The Petitioner is Bayer Consumer Care AGof Switzerland, represented by BPM Legal, Germany. 2. Domain Holder
The Domain Holder is Alpha Domains, Alpha Domains Ltd, of United Kingdom of Great Britain and Northern Ireland. 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 March 19, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on April 20, 2018.
The Center appointed Johan Sjöbeck as the sole Arbitrator in this matter on May 9, 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 has demonstrated that it is the owner of the trademark BEROCCA in a large number of jurisdictions, including Sweden. For example, the Petitioner is the owner of the Swedish trademark BEROCCA with registration number 128096 and registration date July 25, 1969, in class 5.
The Domain Holder registered the disputed domain name on January 21, 2016. 5. Claim
The Petitioner requests that the disputed domain name shall be transferred from the Domain Holder to the Petitioner. 6. Parties' Contentions A. Petitioner
The Petitioner is part of the Bayer group of companies. Bayer AG is a global enterprise with core competencies in the fields of healthcare, nutrition and plant protection. It is represented by over 300 affiliates and has more than 115,000 employees worldwide. Bayer AG, itself or through subgroups like HealthCare and CropScience, does business on all five continents, manufacturing and selling numerous of products, inter alia human pharmaceutical and medical care products, veterinary products, diagnostic products and agricultural chemicals. The Bayer Consumer Care AG division was established in 1994 and belongs to the Bayer HealthCare subgroup. It operates in more than 100 countries with a portfolio of more than 170 consumer health care products.
BEROCCA, one of the Petitioner's most known brands of effervescent drinks, is a vitamin boost exclusively manufactured by the Petitioner after the global acquisition of the original manufacturer Roche Consumer Health in January 2005. The Petitioner owns the rights to BEROCCA in numerous countries worldwide, including Sweden. The BEROCCA trademark is highly distinctive and, at least in Europe, solely connected with the Petitioner.
The disputed domain name was registered by the Domain Holder on January 21, 2016, and is used to display information relating to the Petitioner's product. The Domain Holder has previously been involved in at least one prior ADR proceeding which resulted in a transfer of a domain name.
The disputed domain name is confusingly similar to the Petitioner's BEROCCA trademark. The country code Top-Level Domain (ccTLD) ".se" is generally not an element of distinctiveness that shall be taken into consideration when evaluating the identity or confusing similarity between a trademark and a domain name. Furthermore, the additional word "boost" is not considered a factor for eliminating the similarity between the disputed domain name and the trademark since it is merely descriptive and could also be considered a product feature of the Petitioner's products sold under the BEROCCA trademark. In fact, the Petitioner itself offers a product under its BEROCCA trademark called BEROCCA® BOOST. Therefore, the addition of the generic word "boost" to the BEROCCA trademark strengthens the likelihood of confusion as the disputed domain name directly refers to one of the Petitioner's products.
The BEROCCA trademark is an inherently distinctive word that has a high degree of individuality and no common colloquial use. In addition, the Petitioner's product BEROCCA has considerable reputation. The BEROCCA trademark and the product name BEROCCA® BOOST are solely connected with the Petitioner's products and therefore not words any third party would legitimately choose unless seeking to create an impression of an association with the Petitioner. In addition, the website, to which the disputed domain name resolves, refers to the Petitioner's products. Therefore, it is inconceivable that the Domain Holder registered the disputed domain name independently of the Petitioner's BEROCCA trademark. In absence of any other explanation, it must be assumed that the disputed domain name was registered with the BEROCCA trademark in mind, as the term has no linguistic meaning.
It is obvious that the Domain Holder had at least constructive knowledge of the Petitioner's BEROCCA trademark already when registering the disputed domain name as the trademark was registered and valid in Sweden before the disputed domain name was registered. The BEROCCA trademark predates the registration of the disputed domain name by nearly 50 years. The Domain Holder's knowledge is further supported by the fact that the Domain Holder has previously been involved in a domain name dispute. See Laboratoires Expanscience S.A. v. Alpha Domains Ltd,WIPO Case No. DSE2017-0005.
In addition, the Domain Holder's registration of the disputed domain name prevents the Petitioner from being able to advertise its product BEROCCA® BOOST using a domain name in the Swedish TLD.
The Petitioner is not aware on any third-party rights in the trademark BEROCCA in Europe and has no association with the Domain Holder, let alone authorized or licensed it to use the trademark. There is no evidence that the Domain Holder is commonly known by the disputed domain name.
Finally, the website to which the disputed domain name resolves contains information about the Petitioner's product and other dietary supplements but without any legitimate reason. By selecting the specific domain name, the Domain Holder wanted to use the BEROCCA trademark in order to attract Internet users to the website in order to gain commercial benefits in the future while infringing the Petitioner's rights. Consumers may be misled by false or wrong information about the Petitioner's product, which can have an impact upon the Petitioner's reputation. It may also lead to dangerous results if consumers receive incorrect information regarding the recommended dose of the product. B. Domain Holder
The Domain Holder has not responded. 7. Discussion and Findings
A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions in Section 7.2 of the .se Policy are fulfilled:
1. The domain name is identical or similar to:
a. a distinguishing product feature,
b. a distinguishing business feature,
c. a family name,
d. an artist's name (if the name is not associated with someone who deceased a long time ago),
e. a title of another party's copyrighted literary or artistic work,
f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),
g. a geographic designation or a designation of origin that is protected by the European Council's Regulation (EU) 510/2006,
h. a geographic designation that is protected by the European Council's Regulation (EU) 110/2008,
i. a geographic designation that is protected by the European Council's Regulation (EU) 1234/2007, or
j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation,
which is legally binding 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 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 binding in Sweden and to which the Petitioner can prove its rights
According to the submitted evidence in the case, the Petitioner is the owner of the registered trademark BEROCCA. The disputed domain name incorporates the BEROCCA trademark in its entirety with the addition of the generic and descriptive term "boost". The addition of a common, descriptive term, such as "boost", to a Petitioner's trademark, is typically considered insufficient to avoid a finding of confusing similarity.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Petitioner's trademark BEROCCA and that the Petitioner has proven the first requirement under Section 7.2 of the .se Policy. B. The domain name has been registered or used in bad faith
The Petitioner's Swedish trademark BEROCCA was registered on July 25, 1969 and the disputed domain name was registered on January 21, 2016. Consequently, the trademark predates the registration of the disputed domain name by 47 years.
The Petitioner has not licensed, approved or in any way consented to the Domain Holder's registration and use of the trademark in the disputed domain name. The Domain Holder's website, to which the disputed domain name resolves, contains numerous direct references to the Petitioner's trademark BEROCCA and to the Petitioner's product BEROCCA BOOST. The addition of the descriptive term "boost" to the BEROCCA trademark in the disputed domain name may lead to an increased risk of confusion because the Petitioner is producing and selling a product named BEROCCA BOOST. The submitted evidence in the case indicates that the Domain Holder has registered and is using the disputed domain name with the Petitioner's trademark BEROCCA in mind.
Given the above, the Domain Holder is not only attempting to attract Internet users to the Domain Holder's website by creating a likelihood of confusion with the Petitioner's trademark as to the source, sponsorship, affiliation or endorsement of the website, but the Domain Holder is also using the disputed domain name in a way that may disturb the Petitioner's business.
There is no evidence in the case file that refutes the Petitioner's submissions. Therefore, the Arbitrator concludes that the Petitioner has also proven the second requirement under Section 7.2 of the .se Policy and that the disputed domain name has been registered and used in bad faith. C. The Domain Holder has no rights or justified interest in the domain name
The Petitioner has argued that the Domain Holder lacks rights or justified interest in the disputed domain name . As previously mentioned, the Petitioner has not licensed or otherwise consented to the Domain Holder's registration and use of the BEROCCA trademark in the disputed domain name.
Despite given the opportunity, the Domain Holder has not submitted any evidence in this case to demonstrate that the Domain Holder is the owner of a trademark, or any other right, similar to the disputed domain name or that the Domain Holder is commonly known by the disputed domain name.
By not submitting a Response, the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain name. Consequently, there is no evidence in the case that refutes the Petitioner's submissions, and the Arbitrator concludes that the Petitioner has also proven the third requirement under Section 7.2 of the .se Policy. 8. Decision
For the foregoing reasons, in accordance with Section 7.2 of the .se Policy, the Arbitrator orders that the disputed domain name shall be transferred to the Petitioner. 9. Summary
The Arbitrator concludes that the disputed domain name is confusingly similar to the Petitioner's trademark BEROCCA and that the Petitioner has proven the first requirement under Section 7.2 of the .se Policy. The Arbitrator furthermore concludes that the Petitioner has proven the second requirement under Section 7.2 of the .se Policy and that the disputed domain name has been registered and used in bad faith, and that the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain name.
Johan Sjöbeck
Date: May 28, 2018
Full & Egal Universal Law Academy