WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2020-0036
The Petitioner is Experian Technology Limited,United Kingdom, represented by Michael Best & Friedrich, LLP, United States of America.
2. Domain Holder
The Domain Holder is F.G., of Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <experian.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 July 2, 2020. The Domain Holder submitted a response on July 2, 2020.
The Center appointed Petter Rindforth as the sole Arbitrator in this matter on July 7, 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 Petitioner is an information services company, based in the United Kingdom, and the owner of the following European Union trade marks (EUTM’s):
No. 000543785 EXPERIAN (word), filed on May 27, 1997, and registered on October 20, 1999, for goods and services in classes 9, 16, 35, 36, 38, 41, 42;
No. 005097481 EXPERIAN (word), filed on May 25, 2006, and registered on January 16, 2008, for goods and services in classes 9, 16, 18, 25, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;
No. 006187901 EXPERIAN (fig.) filed on August 10, 2007, and registered on May 20, 2009, for goods and services in classes 9, 16, 18, 25, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;
No. 015535461 EXPERIAN (fig.) filed on June 14, 2016, and registered on November 10, 2016, for goods and services in classes 9, 35, 36, 37, 42, 45; and
No. 015974868 EXPERIAN (word) filed on October 26, 2016, and registered on February 9, 2017, for services in class 35 and 36.
The disputed domain name <experian.se> was registered on May 8, 2019, in the name of the Domain Holder. The disputed domain name resolves to a Wordpress outdoor activity page.
The Domain Holder is a web developer.
The Petitioner claims that the domain name <experian.se> shall be transferred to the Petitioner.
The Domain Holder denies the Petitioner’s claims.
6. Parties’ Contentions
The Petitioner is part of the leading global information services company Experian. In the United Kingdom, Experian is a constituent of the FTSE 100 index. With more than 17,000 people across 44 counties, Experian works with millions of people, and thousands of organizations around the world, from global businesses to local charities. Under the EXPERIAN trademark, the Petitioner gathers, analyzes and processes data to help businesses and people with a wide array of services, including analyzing and processing data that helps Petitioner to manage credit risk, prevent fraud check credit reports and credit scores, and protect against identity theft, among other services.
The disputed domain name is identical to trademark registrations for the EXPERIAN trademarks, owned by the Petitioner, which are recognized in Sweden, namely EUTM No 00543785, 005097481, 006187901, 015535461, 015974868, and 016152142. The Petitioner has used the EXPERIAN trademarks continuously since at least as early as 1996, which is before the disputed domain name <experian.se> was created on May 8, 2019.
The Domain Holder registered the disputed domain name in bad faith. The registration prevents or makes it difficult for the Petitioner to register the trademark as a domain name. Moreover, the Domain Holder has registered the disputed domain name with a view to a sale to the Petitioner.
The Domain Holder has no right or justified interest in <experian.se>. The Petitioner did not authorize, license, or permit the Domain Holder to register or use the disputed domain name or the EXPERIAN trademarks. Additionally, there is no evidence that Domain Holder is commonly known as or identified by “Experian”, nor any evidence showing that the Domain Holder operates a business or any other organization under the disputed domain name. This further supports the fact that Domain Holder has no right or justified interest in the Domain Name.
As EXPERIAN is an invented word, created specifically to be used as a trademark by the Petitioner and the Experian group of companies, it is inconceivable that the Domain Holder was unaware of Petitioner and its rights in EXPERIAN when Domain Holder registered the disputed domain name.
As further evidence of bad faith, in response to correspondence from Petitioner’s representative, the Domain Holder did not assert any rights or justification for his interest in the Domain Name. Rather, he sought to sell it to Petitioner.
B. Domain Holder
The Domain Holder states that the Petitioner’s trademark is not well known for the Swedish general public, and the Domain Holder had never heard about the trademark EXPERIAN. There is no company registered in Sweden with “Experian” as name, and there is no trademark protection for “Experian”.
The disputed domain name has not been registered in bad faith. The Domain Holder works as web developer and runs a number of projects. One of those is to launch a website that is about outdoor life at <experian.se> which in no way interferes with or competes with the Petitioner’s business.
7. Discussion and Findings
A domain name may, in accordance with Paragraph 7.2 of the .se Policy, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1 The Domain Name is identical or similar to a trade symbol (trademark or service mark), or other name rights, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
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.
All three conditions must be met in order for a Petitioner to succeed in its action.
A. Identical or Similar
The Petitioner is the owner of a number of valid EUTMs, for example No. 000543785 EXPERIAN (word), filed on May 27, 1997, and registered on October 20, 1999.
EUTMs cover all member states of the European Union, including Sweden.
The relevant part of the disputed domain name is “experian”, as it is well established in previous ADR decisions that the country code Top-Level Domain (“ccTLD”) – being a required element of every domain name – may be irrelevant when assessing whether or nota domain name is identical or similar to a trademark.
There is no difference between the trademark EXPERIAN and the said relevant part “experian”.
The Arbitrator therefore concludes that <experian.se> is identical to the Petitioner’s trademark EXPERIAN and thus, the Petitioner has satisfied the first element of the Policy.
B. Registered or Used in Bad Faith
The Petitioner refers to the Petitioner’s EUTM. The Domain Holder is based in Sweden, one of the member states of the European Union.
The Arbitrator also notes that the Petitioner’s trademark seems to be used and well known since long within the European Union, and that EXPERIAN is a distinctive trademark for the services provided by the Petitioner with no obvious secondary meaning.
It should indeed have been easy for the Domain Holder to make a search in the Swedish Intellectual Property Office’s (PRV) free online database of registered trademarks valid in Sweden, before registering the disputed domain name.
From the arguments provided by the Petitioner, and especially based on the email correspondence with, and reply from, the Domain Holder, the Arbitrator draws the conclusion that the Domain Holder registered <experian.se> in bad faith.
As to the question of use in bad faith, such bad faith use was initiated when the Domain Holder, with obviously no other interest in the disputed domain name than selling it to the trademark owner the Petitioner, replied to the communication from the Petitioner with a request for a bid.
The Arbitrator concludes that the Domain Holder both registered and uses the disputed domain name in bad faith.
C. Rights or Justified Interest
It is indisputable that the Petitioner has not provided the Domain Holder any rights to register and/or use the trademark EXPERIAN as a domain name.
Further, the Domain Holder has not provided any evidence that the Domain holder is known as “Experian”, or has any registered name rights for “Experian”.
The only argument, to support a possible conclusion of justified interest, is the Domain Holder’s information that the registration of <experian.se> is a part of a project to launch a website that is about outdoor life. However, the Domain Holder does not provide any documentation or any kind of further evidence in support of that statement.
Here, the Arbitrator notes a copy of previous email correspondence between the Domain Holder and the Petitioner, said copy provided by the Petitioner in the Petition and thereby also communicated for comments to the Domain Holder. The said email is dated April 23, 2020, and is the Domain Holder’s response to the Petitioner’s initial letter. In the said email, the Domain Holder states that “registering someone else's trademark as a domain name does not automatically mean that it is an infringement. Whether it is an infringement or not depends on whether the domain is used commercially. If it does not, it is not an infringement. If the domain is used commercially, it may be an infringement in cases where the domain owner use the site and market the same, or similar, goods and services for which the trademark is protected. You are welcome to give me a bid on the domain. Otherwise I will continue to build on my site.”
The Domain Holder here does not refer to any specific business plans for the disputed domain name <experian.se>. Rather, the Domain Holder makes a general reference to different kind of use, as well as non-use, and ends with asking the Petitioner to reply with “a bid on the domain”.
Registration of a domain name, that is identical to someone else’s registered trademark, with the aim to sell the said domain name to the trademark owner, gives no rights or justified interest to the disputed domain name.
The Arbitrator finds that the Domain Holder has no rights or justified interest in the disputed domain name.
The disputed domain name <experian.se> shall be transferred to the Petitioner.
The Petitioner is the owner of a number of EUTMs, registered long before the disputed domain name. The disputed domain name is identical to the Petitioner’s trademark. Prior to the ADR dispute, the Domain Holder replied to a warning letter from the Petitioner, by asking the Petitioner to bid on the domain name. The Domain Holder both registered and uses the disputed domain name in bad faith. The Domain Holder has not proved any rights or justified interest.
Date: July 27, 2020