WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram Sylvania Inc. v. Texas International Property Associates
Case No. D2007-1891
1. The Parties
Complainant is Osram Sylvania Inc., Danvers, Massachusetts, United States of America, represented by Cantor Colburn LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <osram-sylvania.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2007. On December 21, 2007, the Center transmitted by email to Compana LLC. a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Compana LLC. 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 contacts. 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 Respondent of the Complaint, and the proceedings commenced on January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Response was filed with the Center on January 23, 2008.
The Center appointed Stefan Naumann as the Sole Panelist in this matter on February 18, 2008. 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
Complainant is a corporation organized and existing under the laws of Delaware involved in the lighting business that owns a number of trademarks that include the word “Sylvania”, namely 16 registered US trademarks that designate products and/or services in international classes 7, 9, 11, 35, 37, 41, 42.
Complainant submitted database print-outs for these trademarks.
The oldest registration submitted into evidence by Complainant is the word mark SYLVANIA, registered on December 2, 1947, and most recently renewed for a ten year period on December 2, 2007, for “fluorescent lamps [and fixtures]” (number 434 729).
It appears from the database print-outs that Complainant Osram Sylvania Inc., through its predecessor in interest, commenced use of the SYLVANIA trademark in the United States of America in connection with lighting products in 1939.
Complainant also registered the domain name <sylvania.com>. A list of trademarks owned by Osram Gmbh and Osram Sylvania Inc. appears on Complainant’s website.
Complainant also declares that the trademark OSRAM is registered in the United States of America by a parent entity to Complainant, Osram Gmbh, but it has only submitted an excerpt of its website which refers to an OSRAM trademark registered by Osram Gmbh1.
5. Parties’ Contentions
Complainant asserts that it has strong rights in its SYLVANIA trademarks. It argues the SYLVANIA trademarks should be considered famous trademarks, and in support of this claim provides information or evidence of a first registration sixty years ago and a use that began in 1939, and sponsorship of motor sports and the unsubstantiated assertion that it spent 26 million dollars over 10 years on advertising.
Complainant argues that the disputed domain name <osram-sylvania.com> is the combination of the trademarks OSRAM and SYLVANIA and that it is therefore confusingly similar to the trademarks owned or licensed by Complainant or its parent company. Moreover, the domain name is identical to Complainant’s trade name. According to Complainant, Internet users are likely to believe that the disputed domain name is related to, associated with, or authorized by Complainant.
Complainant further alleges Respondent has no legitimate interest in the <osram-sylvania.com> domain name because it was registered after Complainant had established rights in the SYLVANIA trademarks. According to Complainant, Respondent does not have superior rights in Complainant’s trademark and cannot have been unaware of Complainant’s trademark at the time it registered the disputed domain name. Furthermore, Complainant asserts that there exists no relationship between Complainant and Respondent that would give rise to an authorization under which Respondent could use a domain name that is confusingly similar to Complainant’s trademark. Last, Complainant alleges that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
Complainant argues that bad faith use and registration of the domain name <osram-sylvania.com> is demonstrated by Respondent’s intention to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website2. In Complainant’s view, Respondent registered the domain name in bad faith because it was necessarily aware of the particular fame of Complainant’s trademarks.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent agrees to transfer the domain name <osram-sylvania.com> to Complainant. Respondent specifies that its offer to transfer is not an admission of the three elements of paragraph 4(a) of the Policy, but rather an offer of “unilateral consent to transfer”.
Respondent points out that Complainant did not contact it to request the transfer of the domain name before instituting the present proceedings3.
6. Discussion and Findings
The situation in which a respondent has agreed to transfer a domain name during proceedings has been raised a number of times in previous cases. Panels have proceeded in three different ways: (i) granting the relief requested by a complainant on the basis of the respondent’s consent without reviewing the facts (William-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207), (ii) finding that consent to transfer meant that the three elements of paragraph 4(a) are deemed to be satisfied (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620), or (iii) finding that a respondent’s offer to transfer is not an admission of the complainant’s right and proceeding to consider whether on the evidence the three elements of paragraph 4(a) are satisfied (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796).
The Panel considers that ordering transfer of the domain name without reviewing the facts may encourage those who register domain names in violation of the Policy to continue or step up their activity since they would be in a position to avoid any recognition of liability even where they compel those who had an earlier trademark to prepare and file a complaint and supporting evidence, while at the same time decreasing their own legal costs. In addition, the Panel considers that refusing to decide a case presented by a complainant may violate a complainant’s right to have its case decided.
In the present matter, Respondent specified in its response that its unilateral consent to transfer is not an admission of the three elements of paragraph 4(a) of the Policy.
The Panel must therefore decide whether on Complainant’s evidence and arguments it is persuaded that the three elements of paragraph 4(a) are satisfied.
Complainant has established that it has acquired trademark rights in the term “Sylvania” and that these rights are prior to the registration of the litigious domain name. The Panel does not need to reach a conclusion as to whether SYLVANIA is a widely known trademark in order to reach its decision in the present matter.
In order for Complainant to be able to rely on the prior right in the trademark OSRAM belonging to Osram Gmbh the Panel would have expected Complainant to submit sufficient evidence to establish that Osram Gmbh is part of the same group of companies and to provide sufficient evidence of the registration of said trademark.
However, the corporate and/or trade name “Osram Sylvania Inc “ appears clearly on the website owned by Complainant, as well as on the trademark filings as listed in the database print-outs.
Although the corporate and/or trade name itself does not allow Complainant to act under the Policy, the existence of this name is relevant to show Respondent’s bad faith in choosing this specific combination of terms as domain name.
Finally, Complainant has also shown that it owns the domain name <sylvania.com>.
A. Identical or Confusingly Similar
In the present matter, Respondent added the term “osram” to the term “sylvania”, the resulting combination being identical to Complainant’s corporate and/ or trade name “Osram Sylvania Inc.” Complainant has established trademark rights in the mark SYLVANIA, which is wholly incorporated in the disputed domain name.
The Panel considers that a website using the disputed domain name could be considered by the public as the website of the company which owns the SYLVANIA, OSRAM or OSRAM SYLVANIA trademarks. This risk of confusion is increased where the domain name is identical to the trademark owner’s corporate and/or trade name.
The Panel therefore finds that the domain name <osram-sylvania.com> is confusingly similar to Complainant’s SYLVANIA trademarks.
B. Rights or Legitimate Interests
In order to establish that it has legitimate rights in the domain name <osram-sylvania.com>, Respondent could attempt to demonstrate its preparations to use, or actual use of the domain name, or of a name corresponding to the domain name in connection with a bona fide offering of goods or services, or that it has been commonly known by the domain name or is making a legitimate non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademarks.
In the present matter, Respondent has chosen not to deny or answer Complainant’s contentions, and the Panel has found no indication in the evidence it received that any of the circumstances described in the Policy, paragraph 4(c)(i)-(iii) could apply in the present matter. Nor has Respondent claimed or demonstrated any other circumstances that could demonstrate its rights to or legitimate interest in the disputed domain name.
The Panel is satisfied that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has chosen not to answer.
The Panel therefore finds that Respondent has no right or legitimate interest in the domain name <osram-sylvania.com>.
C. Registered and Used in Bad Faith
For Complainant to prevail, the Panel must be persuaded that the domain name at issue was both registered and used in bad faith.
In the present matter, the Panel is satisfied that Respondent registered the domain name in bad faith insofar as it was or should have been aware of Complainant’s prior rights in the mark SYLVANIA, the latter being registered as trademark in the United States of America for sixty years.
In addition, Respondent (i) registered the exact name of Complainant as domain name, and (ii) has a track record of bad faith domain name registrations as shown by prior panel decisions.
The Panel therefore finds that the domain name was registered in bad faith.
Complainant further alleges that the domain name was used in bad faith and describes Respondent’s use of the website at the disputed domain name as a “link farm”, but without submitting dispositive evidence of same. However, engaging in a pattern of registering infringing domain names can itself be indicative of bad faith use pursuant to paragraph 4(b)(ii) of the Policy.
In the present matter, the whois record submitted into evidence by Complainant reveals that Respondent’s email address is associated with over 580,000 domain names. The volume of domain names together with the evidence submitted by Complainant tend to indicate that Respondent engages in a pattern of registering infringing domain names. This pattern is confirmed by the numerous decisions ordering Respondent to transfer domain names including the following decisions: Vienna Beef Ltd v. Texas International Property Associates, WIPO Case No. D2007-1133; Schweizerische Rückversicherungs-Gesellschaft v. Texas International Property Associates- NA NA, WIPO Case No. D2007-1455; American Funds Distributors Inc. v. Texas International Property Associates, WIPO Case No. D2007-0994; Tullett Prebon Group Limited v. Texas International Property Associates, WIPO Case No. D2007-0828; The Southern Company v. Texas International Property Associates, WIPO Case No. D2007-0773; American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; Vitalife, Inc. dba Tabak’s Health Products v. Texas International Property Associates, WIPO Case No. D2007-0507; Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501.
According to the cases that appear on the WIPO website, Respondent has already appeared as respondent in at least 34 domain name disputes.
For the avoidance of doubt the Panel has viewed the website at <osram-sylvania.com> (as described in general terms in the Complaint) which apparently provides numerous links to third party websites under the SYLVANIA trademark for lighting products. This verification confirms the finding of bad faith use based on the evidence submitted by Complainant.
The Panel finds that Respondent has repeatedly registered third party trademarks as domain names without right or legitimate interest as set forth in prior panel decisions, that it has used the name of Complainant and that the foregoing are evidence of bad faith use.
In its response, Respondent did not provide any justification for the registration of the disputed domain name, but instead tried to limit its exposure by offering to unilaterally consent to the transfer of the domain name without any recognition that it did in fact once again violate the Policy.
The Panel concludes from the evidence that Respondent registered and used the domain name <osram-sylvania.com> in bad faith.
The Panel’s decision is without prejudice to any rights that may be asserted by third (or related) parties in relation to the trademark OSRAM. See e.g. NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <osram-sylvania.com> be transferred to Complainant.
Dated: March 3, 2008
1 Standing alone, the web page is not sufficient evidence of the link between the two companies or of an OSRAM trademark registration.
2 Complainant does not, however, submit any evidence of Respondent’s alleged use.
3 The Panel considers that contacting a respondent in order to request the transfer of a disputed domain name prior to instituting an action before the Center is not a condition of admissibility of the complaint under the Uniform Domain Name Dispute Resolution Policy.