Jula AB v Ivan Stanojevic

WIPO Case No. D2022-0806

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jula AB v. Ivan Stanojevic

Case No. D2022-0806

1. The Parties

Complainant is Jula AB, Sweden, represented internally.

Respondent is Ivan Stanojevic, Serbia.

2. The Domain Name and Registrar

The disputed domain name <julasverige.com> is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2022. On March 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 9, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 10, 2022.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2022.

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The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 28, 2022. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

e.g. Jula Sverige AB. Complainant’s business model is to purchase and store all of its products in Sweden, and to transport and resell them to all four separate legal entities which in turn resell these products to consumers via their 110 warehouses or online.

Complainant is a company organized under the laws of Sweden that is active as a retailer of tools, its own registered company name within Complainant’s larger group of companies,
machines, electronic household products, clothes, etc., offering over 15,000 products to consumers in

Complainant has evidenced to be the registered owner of numerous trademarks relating to its company name and brand “Jula”, including the following:

- Word mark JULA, International registration, registration number: 1039683, registration date: April 8, 2010,

status: active;

- Word mark JULA, European Union Intellectual Property Office (“EUIPO”), registration number: 003278661,

registration date: December 9, 2004, status: active;

- Word mark JULA, Swedish Intellectual Property Office, registration number: 347597, registration date:
July 20, 2001, status: active.

Moreover, Complainant has demonstrated to own the domain name <jula.com>, which resolves to country-related Internet content for Sweden under “ for Norway under “ and for Poland under “ which promote Complainant’s products and related services in the respective countries.

Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of
Serbia who registered the disputed domain name on January 27, 2022. By the time of the rendering of this
decision, the disputed domain name does not resolve to any noteworthy Internet offering, nor does it seem to
have done so in the past. Complainant, however, has provided evidence that at some point before the filing
of this Complaint, e.g. on February 7, 2022, as well as on February 15, 2022, email correspondence was
sent by using the disputed domain name as an email address, which dealt with fraudulent fake product
orders impersonating Complainant’s Swedish legal entity Jula Sverige AB, apparently in an attempt to do
harm to Complainant’s business, and thereby encouraging Complainant to buy the disputed domain name
from Respondent. Also, Complainant contends that the disputed domain name temporarily resolved to a
website resembling Complainant’s main website, which was shutdown after a complaint to the hosting

provider.

Complainant requests that the disputed domain name be transferred to Complainant.

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5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is confusingly similar to Complainant’s JULA trademark, as it contains the latter as a whole plus the geographic identifier “sverige”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has not been authorized to use Complainant’s JULA trademark, either as a domain name or in any other way, and (2) Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, but rather to place fraudulent fake product orders and thereby misleading Complainant’s suppliers. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since Respondent caused Complainant’s suppliers to transport unwanted products for whose return they had to pay, thereby damaging Complainant’s own good reputation and so disturbing and disrupting Complainant’s business to a degree that Complainant would be willing to purchase the disputed domain name from Respondent for a considerable financial sum.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name is confusingly similar to the JULA trademark in which
Complainant has rights.

The disputed domain name incorporates the JULA trademark in its entirety. Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be

considered confusingly similar to that trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8),
that the addition of other terms (whether e.g. geographic or otherwise) would not prevent the finding of
confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “sverige” does
not dispel the confusing similarity arising from the incorporation of Complainant’s JULA trademark in the
disputed domain name.

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Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s JULA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not seem to have any trademark rights associated with the term “jula” on its own. On the contrary, it appears that at some point before the filing of the Complaint, e.g. on February 7, 2022, as well as on February 15, 2022, email correspondence was sent by using the disputed domain name as an email address, which dealt with fraudulent fake product orders impersonating Complainant’s Swedish legal entity Jula Sverige AB, apparently in an attempt to do harm to Complainant’s business. Such use of the disputed domain name obviously neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the JULA trademark when registering the disputed domain name and that the latter clearly is directed to such trademark. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s JULA trademark, for an illegitimate activity, namely the sending of fraudulent fake product orders impersonating Complainant’s Swedish legal entity Jula Sverige AB, and thereby most likely wishing to encourage Complainant to buy the disputed domain name from Respondent to avoid further damages to e.g. Complainant’s suppliers and to Complainant’s reputation in the JULA trademark, is a clear indication that Respondent primarily registered the disputed domain name for the purpose of disrupting Complainant’s business and ultimately selling the disputed domain name to Complainant as the owner of the JULA trademark for valuable consideration in excess of Complainant’s documented out-of-pocket costs directly related to the disputed domain name. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i) as well as 4(b)(iii) of the Policy. In this context, it also carries weight in the eyes of the Panel that Respondent appears to have provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated March 15, 2022, could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding.

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Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <julasverige.com> be transferred to Complainant.

/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: May 11, 2022