The Petitioner is Mistral International B.V., Netherlands, represented by Inaday Merken B.V, Netherlands.
2. Domain HolderThe Domain Holder is A. B. trading under the name Bergtoft Konsult AB, Sweden.
3. Domain Names and Procedural HistoryThis Alternative Dispute Resolution relates to the domain names
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 September 9, 2019. The Domain Holder submitted a response on October 8, 2019 and the Petitioner submitted additional material on October 11, 2019. Lastly, the Domain Holder submitted additional material on October 21, 2019.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on October 9, 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. BackgroundThe Domain names were registered by the Domain Holder on the following dates:
The Domain names resolve to parking pages.
The Petitioner is a Dutch company owning several trademarks for the word MISTRAL, comprising i.e. products for watersports activities such as windsurfing.
5. ClaimThe Petitioner has requested that the Domain names shall be transferred to the Petitioner.
The Domain Holder has opposed the Petitioner’s claim.
6. Facts of the Case / Parties Contentions A. PetitionerThe disputed Domain names were registered more than 20 years after the domain name,
The MISTRAL trademark is well known for windsurfing and due to the fact that the wordings “windsurfing” or “vindsurfing” are also mentioned in some of the disputed Domain names, there is a direct connection to the trademark MISTRAL. Therefore, the Domain names can mislead consumers. The same applies to the disputed Domain names where the wording “boards” is used.
The Domain names were registered in bad faith in order to benefit from the good reputation of the MISTRAL brand. The Domain Holder registered the Domain names despite the fact of ongoing negotiations regarding a distribution agreement between the Petitioner and the Domain Holder. The parties never signed an agreement. The Petitioner has sent an email to the Domain Holder requesting a transfer of the Domain names, but the Domain Holder was not willing to cooperate. In conclusion, the Domain Holder knows the Petitioner and is aware of the existence of its trademark rights, and despite of this awareness, the Domain Holder decided to register the disputed Domain names.
The Domain Holder was never authorized to register or use the disputed Domain names. The disputed Domain name does not resolve to an active website. Thus, there is no evidence that the Domain Holder has been commonly known by the disputed Domain names or that the Domain Holder uses the disputed Domain names in connection with any product or service, and they conclude that the Domain Holder has no rights or justified interest in the disputed Domain names.
B. Domain HolderThe Domain Holder consents to the Petitioner being legally recognized as the owner of the MISTRAL brand. However, the Petitioner only uses the
The Domain Holder still wishes to receive an answer from the Petitioner on whether he would be appointed distributor or not. Depending on the answer, the Domain Holder would be willing to sell the Domain names to the Petitioner. Lastly, the Domain Holder states that he never was in bad faith and the intentions were to cooperate with the Petitioner.
7. Discussions and Findings 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 rightsThe Petitioner holds trademark registrations with validity in Sweden. Two of which are national Swedish trademarks, with the first one registered in 1988, reg. No. 211772 and reg. No. 513504, registered in 2013. The Petitioner is also the holder of the European Union Trademark No. 009911678, registered in 2011. Said trademarks all cover the word mark MISTRAL in a range of products for water sports, including windsurfing.
There is no dispute as to the Petitioner’s ownership of the trademark MISTRAL. The additions in the Domain names of the terms “boards”, “-boards”, “windsurfing”, “-windsurfing”, “vindsurfing” and “-vindsurfing” do not change the fact that the Domain names shall be regarded similar in accordance with the .se Policy in an overall assessment.
B. The Domain Name has been registered or used in bad faithThe Domain Holder has in its response to this Petition stated that the Domain Holder consents to the Petitioner being the owner of the MISTRAL trademark. Furthermore, the Domain Holder claims that the Domain names were only registered in order to protect the rights of the Petitioner. A distribution agreement under negotiation obligated the Domain Holder to do this. The Arbitrator notes that the said distribution agreement was never signed by the Parties.
The Domain Holder has stated that it is willing to sell the Domain names to the Petitioner if an agreement is not signed between the parties. There is an obvious direct link between the negotiations between the parties and the registration of the disputed Domain names. The Arbitrator cannot find facts or evidence supporting the Domain Holder’s right to register the Domain names through an agreement between the parties or any other kind of authorization from the Petitioner.
In conclusion the Domain Holder is considered to have registered and used the Domain names in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain NamesAs stated above, the Arbitrator cannot find facts or evidence supporting the Domain Holder’s right to register the Domain names through an agreement between the parties or any other kind of authorization from the Petitioner. An agreement would probably have given the Domain holder a right or justified interest for registering and maintaining registrations of the Domain names. The Domain Holder agrees that there is no reason for holding the Domain names unless it is appointed a distributor for Sweden.
Under the circumstances, the Domain Holder does not have a right or justified interest in the Domain names.
8. DecisionThe Domain names
The Domain names are similar to trademark registrations recognized in Sweden and owned by the Petitioner. The Domain Holder registered the Domain names referring to negotiations of a distribution agreement. The said distribution agreement was never signed by the parties. The Arbitrator cannot find facts or evidence supporting the Domain Holder’s right to register the Domain names through an agreement between the parties or any other kind of authorization. In conclusion, the registrations and the subsequent use of the Domain names were made in bad faith. The Domain holder does not have rights or justified interest in the Domain names. Thus, the Domain names shall be transferred to the Petitioner.
Peter Hedberg
Date: November 8, 2019