ARBITRATION AND MEDIATION CENTER Alternative Dispute Resolution Proceeding Case No. DSE2024-0017 1. Petitioner The Petitioner is Swedbank AB, Sweden, represented by CSC Digital Brand Services Group AB, Sweden. 2. Domain Holder The Domain Holder is M.S., Sweden. 3. Domain Name and Procedural History This Alternative Dispute Resolution proceeding relates to the domain name (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. The Center invited the Petitioner on March 22, 2024, to amend its Petition. The Petitioner submitted an amended Petition on March 25, 2024. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on April 9, 2024. The Domain Holder submitted an informal email communication on April 9, 2024. The Domain Holder did not submit a formal response. The Center therefore proceeded with informing the Parties of its commencement of Arbitrator appointment process on May 13, 2024. The Center appointed Jon Dal as the sole Arbitrator in this matter on May 21, 2024. 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. The Petitioner has elected to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition. The Domain Holder has submitted an informal response and the dispute shall therefore not be decided as an Accelerated Proceeding.
page 2 4. Claim The Petitioner claims that the Domain Name shall be transferred to the Petitioner. The Domain Holder has not made any claims. 5. Parties’ Contentions 5.1 Petitioner The Petitioner is the owner of numerous trademark registrations for SWEDBANK across various jurisdictions, including EU trademark registration No. 004897567, registered on March 5, 2007. The Petitioner is the leading bank in the four primary markets it serves: Sweden, Estonia, Latvia and Lithuania. The Petitioner formally adopted the name “Swedbank” in year 2006. The Petitioner’s has extensively and continuously used the SWEDBANK trademark. The Petitioner has made significant investments over the years to promote and protect this trademark and the Petitioner’s business across the internet and world. The Petitioner enjoys a substantial degree of public recognition in SWEDBANK and has seen this trademark become uniquely and distinctly associated with the 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 the owner of numerous trademark registrations for SWEDBANK across various jurisdictions, including EU trademark registration No. 004897567. The Domain Name can be considered as capturing, in its entirety, the Petitioner’s SWEDBANK trademark and simply adding a hyphen and the generic Swedish term “engagerad” to the end of the trademark, which translates to “engaging” or “involved” in English. The mere addition of this generic term to the Petitioner’s trademark does not negate the confusing similarity between the Domain Name and the Petitioner’s trademark. The addition of the country code Top-Level Domain “se” does not alleviate the potential confusion between the Domain Name and the Petitioner’s trademarks. The addition lacks distinctiveness and is not sufficient to give the Domain Name an individual meaning. B The Domain Name has been registered or used in bad faith The Domain Holder registered the Domain Name on November 25, 2020 well after the Petitioner first registered the SWEDBANK trademark with PRV, NIPO and the USPTO in 1983, 1984 and 1992 respectively, and after the registration of the Petitioner’s domain name on November 20, 2002, and domain name on September 21, 1998. It is obvious that it is the fame of the trademark that has motivated the Domain Holder to register the Domain Name. That is, the Domain Holder cannot claim to have been using the SWEDBANK trademark without being aware of the Petitioner’s rights to it. In addition to incorporating the Petitioner’s trademark in its composition, the Domain Name is also redirecting to a third-party website featuring the Petitioner’s trademarks and products which is further evidence of the Domain Holder’s familiarity with the Petitioner’s business and brand. The trademark SWEDBANK is so closely linked and associated with the Petitioner that the Domain Holder’s use of this mark, or any minor variation of it, strongly implies bad faith. The Domain Holder creates a likelihood of confusion with the Petitioner and its trademarks by using a domain name that incorporates the Petitioner’s trademark in its entirety, with the Domain Holder then attempting to profit from such confusion by the redirecting the Domain Name to a website containing the
page 3 Petitioner’s trademark as well as its products. As such, the Domain Holder is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the Domain Name and its website would cause consumers to believe the Domain Holder is somehow associated with the Petitioner when, in fact, it is not. The Domain Holder’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name, and the Domain Holder is thus using the fame of the Petitioner’s trademarks to improperly increase traffic to the website listed at the Domain Name for the Domain Holder’s own commercial gain. Prior to this Petition, the Petitioner tried to contact the Domain Holder through emails which were unanswered. The Domain Holder’s failure to provide an explanation of its choice of domain name is a strong indication of bad faith registration. On the balance of the facts set forth above, it is more likely than not that the Domain Holder knew of and targeted the Petitioner’s trademark, and the Domain Holder should be found to have registered and used the Domain Name in bad faith. C. The Domain Holder has no rights or justified interest in the Domain Name. The Domain Holder is not sponsored by or affiliated with the Petitioner in any way. The Petitioner has not given the Domain Holder permission to use the Petitioner’s trademarks in any manner, including in domain names. Also, the Petitioner has not found that the Domain Holder has any registered trademarks or trade names corresponding to the Domain Name. Further, the Petitioner has not found anything that would suggest that the Domain Holder has been using SWEDBANK in any other way that would provide legitimate rights in the Domain Name. Consequently, the Domain Holder may not claim any rights established by common usage. The term SWEDBANK is not a common dictionary term, but rather a compound formed from the terms “swed” (an abbreviation for Swedish / Sweden) and “bank” (descriptive of the Petitioner’s core business). As such, the trademark SWEDBANK has no linguistic meaning as it is understood by the ADR Policy. The Petitioner’s SWEDBANK trademark is sufficiently distinctive as to not have any meaning in commerce other than to reference the Petitioner's business. This strongly implies that the Domain Holder’s registration was opportunistic and predatory in nature. In other words, the Domain Holder has registered and used the Domain Name misleadingly to attract Internet users to its own website by misrepresenting an association with the Petitioner’s trademark. Indeed, misleading use of this nature does not give rise to any rights or legitimate interests on the part of the Domain Holder. The Domain Holder previously used the Domain Name to redirect Internet users to a third party website that features the Petitioner’s information and products without authorization. As such, the Domain Holder is not using the Domain Name to provide a bona fide offering of goods or services. The Domain Holder is currently offering to sell the Domain Name, which serves as further evidence of Domain Holder’s lack of rights and legitimate interests. D. Evidence The Petitioner invokes screen shoots from the Domain Holder’s website and from the Petitioner’s website, extracts from trademark registers and a copy of a cease and desist letter etc. as evidence. 5.2. Domain Holder The Domain Holder has not submitted a formal response.
page 4 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 registered owner of a EU trademark registration for SWEDBANK. The trademark registration has legal effect in Sweden. The Domain Name includes the trademark SWEDBANK in its entirety and the word “engagerad” in the Domain Name is descriptive. The Domain Name is similar to the Petitioner’s trademark and the first condition is fulfilled. B. The Domain Name has been registered or used in bad faith Based on the record, the Arbitrator finds that the Domain Name has been registered and used in bad faith. C. The Domain Holder has no rights or justified interest in the Domain Names Based on the record, the Arbitrator finds that the Domain Holder has no rights or justified interests in the Domain Name. 7. Decision The Domain Name shall be transferred to the Petitioner. 8. Summary The Petitioner is the registered owner of a EU trademark registration for SWEDBANK. The trademark registration has legal effect in Sweden. The Domain Name includes the trademark SWEDBANK in its entirety and the word “engagerad” in the Domain Name is descriptive. The Domain Name is similar to the Petitioner’s trademark and the first condition is fulfilled. Based on the record, the Arbitrator finds that the Domain Name has been registered and used in bad faith. Based on the record, the Arbitrator finds that the Domain Holder has no rights or justified interests in the Domain Name. Jon Dal Date: June 4, 2024
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