WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram Sylvania, Inc. v. iLighting Solutions Inc.
Case No. D2008-0003
1. The Parties
Complainant is Osram Sylvania, Inc., Massachusetts, United States of America, represented by Cantor Colburn LLP, United States of America.
Respondent is iLighting Solutions Inc., Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <osramsylvaniacatalog.com> and <osramsylvaniaonline.com> are registered with Netfirms, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2008. On January 3, 2008, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the domain names at issue. On January 9, 2008, Netfirms, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 16, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2008.
The Center appointed Bruce E. O’Connor as the sole panelist in this matter on February 21, 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 the owner of the trademark SYLVANIA used in connection with the SYLVANIA brand of lighting devices and apparatus and other products. Complainant’s parent company Osram GmbH is the owner of the trademark OSRAM.
The trademark SYLVANIA, by itself and in combination with other trademarks and terms, is protected by various United States trademark registrations, including No. 434,729 registered December 2, 1947.
The domain names in dispute were registered on October 27, 2007.
5. Parties’ Contentions
Complainant, through its predecessors in interest, commenced use of the trademark SYLVANIA in the United States in connection with lighting products in 1939. Use of the trademark SYLVANIA has been extensive, exclusive and continuous in the United States and other countries since that time.
The trademark SYLVANIA is among the best-known trademarks in the United States, due in part to decades of extensive advertising.
Complainant maintains a web site using the domain name <sylvania.com>. The trademark SYLVANIA is featured throughout this Web site, and Complainant clearly claims ownership of that trademark and variations thereof.
Complainant’s United States trademark registrations for the trademark SYLVANIA are valid, subsisting and in full effect. Several of these registrations are incontestable within the meaning of Section 33(b) of the Lanham Act. All of the marks in these registrations were registered and/or used long prior to registration of the domain names in issue.
Complainant submits it has extraordinarily strong rights in the trademark SYLVANIA, and that trademark has become so well known that it should be properly considered as a famous mark.
The domain names in dispute are identical to marks owned or licensed by Complainant and the Complainant’s parent company. The dominant and distinctive feature of the domain names in dispute is a combination of the trademarks OSRAM and SYLVANIA. Inclusion of the generic wording “online.com” and “catalog.com” does not impact the consumer perception that the disputed domain names are confusingly similar to the Complainant’s trademarks.
No Legitimate Interest
Complainant submits that Respondent cannot claim or show any rights to the domain names in dispute that are superior to Complainant’s rights in the trademark SYLVANIA. Nor can Respondent demonstrate that it was unaware of this trademark at the time it registered the domain names in dispute.
Since Complainant’s trademark SYLVANIA is well-known and Respondent has no rights in the trademark SYLVANIA, the only reason why Respondent could have wanted to register a domain name that includes the trademark SYLVANIA was that he intended to trade upon the fame of that trademark by intentionally attempting to attract for commercial gain Internet users to Respondent’s web sites. There can be no good faith reason for the Respondent to register domain names that so prominently feature the trademark SYLVANIA.
Where, as here, the trademark SYLVANIA is so well known and recognized, there can be no legitimate use by Respondent.
There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the domain names in dispute. Respondent is not commonly known by those domain names, and is not making legitimate non-commercial or fair use of those domain names.
Bad Faith Registration and Use
Complainant submits that Respondent’s registration of the domain names at issue was in bad faith because such registration violated the terms of Respondent’s registrar’s Domain Registration Agreement, and specifically the provision that Respondent represents that to the best of its knowledge and belief, neither the registration of the domain name nor the manner in which it is used infringes the legal rights of a third party and that the domain name is not being registered for any unlawful purpose. Given the fame of the trademark SYLVANIA, Respondent’s offer to sell the domain names in dispute, and the use of those domain names to feature sponsored links, it is clear that registration violated the Domain Registration Agreement.
Respondent has sought to profit from an unauthorized association with the trademark SYLVANIA by trading upon the fame and goodwill of that trademark, by intentionally attempting to attract Internet users to Respondent’s web site “link farm” that features advertisement and sponsored links.
Bad faith registration and use is also evident since the Respondent offers the domain names in dispute for sale to the general public. Notification of the availability of the domain names appears at submitted copies of pages from web sites using the domain names, as well in the titles of those pages at those sites which include a hyperlink to “www.sedo.com” at which the domain names are offered for sale.
Bad faith registration and use is also evident since Respondent sells products that directly compete with Complainant, as evidenced by a submitted Web page from a site of Respondent.
Given the fame of the trademark SYLVANIA, it is not possible to conceive of a use by Respondent of the domain names in dispute that would not constitute and infringement of Complaint’s rights in that trademark.
Finally, Complainant argues that the domain names in dispute comprise the famous trademark SYLVANIA along with a generic or descriptive word. Such registration and use is evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The certification required by Paragraph 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by Paragraph 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
In this case, Complainant has provided the required Paragraph 3(b)(xiv) certification, and additional documents and affidavits. The Panel finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.
Respondent has made no response to the Complaint. Given the default of the Respondent, the Panel is entitled to and does draw the inference that all reasonable and supported facts alleged in the Complaint are true. See Paragraph 14(b) of the Rules.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements by a preponderance of the evidence to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the trademark SYLVANIA, by reason of its ownership of various United States trademark registrations including No. 434,729.
The Panel finds that Complainant has not established rights in the trademark OSRAM. No registrations owned by or licensed to Complainant have been identified, and no evidence of use of OSRAM as a trademark has been introduced. Complainant has shown, however, use of “Osram” as part of its corporate and trade name “Osram Sylvania.”
The domain names in dispute are distinguished from the trademark SYLVANIA only by the generic terms “catalog” and “online”, by the generic top level domain name “.com”, and by the term “Osram.” It is well established that confusing similarity is not avoided by the addition of generic terms to trademarks. See Telstra Corporation Limited v. Peter Lombardo et al, WIPO Case No. D2000-1511 (inclusion in the domain names of generic wording along with the trademark TELSTRA found confusingly similar). The likelihood of confusion is exacerbated by the inclusion of the term “Osram” that is part of Complainant’s corporate and trade name.
The Panel finds that Complainant has met its burden of proof under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to put forward some evidence to show that it does have rights or legitimate interests pursuant to Policy Paragraph 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial 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.
Complainant has demonstrated that the trademark SYLVANIA is a famous mark.
The use of the domain name in dispute by Respondent consists of “parking” web pages (at the site “www.sedoparking.com”) that include “sponsored listings” to third party, commercial web sites. These pages state, “This domain name may be for sale by its owner.” At the site “www.sedo.com”, each domain name is listed for sale for the some of 10,000 Euros.
Because the trademark SYLVANIA is a famous mark, and because the trademark SYLVANIA was registered numerous times and long prior to the registration of the domain names in dispute, the Panel accepts Complainant’s contentions that Respondent was aware of that trademark at the time that Respondent committed the acts complained of. Thus, Respondent cannot say that it used the domain name in dispute before notice of the dispute, or that its use of that domain name was in conjunction with a bona fide offering of goods and services. See Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024 (“given the HARRODS mark’s reputation, the Panel finds it unlikely that (i) the Respondent could commercially use the Domain Name without violating Complainant’s trademark right, and (ii) Respondent would have selected the Domain Name without knowing the reputation of that mark”); see also McNeil Nutritionals, LLC v. Prepress Consultants et al, NAF Case No. FA 1043195 (finding that use of the domain name could not be without notice of the dispute or bona fide given the prior registration of the trademark SPLENDA).
Respondent also cannot say that it is known by the domain name (its name being iLighting Solutions Inc.).
Respondent also cannot say that its use is non-commercial or fair use, in that the “sponsored links” clearly show the commercial nature of Respondent’s use.
The Panel finds that Complainant has met its burden of proof under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of Paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Paragraph 4(a)(iii) of the Policy can be established.
Paragraph 4(b) reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 web site 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 web site or location or of a product or service on your web site or location.
Proof of Paragraph 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, NAF Case No. FA 406512 (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy Paragraph 4(a)(iii)); See also Graman USA Inc. v. Shenzhen Graman Indus. Co., NAF Case No. FA 133676 (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Lack of rights or legitimate interest under Policy Paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy Paragraph 4(a)(iii).
Respondent’s actions here come within the purview of Paragraphs 4(b)(i) and 4(b(iv) of the Policy.
The amount for which Respondent seeks to sell each of the domain names at issue, 10,000 Euros, is clearly in excess of any costs to acquire those domain names. Given that the trademark SYLVANIA is a widely known mark, the Panel believes that the only motivation for Respondent to acquire the domain names was to sell the domain names to Complainant or to one of its competitors. See AT&T Corp. v. rnetworld, WIPO Case No. D2006-0569 (“It is hard to imagine a good-faith reason for the Respondent’s registration of the Domain Name and attempt to resell it by auction, given the fame of the marks, the Respondent’s actual knowledge of the Complainant, and Respondent’s explicit recognition of the potential for diverting Internet traffic by creating a likelihood of confusion. The Respondent has certainly not offered such a reason to rebut the inferences drawn by the Complainant and the Panel”).
The web pages at which Respondent uses the domain names in dispute are clearly commercial. These web pages create a likelihood of confusion with the trademark SYLVANIA and with Complainant in order to divert users to the web pages using those domain names. The intent of Respondent to do so can be assumed from the fame of the SYLVANIA mark, and from the fact that Respondent is a purveyor of lighting products from the competitors of Complainant (e.g., Westinghouse, Lights of America). See Twiflex Limited v. Industrial Clutch Parts Ltd., WIPO Case No. D2000-1006 (use of domain name featuring links to manufacturers other than the complainant constitutes bad faith in that the domain name was used for the purpose of diverting customers to competitors).
The Panel finds that Complainant has met its burden of proof under Paragraph 4(a)(iii) 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 names <osramsylvaniacatalog.com> and <osramsylvaniaonline.com> be transferred to the Complainant.
Bruce E. O’Connor
Dated: March 6, 2008