The Petitioner is Shelterbox Trust of United Kingdom of Great Britain and Northern Ireland ("UK"). 2. Domain Holder
The Domain Holder is T. E., Elfwendahl & Co Aktiebolag, 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 April 4, 2018. The Domain Holder submitted a response on April 4, 2018.
The Center appointed Petter Rindforth as the sole Arbitrator in this matter on May 15, 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 is a non-profit organization based in the UK, and the owner of the European Union trade mark (EUTM) No. 009298324 SHELTERBOX (word), filed on August 5, 2010, and registered on January 22, 2011 for goods and services in classes 6, 11, 16, 19, 20, 21, 22, 25, 35, 36, 37, 39, 41, and 43.
The Domain Holder was previously connected to a non-profit organization with the name ShelterBox Sweden, which ceased to exist on March 28, 2013.
The disputed domain name was registered on November 22, 2010, in the name of the Domain Holder. 5. Claim
The Petitioner has requested that the disputed domain name shall be transferred to the Petitioner, Shelterbox Trust.
The Domain Holder has contested the claim for transfer. 6. Parties' Contentions A. Petitioner
The Petitioner, a non-profit UK based fundraising organization, previously co-operated with the independent non-profit Swedish based organization ShelterBox Sweden, with corporate identity number 802460-9136.
The Petitioner refers to a licence agreement ("Affiliate Agreement") from 2012, stating that "ShelterBox Sweden" acknowledges that SBI [the Petitioner] is the owner of the Intellectual Property Rights other than the Donor Database and the domain name "ShelterBox Sweden", and that "If this agreement is terminated, the Licence shall cease immediately and ShelterBox Sweden shall: […] immediately cease to use the Domain Names and shall promptly initiate the domain name transfer process in order to transfer to SBI or its nominee legal and beneficial ownership of the Domain Names".
According to the Petitioner, the licence agreement was terminated in 2013.
The Petitioner is now represented in Sweden via a new non-profit organization, called Shelterbox Sweden.
The Petitioner claims that the Domain Holder has refused to give up control over the disputed domain name , whilst also maintaining misleading and incorrect information on the web site connected to that Shelterbox Sweden has ceased to operate.
The Petitioner concludes that the impact of the situation is a loss of fundraising income to the legitimate Shelterbox Sweden, who has the rights to use the trademark SHELTERBOX by an Affiliate Agreement with the Petitioner. B. Domain Holder
The Domain Holder, identified by the Domain Holder as "the archive holder", informs that when ShelterBox Sweden on March 28, 2013 decided to terminate the organisation, they considered the Swedish legal obligation to ensure archive availability for at least seven years, meaning until March 28, 2020.
By retaining the domain name , the linked web page and email, there is public information about the termination of the activities, information to the donors, and that the archive holder can be contacted, as there is no other way of contact.
The Domain Holder further states that it is unfortunate that a non-profit organization has been created with the name Shelterbox Sverige, with corporate identity number 802477-0987, that is connected to the Petitioner. The said organization market itself as "Shelterbox Sweden", however the correct registered name is "Shelterbox Sverige Ideell Förening", using a web page under 7. Discussion and Findings
A domain name may, in accordance with .SE´s Terms and Conditions of Registration (.se Policy) paragraph 7.2, 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 trademark or business name (or other name rights) 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 a Petitioner to succeed in his action 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
The Petitioner is the owner of the EUTM No. 009298324 SHELTERBOX (word), which is identical to the Domain Name. B. The Domain Name has been registered or used in bad faith
The Petitioner refers to an Affiliate Agreement from 2012, and has provided a document called "Affiliate Agreement Sweden Final 28 Feb 2012" as evidence of such agreement.
The Arbitrator notes that the said document only states "Dated 2012", ShelterBox Sweden is only identified by a postal address, and further that none of the parties have signed the Agreement.
The Petitioner has also provided another Affiliate Agreement, "Dated 2018", with "Effective date" of January 1, 2018, duly signed by the therein involved parties, and ShelterBox Sweden is here identified by the corporate identity number 802477-0987, which is the identification of "Shelterbox Sverige – Ideell förening", registered on February 27, 2014.
The Arbitrator further notes that the Domain Holder in its Response has not contested the date and content of the original Affiliate Agreement from 2012, and has also further provided information about the dates of registration, cancellation and names of the two Swedish based non-profit organizations.
As noted above, the Petitioner has a registered trademark right to SHELTERBOX, filed on August 5, 2010, and covering all member states of the European Union, including Sweden.
The Domain Holder registered the disputed domain name on November 22, 2010.
Although there is no clear information on when the Petitioner and the Domain Holder started to discuss
co-operation, the comments and information from both the Petitioner and the Domain Holder indicate clearly that the Petitioner had no objection to the original registration of the disputed domain name, and that the Domain Holder registered it based on the (upcoming) Affiliate Agreement.
The question remains if it is used in bad faith.
It is noted that the original (non-signed) Agreement is between the Petitioner and the organization "ShelterBox Sweden". The Agreement, not as such contested by the Domain Holder, clearly states that:
- "Domain Names" means any domain names used by ShelterBox Sweden in connection with its activities, which incorporates the "shelterbox" name;
- Intellectual Property Rights includes domain names as well as "look and feel" of any websites.
- The Agreement further states that "ShelterBox Sweden acknowledges that SBI is the owner of the Intellectual Property Rights other than the Donor Database and the domain name 'ShelterBox Sweden'".
- Finally, the Agreement states that if it is terminated, the Licence shall cease immediately and ShelterBox Sweden shall immediately cease to use the Domain Names and shall promptly initiate the domain name transfer process in order to transfer to SBI or its nominee legal and beneficial ownership of the Domain Names (14.3.4 of the Agreement).
The Arbitrator concludes that the continuous use of the disputed domain name after March 28, 2013 is a clear breach of the Agreement. Even if the Agreement is to be read as no rights to domain names "other than…the domain name ShelterBox Sweden", it gives no extended rights to the Domain Holder or the original organization ShelterBox Sweden to the disputed domain name . The fact that the Domain Holder had knowledge of the Petitioners establishment of a new co-operation with another Swedish based non-profit organization, registered with the direct Swedish version of "ShelterBox Sweden", namely "Shelterbox Sverige", although marketing itself as "Shelterbox Sweden", is a further clear indication of bad faith use.
Accordingly, the Arbitrator concludes that was registered in good faith, but has since March 28, 2013 been used in bad faith. C. The Domain Holder has no rights or justified interest in the Domain Name.
As shown above, the Petitioner is the duly registered owner of the trademark SHELTERBOX, which is identical to the domain name , and also has prior rights as applied before the disputed domain name.
The previous Agreement between the Petitioner and the non-profit organization ShelterBox Sweden, represented by the Domain Holder, clearly states that the rights to the disputed domain name, shall be transferred to the Petitioner once the Agreement is no longer valid, and that the Domain Holder is not permitted to continue using a "look and feel" website.
The Domain Holder claims to have a justified interest in the disputed domain name, referring to Swedish legal obligation to ensure archive availability for at least seven years, until March 28, 2020. Such obligation is however referring to the database as such, and has no direct relation to the disputed domain name. The content of the information can easily be available through other channels.
The Arbitrator therefore concludes that the Domain Holder has no rights or justified interest in the disputed domain name . 8. Decision
The disputed domain name shall be transferred to the Petitioner. 9. Summary
The disputed domain name is identical to a valid EUTM owned by the Petitioner.
The disputed domain name was registered based on an Affiliate Agreement that ceased to exist in 2013.
According to the said Agreement, upon termination all rights, including domain names, shall be transferred to the Petitioner.
The Domain Holder has continued to use the disputed domain name claiming that some information provided on the connected web site has to be legally updated and maintained. Such information can however be maintained by other channels than a web site connected to the disputed domain name. The Domain Holder is therefore using the disputed domain name in bad faith and has no rights or justified interest in the disputed domain name.
Petter Rindforth
Date: May 4, 2018
Full & Egal Universal Law Academy