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#Beckman .se : #Swedish domain name is a family name, the #WIPO concludes

When your last name is Beckman and you’re Swedish, you’re probably entitled to using the domain Beckman.se.

That’s what the registrant of the domain Beckman.se believed, until a company filed a UDRP based on the BECKMAN trademark. The domain was registered in 1998.

PB, Sweden, filed the UDRP at the WIPO and attempted to get the domain away from Arcanite Media Ltd.

Just like Hover.com, Arcanite has since 2004 registered and traded actively with generic domain names under several top-level domains and is today one of Sweden’s largest holders of domain names.

The WIPO panelist was convinced that the registration and marketing of common family domain names does not constitute bad faith, and denied the Complainant’s request to transfer Beckman.se to them.

The domain transfer was denied.

Full details follow:

WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Procedure
Case number: DSE2020-0024

1. Applicants

The applicant is PB, Sweden. ( “Applicant”).

2. Holders

The proprietor is the Domain Department, Arcannite Media Ltd., Belize (the “Proprietor”).

3. Domain Names and Procedure

Alternative Dispute settlement procedure regarding the domain name <beckman.se> (“The Domain Name”).

The application has been submitted in accordance with the Registration Terms applicable to the .se top-level domain (“Registration Terms”) and Procedure Rules for the Alternative Dispute Resolution Procedure for the domain name in the top-level domain “.se” (“The Rules of Procedure”).

WIPO Arbitration and Mediation Center (“WIPO Center”) verified that the Application complied with the formal requirements set forth in the Registration Terms and Procedures. In accordance with section 13 of the Rules of Procedure, the WIPO Center formally notified the Holder of the Application on April 23, 2020. The Holder filed a Reply on May 23, 2020.

The WIPO Center appointed Monique Wadsted as the sole Dispute Resolution in this matter on June 9, 2020. The Dispute Resolution has filed a Declaration of impartiality and Independence, which is required for the WIPO Center to ensure compliance with Section 1 of the Procedural Rules.

4. Background

The holder registered the Domain Name <beckman.se> on March 17, 2020.

The applicant carries the surname Beckman and develops, markets and sells services and products in technology, design and architecture through various companies or in employment. The applicant is the proprietor of the individual company “Beckman Creative” (registered June 30, 2010) and is further co-owner of two different companies whose name contains “Beckman”. One of the companies also holds the trademark BECKMAN, reg. No. 349926, registered November 9, 2001.

5. The profession

The applicant requests that the domain name <beckman.se> be transferred to the Applicant.

The proprietor has disputed the claim.

6. The parties have submitted

A. The applicant

Background and rights with legal basis in Sweden

The applicant develops, markets and sells services and products in technology, design and architecture through various companies or in employment. Areas that are operated or strongly related to Internet and computer services.

The domain name <beckman.se> is identical to all or part of the following family names, company names and registered trademarks that give the Applicant legal basis for the Domain name in Sweden:

The applicant has the family name Beckman, is the owner of an individual company “Beckman Creative” (registered June 30, 2010) and is co-owner and CEO of the limited company “Beckman Strandberg AB” (Org. No. 559245-6064). The applicant is also a partner in the limited company “Beckman Innovation AB” (corporate registration number 556113-2654), which owns the rights to the BECKMAN trademark (No. 349926, class 7,9,11, registration date 9 November 2011).

The applicant and the Applicant’s company hold a number of domain name registrations with the word “beckman” as the initial word part of each domain name, for example in <beckmancreative.se>, <beckmanstrandberg.se> and <beckman-inno.se>.

Current Holders’ conduct in bad faith and lack of right or legitimate interest in the domain name

The holder, Arcanite Media Ltd., has no right or legitimate interest in the domain <beckman.se>. The domain has been registered in bad faith only for the purpose of being sold to stakeholders for the BECKMAN name or trademark. This is supported by the facts described below:

The proprietor has no justifiable business interests in the domain of Internet services, computer services or other business areas. The holder does not conduct any business which in any way benefits the Internet Foundation, Swedish welfare or Swedish IT industry. The holder is not affiliated with Sweden and deliberately impedes the Applicant’s registration of the domain name. The proprietor has no relation to the Beckman family name or owns trademarks or the right to use trademarks containing the name “Beckman”.

As of April 20, 2020, <beckman.se> contains only a collection of so-called spam links with titles such as “Quick loans”, “SMS Loans” and “Car insurance” and the invitation “Buy this domain”.

The applicant refers to the following WIPO cases where the proprietor has been deprived of domain names due to proven bad faith and lack of legitimate interest:

MAJE SAS v. SMMJ, WIPO Case No. DSE2017-0031 ; Guideline AS v. Domain Department, Arcanite Media Ltd , WIPO Case No. DSE2018-0015 ; Facebook Inc. v. Bogdan Surdu and Arcanite Media Ltd , WIPO Case No. DRO2019-0001 ; Andrey Ternovskiy dba Chatroulette v. Arcanite Media Ltd. , WIPO Case No. DRO2019-0003 ; Swedish Match North Europe AB v. Arcanite Media Ltd. , WIPO Case No. DSE2019-0055 .

The applicant has submitted proof in the form of registration certificates for the above-mentioned companies and the BECKMAN brand as well as a screen shot from search results from <beckman.se>.

B. The holder

Background

The people behind Arcanite Media Ltd. (“Arcanite Media” or “The Company”) has since 2004 registered and traded actively with generic domain names under several top-level domains and is today one of Sweden’s largest holders of domain names. Arcanite Media was incorporated in July 2014 for the purpose of consolidating the domain portfolios of its owners. Arcanite Media specializes in valuable generic domain names and is currently primarily active in the acquisition and management of these assets. The company also owns and develops websites with thematic content and generates “leads” for Swedish and foreign companies, including Booking.com, Hotels.com, Pokerstars and Sephora.

Since all generic domain names have long been registered, fewer and fewer new registrations are done without the domains usually being bought through auctions or by contacting existing owners directly. In addition, so-called “drop lists” are scanned under 18 different top-level domains, including the Swedish top-level domain – SE. The company uses a proprietary valuation algorithm that is based on over 30 different variables to determine if a domain name is valuable. These variables include glossaries, Google search volumes, article statistics, TLD availability, etc.

Almost all domains currently held by the Company are regarded as long-term investments and there is rarely a divestment horizon for individual domain names.

First and last name domains

Following inspiration from the American company Hover (www.hover.com) and their “name domains”, as early as 2010 began to compile statistics of all first and last names in Sweden with the aim of registering the corresponding domain name under .SE in order to possibly rent out the domain name. or the email at a later stage. All vacant domain names with over 200 holders were registered at the time and have subsequently been registered directly when they possibly became vacant. Today, the Company owns several of the most common name domains in Sweden, for example the following can be mentioned: <Akerlund.se>, <Eleonora.se>, <Erik.se>, <Hurtig.se>, <Kristoffer.se>, <Lang .se>, <Lustig.se>, <Mikaela.se>, <Naslund.se>, <Valerie.se>, <Vestin.se>.

<Beckman.se> – Domain history

The domain name <beckman.se> was registered as early as 1998. In spring 2020, Arcanite Media, with the help of continuously following .SE’s list of domain names that can become vacant (www.iis.se/data/bardate_domains.txt), became aware that the Domain name < beckman.se> should be available. Since the Domain Name <beckman.se> was considered to be extra valuable, the Company chose to use the reputable registrar Rymdweb to try to register the Domain Name as soon as it became vacant. Rymdweb paid about SEK 2000 to register the domain the same second it became free on March 17, 2020.

Lack of unique right for the surname Beckman

The applicant, with his surname Beckman, can hardly be considered to have a unique right to a domain name which is a very common surname in Sweden as well as internationally.

– There are over 450 other companies in Sweden alone, whose company name contains “Beckman”.
– There are over a hundred different .SE domains that contain “Beckman”.
– There are over 1500 people only in Sweden who carry the surname “Beckman”.
– The term “Beckman” is directly registered under dozens of other top-level domains, which are held by others than the Applicant.

Evil faith

Arcanite Media has no relationship whatsoever with the Applicant, has never heard of the Applicant and has never been in contact with the Applicant before we were contacted in April 2020. The applicant or its companies are not generally known neither by private individuals nor by companies and it may is considered highly unlikely that anyone else would know the Applicant or its company either.

The domain name has not been used, is not used and will not be used to mislead any customers to the Applicant. Arcanite Media is a partner to Google and displays relevant advertising on certain domains to generate revenue, which is part of both the Company’s and Google’s business model. The fact that this is a fully legitimate area of ​​application is also confirmed in the preliminary ATF decision for <joy.se> ATF 616.

The Applicant submits that “The Holder has no justifiable business interests in the domain of Internet services, computer services or other business areas” is almost humorous and indicates an alarming ignorance of intangible assets and Internet marketing.

The contact that happened with the Applicant was when the Company kindly replied to an email asking the applicant “Yes, interested to know price” with “Hello, it could possibly be for sale for € 2500”. Thus, the company has never contacted the Applicant and tried to sell the domain name but only answered an incoming question about what it costs to buy the domain name. It is also not bad faith to actually sell a generic domain name and it is further substantiated by the Internet Foundation itself: “For example, it is not contrary to current rules to sell a domain name to someone who has a similar brand just because the terms are the same , or to use this domain name as part of a link collection.It is only if the registration or use of the domain name has been made aware of the applicant’s right (in this case, the trademark) that bad faith is typically found with the domain name holder ”.

Justified interest

It should be made quite clear that the Company definitely has a legitimate interest in <beckman.se> and other generic domain names.

The proprietor has cited evidence in the form of a screen shot of a search for companies containing “Beckman” in Sweden, a list of .se domains containing “beckman”, a screen shot from the Swedish Tax Agency regarding the number of people bearing the surname Beckman, a list over top-level domains other than .se where “beckman” is registered and an email conversation with the Applicant.

7. Discussion and Conclusions

According to 7.2 Registration Terms, a domain name must be deregistered or transferred to the person requesting the dispute resolution procedure if:

1. The domain name is identical to or similar to:

a) a trade mark,
b) a trade mark,
c) a surname,
d) an artist’s name (if the name does not refer to anyone who has long since passed away),
e) a title of another’s protected literary or artistic works,
f) a name protected by or (
g) a name of state authority that is included in the register Statistics Sweden must enter in accordance with SFS 2007: 755 (Ordinance on the General Government Register), or its accepted abbreviation.

which has a legal basis in Sweden and to which the person requesting the dispute resolution can show correctly, and

2. the domain name has been registered or used in bad faith; and

3. the holder has no right or legitimate interest in the domain name.

In order for the person who applied for a dispute resolution to achieve success with the transfer of a domain name, all three conditions above must be met.

A. The domain name is identical to or similar to a right which has legal basis in Sweden and to which the person requesting the dispute resolution can show the right

Initially, it can be stated that it is the companies and not the Applicant who have the company right to “Beckman Strandberg AB” and “Beckman Innovation AB”. Furthermore, it is not the Applicant but “Beckman Innovation AB” who is the proprietor of the trade mark BECKMAN, registration number 349926. That the Applicant is a partner in these companies does not change this fact.

However, the applicant has, by his surname, a right referred to in the Terms of Registration section 7.2.1 (c). When assessing whether a disputed domain name is identical to or similar to another’s right with legal basis in Sweden, the Swedish national top-level domain “.seˮ” shall be disregarded. The domain name <beckman.se> is thus identical to the Applicant’s last name.

Furthermore, the Applicant holds the individual company “Beckman Creative”, which was registered on June 30, 2010 and is thus protected as a trade mark. “Beckman” is dominant in “Beckman Creative”. The domain name <beckman.se> thus resembles the Applicant’s registered company “Beckman Creative”.

The domain name is thus identical to or similar to rights with legal basis in Sweden to which the Applicant can prove right. The first condition is thus fulfilled.

B. The domain name has been registered or used in bad faith

From what has emerged, the Dispute Resolution understands that the Holder admittedly registered the Domain Name <beckman.se> for the purpose of renting out the Domain Name at a later stage. However, the Dispute Resolution considers that it appears that the Proprietor has registered the Domain Name due to the market which the Proprietor deems to be available for leasing of the Domain Name given the large number of stakeholders to the Domain Name who hold rights similar to the Applicant. This indicates that the Domain Name did not come specifically with the Applicant’s rights in mind. Nothing has been presented that shows that the Holder has known, or sought to exercise, the rights invoked by the Applicant when registering or using the Domain Name (for a similar reasoning, see decision in ATF case with number 616 <joy.se>) .Furthermore, nothing has been presented which shows that the Applicant’s rights are well known and have therefore probably been recognized by the Holders.

It may also be noted that there is some difference between the Domain Name and the Applicant’s company “Beckman Creative”. It has also emerged that a large number of companies have names that contain “Beckman”. This also indicates that the Holder did not specifically address the Applicant in registering the Domain Name.

It is clear from the correspondence between the Applicant and the Proprietor that the Applicant contacted the Proprietor to investigate the possibilities of purchasing the Domain Name and that the Proprietor replied that the Domain Name could possibly be for sale at a certain price. However, it has not been shown that the Holder made any sales attempts on his part.

There is also no evidence to suggest that the Proprietor has used the Domain Name to exploit the Applicant’s trade mark characteristics, or to interfere with or hinder the conduct of the Applicant’s business. The domain name has not been used in any way that can be linked to the Applicant’s business, any business that competes with the Applicant’s business, or in any other way indicates any link with the Applicant.

In an overall assessment based on what has emerged in the case, the Dispute Resolution finds that the requirement that the Domain Name must have been registered or used in bad faith by the Proprietor is not fulfilled.

The condition that the Proprietor must have registered or used the Domain Name in bad faith is therefore not fulfilled and the application must therefore be submitted without approval.

8. Decision

The application for transfer of the Domain name <beckman.se> is granted without approval.

9. Summary

The applicant holds rights in the form of surnames and trade marks which, in their wording, are identical to or similar to the Domain Name.

Nothing in the case indicates that the Proprietor has registered or used the Domain Name in bad faith in relation to the Applicant.

The application for transfer of the Domain Name must therefore be granted without approval.

Monique Wadsted
Date: June 24, 2020


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