WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Flowil International Lighting (Holding) B.V., SLI Sylvania Europe v. Sylvania Lighting International
Case No. D2006-0687
1. The Parties
The Complainants are Flowil International Lighting (Holding) B.V. and SLI Sylvania Europe, Haarlem, Netherlands; represented by Meissner, Bolte & Partner, Germany.
The Respondent is Sylvania Lighting International, Tienen, Belgium.
2. The Domain Name and Registrar
The disputed domain name <slisylvania.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2006 by email a hard copy of which was received by the Center on June 6, 2006. On June 2, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On June 6, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2006.
The Center appointed Christophe Imhoos as the sole panelist in this matter on July 12, 2006. 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.
After the decision was drafted, the Complainant, on July 27, 2006, sent an email to the Center attaching a letter from Sylvania N.V. in which the latter stated that “We, Sylvania NV, waive any rights regarding slisylvania.com and agree to the transfer of the domain to the complainant, Flowil International Lighting (Holding), B.V.
4. Factual Background
The Flowil International Lighting (Holding) B.V. introduces itself as one of the world’s biggest and most renowned companies in the field of lighting and lighting technology; it is the owner of at least 77 registered trademarks “Sylvania”, marks containing the term “Sylvania”, and marks SU or marks containing the term “SLI” in a multitude of countries worldwide (Annex 2 to the Complaint).
The Complainants submit that they, Flowil International Lighting (Holding) B.V. and the SLI Sylvania Europe, are closely affiliated companies, the former being the owner of the relevant marks, the latter the licensee who use the marks and uses the combination of the marks SLI and SYLVANIA as the company name.
Furthermore, the Complainants are also owner of the domain name <sli-sylvania.com>.
5. Parties’ Contentions
The Complainants’ arguments are the following.
(i) The domain name is identical or confusingly similar to a trademark or a service mark, in which the Complainants have rights.
Given the various community trademarks and international registrations for the marks SYLVANIA and SLI-CREATING LIGHT BY INNOVATION (Annex 3 to the Complaint), the domain in question, <slisylvania.com>, is obviously a simple combination of the Complainants’ marks “SLI” and SYLVANIA. SYLVANIA being a very fanciful, original and distinctive word, the domain name in dispute is confusingly similar to all trademarks containing the term “sylvania”, and also confusingly similar with “SLI” (which means “Sylvania Lighting International”), and obviously identical with the combination of these marks. Furthermore, the domain corresponds exactly with the company name of the Complainants, namely SLI Sylvania Europe.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has not been and is not known by the domain name; the Respondent does not own any marks SLI, SYLVANIA or SLI SYLVANIA.
As far as the term “slisylvania.com” is used as the “name” of the Respondent in the Registrar’s database, this is obviously only derived from the domain itself and only for the purpose of the domain registration, as the Respondent is hiding its real name behind the “identity shield” function.
The Respondent is not making a legitimate non-commercial fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks at issue. Quite on the contrary, the Respondent misuses the domain and thus the Complainants’ good name and trademarks to generate hits on its website through use of the Complainants’ well-known marks and name.
(iii) The domain name was registered and is being used in bad faith.
Considering the reputation of the Complainants and their marks and goods, it is obvious that the domain was registered in bad faith, especially taking into account that it is literally nearly impossible that a third party would coincidentally think of the rather unusual and fanciful combination SLI Sylvania by itself.
By using the domain name, the Respondent intentionally attempts to attract for commercial gain and to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ marks. This becomes especially apparent as the website “www.slisylvania.com“ contains links and information connected to the goods the Complainants are famous for, namely goods related to lighting and lighting technology. Especially the first menu button on the left, named “Sylvania”, leads to online retailers and similar sites selling the Complainants’ goods (Annex 4 to the Complaint).
It is thus obvious that the Respondent was well aware of the Complainants’ marks and name when it registered the domain, and of the newly formed brand and name SLI SYLVANIA and acted therefore in bad faith.
It is assumed that one of the reasons why the Respondent registered the domain was to be able to sell it to the Complainants at a later date. Until then, the Respondent is obviously generating money through each hit and each forwarding, referring link on its website from Internet users who stumble upon its site in search of the homepage or goods of the Complainants. Further links seem to be generated with reference to a town in the United States of America, called “Sylvania”. The Respondent obviously tries to catch anyone who does an Internet search for the terms “Sylvania” or “Sli” or “Sli Sylvania”, respectively, The Respondents tries to lead that person to its website, and earn money through that user.
The Respondent did not address the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainants have established rights in the trademarks SLI and SYLVANIA with various registrations for such names (Annexes 2 and 3 to the Complaint).
The Complainants’ trademarks SLI and SYLVANIA, combined together, are, obviously, confusingly similar to the domain name <slisylvania.com>.
For the above reasons, the Panel finds that the disputed domain is confusingly similar to Complainants’ trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out an initial prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Absent evidence to the contrary, SLI and SYLVANIA trademarks have been known for a significant period of time and the Complainants have not granted any license or otherwise permitting the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks. Moreover, the Respondent does not seem to be known under the domain name in question.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of the complainant’s assertions are established as facts, and whether the conclusions asserted by the complainant can be drawn from the established facts (See Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
As pointed out by the Complainants in their Complaint, the Respondent could not ignore the Complainants’ trademarks registrations at the time it set up the domain name in dispute (i.e. in March 2006; see Annex 1 to the Complaint). Bad faith registration is established in the Panelist’s opinion.
Such prior knowledge combined with the fact that the Respondent has no legitimate interest to the domain names and that it transpires that the Respondent has concealed its true identity as domain name holder (see Annex 1 to the Complaint), strongly indicates a bad faith intention (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panelist finds therefore that such a behavior has to be considered as bad faith pursuant to the general meaning of Paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <slisylvania.com> be transferred to the Complainants.
Date: July 27, 2006