WIPO Domain Name Decision DSE2018-0060 for edwardgreen.se
WIPO Arbitration and Mediation Center Alternative Dispute Resolution Proceeding Case No. DSE2018-0060 1. Petitioner
The Petitioner is Edward Green & Company Limited of theUnited Kingdom of Great Britain and Northern Ireland (the “UK”), represented by SafeNames Ltd., UK. 2. Domain Holder
The Domain Holder is D. T., Kisel Stockholm AB, of Sweden. 3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to 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 November 7, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on December 10, 2018.
The Center appointed Bengt Eliasson as the sole Arbitrator in this matter on December 14, 2018. 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, Edward Green & Company Limited, is an English shoemaker based in Northampton, UK. The Petitioner filed an application for Alternative Dispute Resolution for the disputed domain name on October 29, 2018. The Domain Holder has been given an opportunity to submit a reply, but no reply has been filed by the Domain Holder within the given deadline.
The Petitioner was founded in 1890 in Northampton by a shoemaker of the same name. The Edward Green brand became known to promise of “Excellence without compromise”, specializing in high quality hand-crafted shoes. Renowned for its English Goodyear Welted footwear which affords durability due to its unique stitching technique, the company became the largest manufacturer of officer’s boots for the British Army during the 1930s.
Over a century later, the company still based in Northampton UK now has over sixty skilled artisans making around 350 pairs of shoes a week, many for export to the world’s leading boutiques and department stores, including Saks Fifth Avenue in New York, Double Monk in Melbourne and Isetan in Tokyo. The Petitioner also operates its own shops in London and Paris.
The Petitioner has based the application on the reputation of the trademark EDWARD GREEN as well as the following registrations of the same. European Union trademark registration number 005708656, covering class 25, registered on January 30, 2008, and European Union trademark registration number 011121928 covering class 18, 25, 35, registered on May 30, 2013, as well as International trademark registration number 1295147, designating the European Union, covering class 18, 25, 35 and registered on October 9, 2015.
The disputed domain name was registered by the Domain Holder on October 11, 2013 and is redirecting to the Domain Holder’s website selling products competing with the Petitioner’s products. 5. Claim
The Petitioner claims that the disputed domain name shall be transferred to the Petitioner. 6. Parties’ Contentions A. Petitioner
The Petitioner’s trademark EDWARD GREEN has been used since 1890 in respect of high quality men shoes made with superior French and Italian leather. Because of the brands high level of craftsmanship, it has established an exceptional reputation among luxury retailers and fashion experts. In addition has the Petitioner expanded its trademark portfolio across various jurisdictions globally, including the following trademark registrations in the European Union, EDWARD GREEN, registered on January 30, 2008, registration number 005708656; EDWARD GREEN, registered on May 30, 2013, registration number 0111211928; and EDWARD GREEN, International trademark registered on October 9, 2015, registration number 1295147.
The Petitioner has brought forward this application for Alternative Dispute Resolution (“ADR”) on the grounds that the disputed domain name, , is identical and confusingly similar to the Petitioner’s trademark EDWARD GREEN. As it is settled practice to ignore the second level domain extension, the “.se” part of the domain name is disregarded when making comparisons as the Top-Level Domain (“TLD”) extension is a functional requirement of the domain name system. On the basis of the above, the Petitioner requests that the domain name, , be found to be either identical or confusingly similar to the Petitioner’s trademark EDWARD GREEN.
In the instant case, the Domain Holder has been acting in bad faith based on the following reasons:
The disputed domain name was registered on October 11, 2013, by a Mr. D. T. who is the co-owner and founder of ‘Skoaktiebolaget’, a shoe store for men based in Stockholm, Sweden. Between the years 2013 and 2016, the Domain Holder was a reseller of the Petitione