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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2021-0023

1. Petitioner

The Petitioner is Sitelock LLC, United States of America, represented by Sandart & Partners Advokatbyrå KB, Sweden.

2. Domain Holder

The Domain Holder is P.L., Guidelight Solutions AB, Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the disputed domain name <sitelock.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 15, 2021. The Domain Holder submitted a response on July 14, 2021.

The Center appointed Petter Rindforth as the sole Arbitrator in this matter on July 19, 2021. 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 a website security company and owner of the European Union trade mark (EUTM):

- No 1165835 SITELOCK (figurative), filed on July 11, 2013, and registered on May 15, 2013, for services in class 42.

The disputed domain name <sitelock.se> was registered on October 5, 2017, and is used to market and sell services related to the Complainant’s.

5. Claim

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

The Domain Holder has contested the request.

6. Parties’ Contentions

A. Petitioner

The Petitioner is, since May 15, 2013, the owner of the trademark SITELOCK, registered as a European Union trade mark No. 1165835. The trademark covers services in class 42, such as Internet security software services. The main component of the figurative trademark is the word "sitelock". The disputed domain name is therefore very similar to the Petitioner's trade mark, as well as to the Petitioner’s domain name <sitelock.com>, and there is certainly a risk that consumers leads to falsely believe that the Domain Holder and the Petitioner are affiliated.

The Petitioner was founded in 2008 and is today a global leader in website security, and operates in 47 European countries (including Sweden) under the name Sitelock.

The Petitioner has been conducting business in Sweden since 2010 and sells its services and products to Swedish companies directly, through resellers and its subsidiary Patchman B.V (a Dutch company).

The Domain Holder registered the domain name on October 5, 2017, and markets its services as “world-leading security services for webpages”. The Petitioner and the Domain Holder thus operate within the same field. In addition to the domain name, the Domain holder utilizes the exact design of the Petitioner’s trademark on its webpage and the same product names for its services. The Petitioner has no commercial ties with the Domain Holder and has not consented to the Domain Holder utilizing its trademark nor its company name.

The Domain Holder is clearly utilizing the domain name and the trademark to lead consumers to falsely believe that the two companies are affiliated to increase its own revenue, and taking unfair advantage of the Petitioner’s reputation and market position.

The Domain Holder has no registered brand or any other right that is identical or similar to the disputed domain name.

B. Domain Holder

The Domain Holder states that the disputed domain name was registered on October 5, 2017, in order to sell and market the Petitioner’s products, in collaboration with the Domain Holder in Sweden, and that this was communicated with, and approved by, the Petitioner.

The Domain Holder has since October 31, 2016, based on an agreement with the Petitioner, been a reseller of the Petitioner’s services in Sweden. Part of the Petitioner’s business concerns web-based security services where the Domain Holder is a part of that business.

The Domain Holder had a contact with the Petitioner in the beginning of 2017 to inform the Petitioner that the Domain Holder had registered the disputed domain name in order to sell the Petitioner’s products under the name of the Domain Holder in order to get a local distributor of the Petitioner’s products. Everything has happened with the Petitioner’s knowledge, and the collaboration between the Domain Holder and the Petitioner is very transparent and the Domain Holder has on several occasions expressed the Petitioner’s gratitude for the Domain Holder’s effort to market the Petitioner in Sweden. All marketing costs and distribution of the Petitioner’s services in Sweden has been done without any compensation.

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. 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 owner of a valid EUTM, namely No 1165835 SITELOCK (figurative), filed on July 11, 2013, and registered on May 15, 2013, for services in class 42.

EUTMs cover all member states of the European Union, including Sweden.

The relevant part of the disputed domain name is “sitelock”, 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 not a domain name is identical or similar to a trademark.

There is no difference between the trademark SITELOCK and the said relevant part “sitelock”.

The Arbitrator therefore concludes that <sitelock.se> is identical to the Petitioner’s trademark SITELOCK and thus, the Petitioner has satisfied the first element of the Policy.

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

The Arbitrator notes that the Petitioner and the Domain Holder have completely different views regarding bad faith registration and use.

Although the Petitioner states that selling their services on the Swedish market is made both directly, as well as by a subsidiary, as well as “through resellers”, the Petitioner seems to have no knowledge on, or agreement with, the Domain Holder.

The Domain Holder claims to have an agreement with the Petitioner since the beginning of 2017, and that the Petitioner has expressed no obstacles for the Domain Holder to register the disputed domain name.

Here, the Arbitrator further notes that:

- The Domain Holder does not provide any documentation in support of the conclusion that the Petitioner had agreed upon the Domain Holder’s registration and use of <sitelock.se>;
- The Domain Holder’s own description of the time of registration rather indicates that the disputed domain name was registered only in order to sell the Domain Holder’s services, among them some related to the Petitioner, as well as to get an agreement with the Petitioner;
- The Petitioner strongly states that there are no agreements with the Domain Holder, and argues that the Domain Holder rather registered and is using <sitelock.se> “to lead consumers to falsely believe that the two companies are affiliated”; and
- From the screenshots of the website connected to the disputed domain name, provided by the Petitioner, the Arbitrator cannot see any information stating that the Domain Holder is a reseller – the said screenshots rater show a website identifying the Domain Holder as the owner/provider of the Sitelock services.

Based on the abovementioned facts and circumstances, the Arbitrator concludes that the disputed domain name was at least registered in bad faith, namely for the only reason to get a base for a possible reseller agreement with the Petitioner.

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

As noted above, the Domain Holder claims to have a re-seller agreement with the Petitioner.

The Arbitrator therefore refers to the panel views in similar Uniform Domain Name Dispute Resolution Policy (“UDRP”) cases, where UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Referring to the so-called “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2021-0903), the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

However, applying the Oki Data test usually involves a domain name comprising a trademark plus a descriptive term.

In the present case, there are several facts and indications rather indicating that the Domain Holder lacks rights or legitimate interest in the disputed domain name. As also noted, the disputed domain name is identical with the Petitioner’s trademark so it carries a high risk of implied affiliation. Accordingly, the risk of misrepresentation leads to the conclusion that the Domain Holder lacks rights or justified interests in the disputed domain name.

8. Decision

The Domain Name <sitelock.se> shall be transferred to the Petitioner.

9. Summary

The disputed domain name is identical to the Petitioner’s registered trademark. Circumstances indicate that the disputed domain name was registered without acceptance of the Petitioner, as a preparation to get a business agreement as re-seller for the Petitioner. As the disputed domain name is identical with the Petitioner’s trademark, the Domain Holder has no rights or justified interest – without a clear acceptance from the Petitioner.

Petter Rindforth
Date: July 28, 2021

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