WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Osram Sylvania, Inc. v. Jason Blevins Case No. D2009-0233 1. The Parties
The Complainant is Osram Sylvania, Inc. of Danvers, Massachusetts, United States of America, represented by Cantor Colburn LLP, United States of America.
The Respondent is Jason Blevins of Hubert, France. 2. The Domain Names and Registrar
The disputed domain names and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2009. On February 23, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On February 24, 2009, Melbourne IT Ltd 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” 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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 2, 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
The following facts are taken from the Complaint.
The Complainant is in the business of electric lighting and other things. It began use of the SYLVANIA trademark in the United States of America (USA) in 1939. The company's marks are well known and heavily advertised in the USA and other countries.
A specimen current and valid United States federal trademark selected from a file of 15 submitted is:
SYLVANIA, Reg. No. 2875127, international classes 7, 9, 11, filed June 16, 1999, registered August 17, 2004
No facts are available about the Respondent.
The disputed domain names appear to have been registered on November 18, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that it holds valid current registrations for the trademark SYLVANIA and submits evidence in support. It says that it is a major and well known company, for example spending more than US$26 million on advertising during the past ten years. The SYLVANIA brand is promoted by, for example, sponsorship of automobile racing.
The Complainant submits that several of the referenced trademark registrations are incontestable within the meaning of Section 33(b) of the Lanham Act, and all were registered or used long prior to the Respondent's registration of the disputed domain names. The trademark has been held to be widely known in the UDRP context (Osram Sylvania, Inc. v. iLighting Solutions Inc., Jeff Chung,WIPO Case No. D2008-1899).
The Complainant contends that the disputed domain names are confusingly similar to its trademark. The domain name is effectively identical, and is confusingly similar, to marks owned or licensed by the Complainant. The dominant and distinctive feature of the disputed domain names is a combination of the trademarks OSRAM and SYLVANIA, to neither of which can the Respondent assert legitimate rights. The inclusion of words such as “Inc” does not detract from the confusion. The Complainant cites a number of previous UDRP decisions that it considers to have precedent value.
Similarly, it is contended, the inclusion of the Respondent's name in does not detract from confusing similarity but suggests that the Respondent is affiliated with the Complainant, which he is not.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent cannot show any rights to the disputed domain names or demonstrate that he was unaware of the Complainant's trademark at the time of registration of the disputed domain names. The Respondent could only have wanted to register a domain name incorporating the Complainant's trademark in order to trade upon its fame by attempting to mislead consumers as to its affiliation with the Complainant. The Complainant cites a number of previous UDRP decisions that it considers have precedent significance.
The Complainant asserts that there is no relationship between it and the Respondent that could give the Respondent authority to use the disputed domain names. The Respondent is not commonly known by the disputed domain names and is not making legitimate noncommercial or fair use of them. The Respondent's only apparent purpose in registering the disputed domain names was to trade upon the fame and goodwill of the Complainant's trademark by creating the false impression that he is somehow affiliated with the Complainant.
The Complainant further contends that the disputed domain names were registered and are used in bad faith.
The Complainant submits, with citations of previous UDRP decisions, that its trademark is so obviously connected with a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
The Respondent's passive holding of the disputed domain names supports a contention of bad faith registration and use. The Respondent can demonstrate no evidence of actual or contemplated good faith use.
The Respondent has sent email correspondence intended deliberately to deceive third parties by claiming falsely to be the “Director IR for Osram Sylvania” and providing an email address associated with “Jason@”.
The Complainant's counsel sent a letter to the Respondent requesting cancellation of the disputed domain names by the Respondent. The letter was returned to sender because the address provided by the Respondent to the registrar was incorrect. The Complainant submits evidence of this exchange. Thus the Respondent has concealed its identity and has provided false contact details in violation of the registrar's Domain Name Registration Agreement, section 18. The Complainant says, with citations, that this is evidence of bad faith registration and use.
By way of remedy the Complainant requests the transfer to it of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant is required to prove that it has rights in a trademark to which the disputed domain names are confusingly similar, respectively. The Panel has examined the evidence of the Complainant's ownership of various SYLVANIA trademark registrations and is satisfied as to its rights in those trademarks. The disputed domain names are and . Each contains the word SYLVANIA, being the Complainant's trademark.
In general terms, it is usually held in disputes under the UDRP that the prominent presence of a recognisable trademark in a domain name is probably sufficient to amount to confusing similarity with the trademark, irrespective of any dilution with other words or letters (InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Cafe,WIPO Case No. D2000-0068; Infos Inc. v. Infospace Technology Co. Ltd.,WIPO Case No. D2000-0074; InfoS, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; InfoS, Inc. v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069).
The additional words or letters are “osram” and “inc” in the case of the disputed domain name . One of these words, OSRAM, is another well-known trademark of the Complainant. The other, “inc”, is a standard corporate designation that in the Panel's view adds to the degree of confusion by making the disputed domain name match the Complainant's corporate name precisely.
The other disputed domain name, , features the Complainant's trademark SYLVANIA prominently, as well as OSRAM. Internet users seeking the Complainant's business by searching for its trademark SYLVANIA in combination with other search terms would be likely to find the Respondent's domain name listed among the search results because of the elements of similarity.
The Panel finds confusing similarity between each disputed domain name and the Complainant's trademark to be proven within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain names. In setting out a prima facie case to this effect the Complainant says that it has not in any way licensed or authorised the Respondent to use its trademark. Furthermore the Complainant, upon reasonable enquiry, cannot find any evidence of the Respondent's bona fide use of the disputed domain names in trade, or of having been known by similar names, or of having used the disputed domain names in a fair or noncommercial manner.
The onus is upon the Respondent to rebut the Complainant's evidence in the terms of paragraph 4(c) of the Policy or otherwise. The Respondent has not replied.
Having reviewed all available evidence the Panel cannot see any evidence that would support a claim of rights or legitimate interests by the Respondent, and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 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.
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The disputed domain name has received at least one instance of usage as an on-line location in the form of an email address. According to the evidence, on November 20, 2008, an email letter in business style was sent to a supplier enquiring about computer equipment. The letter bore a typed letterhead purporting to be Osram Sylvania Product [sic] Inc with the Complainant's correct physical address, and was over the name “Blevins Jason, Director IR, Osram Sylvania”. Significantly the addressee was asked to reply to the email address “Jason@”, being an on-line location of one of the Respondent's disputed domain names. The Complainant states that the company title and attribution claimed by the author of the letter are false. It is noted that the letter enquired about delivery of the equipment “to anywhere in the state”. It has been the experience of the Complainant (see below) that the physical address given by the Respondent in its details as the purported domain name registrant cannot be contacted. It may reasonably be concluded from this episode that, on the balance of probabilities, the Respondent has attempted to attract, for commercial gain, an Internet user to his on-line location by confusion with the Complainant's trademark. The Panel finds bad faith registration and use of the disputed domain name to be proven.
Otherwise, the Respondent has made little or no use of the disputed domain names, constituting effectively a passive holding. As widely accepted in UDRP decisions, the registration of a domain name comprising a well-known trademark without any definable purpose and holding it without bona fide use may be sufficient in itself to constitute bad faith registration and use (Telstra Corporation Limited vs. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds the passive holding of the disputed domain name to have constituted bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
On December 12, 2008, the Complainant sent a cease and desist letter to the Respondent at the contact address he provided to the domain name registry. The letter was sent back to the Complainant on February 9, 2009, officially marked as undeliverable. The Respondent's failure to reply to the Complainant's cease and desist letter, whether resulting from the provision of an unreachable address or otherwise, is found by the Panel to be further evidence of bad faith (Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632).
The Panel finds that the Complainant's trademark SYLVANIA is so well known internationally that the Respondent's registration and holding of the two domain names based upon it is, in and of itself, sufficient in this case for a finding of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
For all the various reasons given above, taken together, the Panel is satisfied that the disputed domain names were registered and have been used in bad faith within the meaning of 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 the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: April 16, 2009
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