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WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2021-0038

1. Petitioner

The Petitioner is Liquid Rubber Sweden AB, Sweden, represented by Titov & Partners KB, Sweden.

2. Domain Holder

The Domain Holder is W.H., LRE Coatings BV, Netherlands,represented by Groth & Co KB, Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution (“ADR”) proceeding relates to the disputed domain name <liquidrubber.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. The Center sent an invitation to the Petitioner to amend the Petition on November 15, 2021. The Petitioner submitted an amendment to the Petition on November 23, 2021. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on November 24, 2021. The Domain Holder submitted a response on December 21, 2021.

The Center appointed Petter Rindforth as the sole Arbitrator in this matter on December 28, 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, Liquid Rubber Sweden AB, is a Swedish company, registered on January 15, 2015. The Petitioner is also the owner of a Swedish national trademark registration No 618230 LIQUID RUBBER (fig), filed on October 1, 2021, and registered on November 5, 2021, for goods and services in classes 17 and 37. The trademark registration is opposed by the Domain Holder.

The domain name <liquidrubber.se> was registered in the name of the Domain Holder on September 27, 2010. The Domain Holder is also the owner of a Swedish national trademark registration No 618880 LIQUID RUBBER (fig), filed on November 12, 2021 - with priority from the national Benelux trademark registration No 1449753, dated September 7, 2021 – and registered on December 1, 2021, for goods and services in classes 2 and 45.

5. Claim

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

The Domain Holder has contested the request.

6. Parties’ Contentions

A. Petitioner

The Petitioner, incorporated in 2015, is active in the building and construction business, including import and export of building material. The Petitioner consequently has exclusive right to the company name Liquid Rubber Sweden AB. The Petitioner is also owner of the registered trademark LIQUID RUBBER (fig), where the dominant part of the figure is the words “Liquid Rubber”.

The domain name <liquidrubber.se> is identical with the company name Liquid Rubber Sweden AB and also identical with the Petitioner’s registered trademark if the figure graphic part is not considered.

The Domain Holder is active within the same business as the Petitioner. As late as early November 2021 the disputed domain name was mainly used for marketing of competitors to the Petitioner, and this use is seriously negative for the Petitioner’s business.

The Petitioner states that the Domain Holder is aware of the Petitioner’s business, company name and trademark. The Domain Holder does not carry out business in Sweden. The disputed domain name has been used only in order to damage the Petitioner’s business, to harm the Petitioner’s reputation and to promote competitors of the Petitioner.

The risk of confusion is obvious, and the Domain Holder has obviously no justified interest in the domain name.

B. Domain Holder

The Domain Holder claims to be the rightful owner of the trademark LIQUID RUBBER (fig) and as such also the rightful owner of the domain name <liquidrubber.se>.

The Petitioner has acted in bad faith when trying to register the trademark LIQUID RUBBER (word) and LIQUID RUBBER (fig) in its own name, as well as acted in bad faith when taking over the company name Liquid Rubber Sweden AB, and further has acted in bad faith when initiating the captioned ADR.

The Domain Holder has, since 2014, an exclusive distribution agreement with Liquid Rubber Worldwide Inc. for the European region. The Domain Holder, with the trade name Liquid Rubber Europe, is currently supplying to customers (direct sales) in The Netherlands, Belgium, Germany and France. In the United Kingdom, Ireland and Scandinavia, the Domain Holder supplies to a Main Distributor in each region, with exclusive rights to sell Liquid Rubber products (supplied by the Domain Holder) in their respective region.

In 2014, the Domain Holder entered into a distribution agreement with a Finnish based company, Ruiskukumi, said company with the ambition to become Main Distributor for Sweden, Norway and Denmark as well as in Finland. In 2015, Ruiskukumi started to collaborate with a person D.S. in Sweden, and for the purpose to take on the distribution of the Liquid Rubber products in Sweden, the company Liquid Rubber Sweden AB was registered, including the right to use the trademark LIQUID RUBBER.

In 2019, Ruiskukumi ended the collaboration with D.S. / Liquid Rubber Sweden AB, and entered an agreement with another distributor.

Although no longer a distributor of Liquid Rubber products, D.S. kept the company Liquid Rubber Sweden AB registered, and sold it to the Petitioner at the end of 2020.

The Petitioner uses, without authorization from the Domain Holder, the trademark LIQUID RUBBER for marketing its own services under another domain name <liquidrubbersweden.se>. However, the Petitioner does not offer original LIQUID RUBBER products via this domain name, as the Petitioner is not an authorized distributor of the LIQUID RUBBER products. Further, since the current owner of the Petitioner took over the company, there has been no business activity.

The Petitioner holds no rights in the name LIQUID RUBBER. The trademark registration has been opposed based on (i) prior right and (ii) bad faith. The Petitioner has acquired the company name Liquid Rubber Sweden AB in bad faith, as the new owner and sole board member knew that the trademark LIQUID RUBBER belongs to the Domain Holder.

The Domain Holder holds a legitimate interest in the disputed domain name <liquidrubber.se> being the European representative for the original provider of the products and trademark LIQUID RUBBER.

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 has stated and proved to be the registered owner of the Swedish company named Liquid Rubber Sweden AB.

The relevant part of the disputed domain name is “liquidrubber”, as it is well established in previous ADR decisions that the country code Top-Level Domain (“ccTLD”) “.se” – being a technical required element of every domain name – may be irrelevant when assessing whether or not a domain name is identical or similar to a trademark or other name rights.

Furthermore, the fact must be taken into account that a prior right consisting of two or more independent words for purely technical reasons such as domain names must be written together with hyphens or as one word.

The Arbitrator therefore concludes that the disputed domain name <liquidrubber.se> is similar to the Petitioner’s company name Liquid Rubber Sweden AB.

The Petitioner has also referred to a national Swedish trademark registration No 618230 LIQUID RUBBER (fig). The Arbitrator however notes that this registration is not in legal force, as it has been opposed by the Domain Holder. Therefore, this trademark will not be considered as a prior right.

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

The disputed domain name was registered on September 27, 2010, i.e. more than four years before the registration of the company name Liquid Rubber Sweden AB.

The Arbitrator therefore concludes that <liquidrubber.se> was not registered in bad faith.

Regarding the use, the Petitioner argues that the disputed domain name is mainly used for marketing of competitors to the Petitioner, to harm the Petitioner’s reputation and to promote competitors of the Petitioner.

However, from the documentation provided by the Domain Holder, the disputed domain name is being used to sell the Liquid Rubber products and services stating “Liquid Rubber provides a durable quality for waterproofing, air barriers and surface protection”, it is rather clear that the Domain Holder has the right to use and register LIQUID RUBBER in Europe, including Sweden.

Furthermore, the Petitioner’s company name was originally registered based on a business agreement between the Domain Holder’s Scandinavian distributor and a Swedish physical person D.S., as part of activities to market and sell the Domain Holder’s goods and services in Sweden.

It is also noted that, although none of the Parties’ Swedish national trademarks are in legal force (one being opposed and the other in the formal opposition period), the Domain Holder’s Swedish trademark with registration No. 618880 has a priority as it pre-dates the filing date of the Petitioner’s Swedish trademark registration No. 618230.

As the Domain Holder has the right to the LIQUID RUBBER trademark, alone or side-by-side with the Petitioner, the use of <liquidrubber.se> cannot be seen as use in bad faith.

Based on the evidence, this dispute does not look like a cybersquatting issue, but more like a possible trademark infringement or unfair competition case. To the extent that the Petitioner may have a claim against the Domain Name Holder for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of this ADR proceeding which is limited to considering whether the disputed domain name has been registered or used in bad faith.

In the Arbitrator’s view, the Petitioner has failed to prove that the Domain Name Holder has either registered or used the disputed domain name in bad faith.

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

As the Domain Holder has, since 2014, an exclusive distribution agreement with Liquid Rubber Worldwide Inc. for the European region, an agreement covering Sweden, and was in force before the initial registration of the Swedish company name Liquid Rubber Sweden AB, the Arbitrator concludes that the Domain Holder has at least a justified interest in the disputed domain name <liquidrubber.se>.

8. Decision

On the basis of the foregoing, the Petitioner’s request for transfer of the disputed domain name <liquidrubber.se> is denied.

9. Summary

The disputed domain name is confusingly similar to the Petitioner’s Swedish company name. The disputed domain name was registered before the Petitioner’s company name. The Domain Holder accepted the previous owner of the Petitioner to register a Swedish company in order to sell the Domain Holder’s goods and services, as part of the distribution agreement. The current owner of the Petitioner has no contract with the Domain Holder, and the Domain Holder is using the disputed domain name to market their original goods.

Petter Rindforth
Date: January 10, 2022

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