WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Osram Sylvania, Inc. v. iLighting Solutions Inc., Jeff Chung Case No. D2008-1899 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 iLighting Solutions Inc., Jeff Chung, Los Angeles, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Domain Names”) are registered with Netfirms, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2008. On December 12, 2008, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the Domain Names. On December 24, 2008, Netfirms, Inc. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 20, 2009.
The Center appointed Dana Haviland as the sole panelist in this matter on January 23, 2009. 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 SYLVANIA trademark, as evidenced by numerous United States trademark registrations registered and renewed from December 2, 1947 to date, and reflecting continued use of the mark from 1939. Complaint, Exhibit L.
The Domain Names , , , and were registered by Respondent on October 27, 2007. Complaint, Exhibits A-D. The Domain Name was registered by Respondent on November 20, 2007. Complaint, Exhibit E. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Names are identical or confusingly similar to Complainant's SYLVANIA trademark in which Complainant asserts prior rights, that Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
Complainant has shown that it is the owner of the trademark SYLVANIA, used by Complainant in connection with lighting devices and other products. Complainant owns numerous United States federal trademark registrations for its SYLVANIA mark, and variations thereof, dating back to December 2, 1947 and reflecting use of the SYLVANIA mark since 1939.
Respondent's Domain Names are confusingly similar to Complainant's SYLVANIA mark, which has been incorporated into each of the Domain Names, together with one or more of the generic and descriptive words “lighting”, “catalog”, “supply,” and corporate abbreviations “inc” and “co”. (The Domain Name also incorporates the first portion of Complainant's corporate name, Osram, which Complainant asserts is a registered trademark owned by its parent company). The inclusion of these generic and descriptive words does not negate the confusing similarity of the Domain Names to Complainant's SYLVANIA mark. On the contrary, the inclusion of the word “lighting”, which is descriptive of Complainant's use of its mark, in four of the Domain Names, as well as the inclusion of Complainant's corporate name Osram Sylvania in one Domain Name, add to the confusing similarity of these Domain Names to the SYLVANIA mark.
Many UDRP cases have held that the addition of descriptive or generic wording to a mark satisfies paragraph 4(a)(i) of the Policy, requiring that a disputed domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company,WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey,WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea,WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.
Complainant has shown that each of the Domain Names is confusingly similar to Complainant's Mark and has thus satisfied the first element of its claim under Section 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or
(iii) respondent is 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.
Complainant asserts that 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, that Respondent has not been commonly known by the Domain Names, and that Respondent has not made any use of the Domain Names for either a bona fide offering of goods and services nor any legitimate noncommercial or fair use of the Domain Names under paragraph 4(c) of the Policy. Complainant contends that Respondent therefore has no rights to or legitimate interests in the Domain Names, as required by paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case with respect to paragraph 4(a)(ii) and shifted the burden of production to Respondent to show that it has a particular right or legitimate interest in the Domain Names under paragraphs 4(a)(ii) and 4(c) of the Policy.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Starwood Hotels & Resorts Worldwide, Inc. , The Sheraton, LLC , Worldwide Franchise Systems, Inc. , Sheraton International, Inc. v. KerryWeb Enterprise, Inc , North West Enterprise, Inc. Kerryweb, Steve Kerry,WIPO Case No. D2006-0201. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is ‘uniquely within the knowledge and control of the respondent'”. Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416. Respondent has not asserted any right or interest in the Domain Names in this case and has presented no evidence in opposition to Complainant's assertions in this regard.
The Panel finds that Respondent has no rights or legitimate interests in respect of any of the five Domain Names, and that Complainant has thus shown the second element of its claim, pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Complainant contends that Respondent has registered and is using the Domain Name in bad faith, alleging facts relevant to a claim pursuant to paragraph 4(b)(iv) of the Policy. Complainant has shown that Respondent has engaged in a pattern of registering domain names incorporating Complainant's widely known SYLVANIA mark for commercial purposes, including not only the five Domain Names at issue in this case, but two others simultaneously registered by Respondent which were the subject of a prior UDRP proceeding. Osram Sylvania, Inc. v. iLighting Solutions Inc.,WIPO Case No. D2008-0003 (transferring domain names and to Complainant). The panel in that case found, inter alia, that Respondent had registered and used the domain names incorporating Complainant's SYLVANIA mark in bad faith, under paragraph 4(b)(iv) of the Policy:
“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).”
In this case, Complainant has shown that at the time of filing of the Complaint, the Domain Names were being used for commercial purposes. Three of the five Domain Names in question , and resolved to parking sites with advertising links for commercial profit. Complaint, Exhibit M. These three sites were also advertised for sale to the public. A fourth Domain Name, , resolved to a commercial website linked to the website “www.LEDR”, which appears to be a lighting company competitor. Id. The fifth Domain Name, resolved to a domain parking company website, .
The evidence of Respondent's multiple registrations of Domain Names incorporating Complainant's widely known SYLVANIA mark and Respondent's use of the Domain Names for commercial profit, together with Respondent's failure to respond or produce any contrary evidence, supports an inference that by using the Domain Names, Respondent has intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant's SYLVANIA mark. The evidence is thus sufficient to establish Respondent's bad faith registration and use of the Domain Names pursuant to paragraph 4(b)(iv) of the Policy. Ticketmaster Corporation v. Contractor,WIPO Case No. D2008-0579; Osram Sylvania, Inc. v. iLighting Solutions Inc., supra.
The Panel finds that Complainant has shown bad faith registration and use of the Domain Names, satisfying the third element of its claim in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
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, , , , and be transferred to Complainant.
Dana Haviland
Sole Panelist
Dated: February 2, 2009
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