WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2019-0025

1. Petitioner

The Petitioner is Wellis Magyarország Kereskedelmi és Szolgáltató Zártköruen Müködo Részvénytársaság, Hungary, represented by Danubia Patent and Law Office/Klauber Law Firm, Hungary.

2. Domain Holder

The Domain Holder is M. T., Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <wellis.se> (the “Domain Name”).

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 1, 2019. The Domain Holder submitted a response on August 1, 2019.

The Center appointed Jon Dal as the sole Arbitrator in this matter on August 6, 2019. 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. Claim

The Petitioner claims that the Domain Name shall be transferred to the Petitioner.

The Domain Holder rejects the Petitioner’s petition.

5. Parties’ Contentions

5.1 Petitioner

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 a well known company located in Hungary that manufactures and distributes bathroom products, such as tubs, showers, saunas and jacuzzis, and these high quality products are available across Europe and are well known among the consumers. The Petitioner is one of the market leaders in Europe in manufacturing spas. With more than 500 sales points worldwide, 9,000 spas are produced every year.

The Petitioner is the exclusive right owner of the European Union Trademark Registration No. 013007026 WELLIS (word) with the priority date of June 18, 2014 which enjoys protection throughout the European Union regarding goods in Class 11. of the international Nice classification.

Furthermore, the Petitioner is the exclusive right owner of the European Union Trademark Registration No. 014515571 WELLIS (figurative) with the priority date of August 28, 2015 which enjoys protection throughout the European Union regarding goods in Class 11.

Due to the fact that Sweden is a member state of the European Union, both above referred EUTMs are legally recognized and valid in Sweden and the Petitioner is entitled to enforce its trademark rights arisen from the above referred EUTMs in Sweden.

The Domain Name <wellis.se> is identical to the Petitioner’s above referred exclusive trademark rights, namely to the EUTMs WELLIS, since the addition of the country code Top-Level Domain (“ccTLD”) <.se> is not sufficient to distinguish the Domain Name <wellis.se> from the EUTMs WELLIS.

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

The Domain Name <wellis.se> has been registered and used in bad faith by the Domain Holder, since the Petitioner has not authorized the Domain Holder to register in its own name a domain name containing the Petitioner’s trademark WELLIS.

Although there used to be a prior business relationship between the Petitioner and the Domain Holder, the Domain Holder was not authorized to register in its own name any trademark identical or confusingly similar to the Petitioner’s trademarks WELLIS and additionally this business relationship has been terminated.

In 2018 it came to the Petitioner’s attention that the Domain Holder infringes the trademark rights of the Petitioner by using the Petitioner’s trademark WELLIS without authorization by registering the Domain Name <wellis.se> being identical to the Petitioner’s above referred trademarks.

The Petitioner sent a cease and desist letter to the Domain Holder through the Registrar of the Domain Holder calling them to immediately cease the infringing use of the Petitioner’s trademarks WELLIS by ceasing the unauthorized use of the trademark WELLIS in the Domain Name <wellis.se> and by refraining from any future infringing activity.

Upon the receipt of the cease and desist letter, the Domain Holder sent a short email response to the representative of the Petitioner informing them that the Domain Holder was ready to sell the Domain Name <wellis.se> for EUR 40,000 to the Petitioner.

Taking into account the Domain Holder’s response, it can be clearly established that the Domain Name has been registered with the intention to sell it to the Petitioner. This legal standpoint is supported by the circumstance that it seems that since its registration, there was no content on the website available under the Domain Name <wellis.se>.

Furthermore, according to our legal standpoint, the Domain Holder’s registration of the Domain Name prevents the Petitioner to register the WELLIS brand and trademark as its own domain name, since the Domain Name is already registered by the Domain Holder.

The above detailed circumstances all support the Petitioner’s legal standpoint that the Domain Name <wellis.se> has been registered and used in bad faith.

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

According to our legal standpoint, the Domain Holder has no rights or justified interests in the Domain Name, since the Domain Holder was not authorized by the Petitioner, as the exclusive right owner of the trademarks WELLIS to either register or use a domain name identical or confusingly similar to the Petitioner’s trademarks WELLIS.

Further, as indicated above, there has been no content on the website available under the Domain Name <wellis.se> since its registration till the present day, which also means that the Domain Holder does not have any justified intention in using and any justified interest in keeping the Domain Name

<wellis.se>.

Furthermore, according to the website of the Domain Holder, namely “www.poolteam.se”, the Domain Holder is active in the same market as the Petitioner (i.e. the field of spa- and bathroom products), and the Domain Holder distributes – among others – Spas under different brand than the Petitioner’s products, which means that the Domain Holder is a direct competitor of the Petitioner.

Since the Domain Holder is a direct competitor of the Petitioner (both companies active in the field of spas, pools and other bathroom products) and the Domain Holder owns the Domain Name <wellis.se> identical to the Petitioner’s trademarks WELLIS, the Domain Holder cannot claim any justified interest in registering and using the Domain Name.

D. Evidence

In support of its case the Petitioner refers, i.a., to the following evidence: copy of EU trademark registration, cease and desist letter, Domain Holder’s offer to sell the Domain Name, screen shots from the Wayback Machine.

5.2 Domain Holder

The Domain Holder disputes all claims that the Petitioner has regarding the Domain Name <wellis.se>:

The Domain Name has been registered by the company IC Distribution Sweden AB in connection with working with the Petitioner’s spabath products in 2013, and we had an agreement to use their rights. In 2015 the Petitioner breached the agreement by offering other retailers to sell the Petitioner’s products, despite that we had a valid agreement. After this dispute we chose not to cooperate with the Petitioner.

We offered the Petitioner to purchase the Domain Name for EUR 40,000, which partly covers the Domain Name and partly the damage the Petitioner caused by breaching the agreement.

My company, Toth Invest Solutions AB, offers music production services under the secondary company name “Wellis Music Production”. Registration of the secondary company name has been filed with the Swedish Companies Registration Office and are awaiting approval. The company has taken over the Domain Name <wellis.se> and it will be launched in October 2019.

The Domain Name therefore fulfils the condition that:

- The secondary company name contains “Wellis” in “Wellis Music Production”

- We have an interest in the Domain Name

- The Domain Name will be activated and used by the company

- The Domain Name <wellis.se> is not infringing the Petitioner’s trademark rights within the spabath business, since its trademark rights does not cover music production.

In support of its case the Domain Holder has submitted an extract from the Swedish Companies Registration Office in respect of the secondary business name Wellis Music Production.

6. Discussion and Findings

A domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:

A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
B. The domain name has been registered or used in bad faith, and
C. The domain holder has no rights or justified interest in the domain name.

All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of 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 owner of the EU trademark registration for WELLIS (word), reg. no. 013007026. The Domain Name is similar to the Petitioner’s trademark.

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

The Domain Holder has been a reseller of the Petitioner’s products and is well aware of the Petitioner and its trademark WELLIS.

On April 5, 2019 the Petitioner sent a cease and desist letter to the Domain Holder, informing about the Petitioner’s trademark rights and requesting the Domain Holder to transfer the Domain Name to the Petitioner. The Domain Holder responded to the cease and desist letter on April 30, 2019 offering to sell the Domain Name for 40,000 EUR to the Petitioner.

In April 2019, when the cease and desist letter was sent and the Domain Holder offered to sell the Domain Name to the Petitioner, the Domain Holder did not use the Domain Name for any business purpose. The Domain Name was parked with Loopia.

After receiving the cease and desist letter, the Domain Holder registered the secondary company name “Wellis Music Production” for music production.

Considering the Domain Holder’s knowledge of the Petitioner and its trademark WELLIS, the contract dispute between the parties, the cease and desist letter sent in April 2019 and the Domain Holder’s offer to sell the Domain Name for EUR 40,000 to the Petitioner in April 2019, the Domain Holder’s later registration of the secondary company name “Wellis Music Production” for music production does not appear to be a serious attempt to start a business in music production under the “Wellis Music Production” brand. It is more likely that the Domain Holder registered “Wellis Music Production” in order to try to avoid a transfer of the Domain Name to the Petitioner.

Based on the above, the Arbitrator comes to the conclusion that the Domain Holder uses the Domain Name in bad faith - for selling it to the Petitioner and/or to prevent the Petitioner from registering its trademark as a domain name.

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

The Domain Holder uses the Domain Name in bad faith. The registration of the secondary company name “Wellis Music Production” for music production does not appear to be a serious attempt to start a music production business under the “Wellis Music Production” brand. Instead, it is more likely that the Domain Holder registered “Wellis Music Production” in order to try to avoid a transfer of the Domain Name to the Petitioner.

Under these circumstances the Domain Holder does not have a right or justified interest in the Domain Name.

7. Decision

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

8. Summary

The Domain Name is similar to a trademark recognized in Sweden and owned by the Petitioner. The Domain Holder uses the Domain Name in bad faith and does not have a right or justified interest in the Domain Name.

Jon Dal
Date: August 26, 2019