain Holder registered the disputed domain name in 2017 having no knowledge of the Petitioner’s business in the United Kingdom. The website “www.smarkets.se” is used for PPC links, but has not been used in bad faith. The Domain holder has not heard anything at all from the Petitioner. And the Domain Holder has not made any proposal for selling the disputed domain name to the Petitioner.

The intention was to register <smartmarket.se> as a domain name to create a website for links, but the domain name was already registered. Instead an attempt was made to register the short form <smarket.se> as a domain name, but that domain name was also registered. However, the plural form of <smarket.se> was not taken and was therefore registered.

7. Discussion and Findings

In accordance with Paragraph 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 name, inter alia a trademark, 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 name which is legally recognized in Sweden and to which the Petitioner can prove its rights

The Petitioner is the holder of the European Union Trade Mark SMARKETS, legally recognized in Sweden. The disputed domain name <smarkets.se> is identical with the Petitioner’s said trademark SMARKETS.

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

There is no short form for the expression “smart market” in the English language. Even less is there a short form for the expression ”smart market” in the plural. The Petitioner’s trademark SMARKETS must therefore be considered as a quite unusual construction. In view of the originality of the trademark – used on the Internet since 2009 and registered since 2012 – it is highly unlikely that the disputed domain name <smarkets.se> has been created without the trademark SMARKETS as a model (cf. res ipsa loquitor). And the Domain Holder’s explanation of how the disputed domain name <smarkets.se> was created is not convincing. Furthermore, the Domain Holder has put the disputed domain name up for sale at the website “www.smarkets.se”.

In the context of an overall assessment the disputed domain name must 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 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 <smarkets.se> shall be transferred to the Petitioner.

9. Summary

The disputed domain name <smarkets.se> is identical to the trademark SMARKETS. 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: July 28, 2020

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