The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Nick Nick of Cardiff, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2014, the Registrar 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 proceeding commenced on June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. On June 26, 2014, the Respondent sent email communications indicating that he had already consented to the transfer of the disputed domain name to the Complainant, including the furnishing of the necessary transfer code. The same day, the Center acknowledged receipt and invited the Complainant to submit a request for suspension of the proceeding. On July 4, 2014, the Complainant indicated that it would not submit a request for suspension of the proceeding, stating in part “the Respondent refused to consent to the transfer of the disputed domain name”. The Respondent did not submit any formal response. Accordingly, the Center informed the parties of the commencement of the panel appointment process on July 17, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 22, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Complainant is an international lighting company based in Germany. It or its predecessor companies have done business in that industry under the name Osram for more than a century. The Complainant owns more than 500 trademarks (some dating as far back as 1906), registered in national offices around the world, that consist of or contain the name OSRAM, more than 100 such international trademarks, and more than 160 domain names that contain the word “osram”.
The Respondent registered the disputed domain name in March 2014. Since inception the website at the disputed domain name consists of pay-per-click hyperlinks to lighting-related products.
The Complainant first contacted the Respondent on March 14, 2014, by electronic mail, demanding transfer of the disputed domain name. Email communication between the parties continued through April 28, 2014. At one point the Respondent stated that “the authorization code [for transfer of the disputed domain name] will be released”, and apparently did release the code. However transfer could not be effected because, at least according to the Complainant, the Respondent did not furnish its domain name provider with the necessary consent. In his second informal communication with the Center and the Respondent, on July 9, 2014, the Respondent stated “You [the Complainant] have had the authorisation code, full authorisation from myself in writing yet I am clueless as to why you do not pass this to the client”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to certain of its registered trademarks and confusingly similar to others, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent registered and has used the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. His informal communications following commencement of this proceeding are summarized above; none addressed the three elements of paragraph 4(a) of the Policy pertinent to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant was apparently unable to verify the language of the registration agreement, but requested that the language of this proceeding be English on the ground, among others, that the parties’ pre-Complaint correspondence took place in that language. For that reason, and because the Registrar confirmed that the registration agreement is in English, the Panel determines that English shall be the language of the proceeding. B. Possible Consent to Transfer
The Complaint and the parties’ pre-Complaint communications raise the issue of whether the Respondent has consented to a transfer. This in turn raises a preliminary question of whether the Panel should simply order transfer without addressing the merits of the Complaint, or proceed to analyze the Complaint under paragraph 4(a) of the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.13, reads as follows:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
This Panel discerns two questions that inform his determination on this matter: has the Respondent in fact consented to transfer; and should a transfer be (to borrow two terms from United States civil procedure) with prejudice (in the above quotation, “on the merits”) or without prejudice (“on a no-fault basis”)?
While each party states – or at least at one point stated - that the answer to the first question is “yes” the Panel is not so sure. Had the Respondent in fact consented and said so to his provider, the disputed domain name would have been transferred already. While neither party provides a complete explanation why a pre-Complaint transfer was not completed, each acknowledges that written consent in some form1 from the Respondent to the Registrar is necessary and has not been provided. In these circumstances the Panel – without ascribing an ulterior motive to either party2 - deems that consent has not been given, and will proceed to consider this dispute on the merits. For the reasons stated in part C, that yields a transfer of the disputed domain name, which (to answer the second question above) is with prejudice. C. Paragraph 4(a) of the Policy
The Complainant has established each of the necessary Policy elements with ample evidence. The disputed domain name is identical to many of the Complainant’s international and nationally registered trademarks; the Respondent has demonstrated and the record reveals no rights or legitimate interests in the disputed domain name; and the evidence furnished by the Complainant demonstrates that the Respondent’s pay-per-click use falls clearly within the example of bad faith set out in paragraph 4(b)(iv) of the Policy. The content at the parking page to which the disputed domain name resolves has continuously since the Respondent’s acquisition included links that indicate knowledge of the Complainant and its marks, so there is no question that the Respondent both registered and used the disputed domain name in bad faith.
The Panel adds two additional observations. First, one of the Complainant’s contentions is that by “consenting” to transfer the Respondent has “admitted” bad faith. From the quotation from the WIPO Overview 2.0 above, apparently some other panels have taken this approach. This Panel does not join them. An admission does not necessarily follow from “consent” as a matter of fact and a panel’s inference of such a concession is inconsistent with another consensus view in the WIPO Overview 2.0. In paragraph 4.6 the consensus view begins “A respondent’s default does not automatically result in a decision in favor of the complainant. […] the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP”. As in any UDRP proceeding, proof is still required.3 As a matter of fact, a domain name registrant may choose not to contest a complaint for many reasons not involving an admission of bad faith or any other Policy element. Limited value of the domain, limited resources, or general lack of interest are all possible, and none of these necessarily means a confession of wrongdoing under the Policy.
On a different subject, the Respondent’s choice of top-level domain (TLD), “.lighting”, adds to the confusing similarity of the disputed domain name to the Complainant’s mark and also indicates bad faith. A panel ordinarily ignores the TLD in evaluating the elements of paragraph 4(a) of the Policy. In special circumstances, however, the TLD should be taken into account.4 The Panel notes that such circumstances are likely to arise far more frequently in future, thanks to the recent expansion of available TLDs. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: July 25, 2014
1 The Complainant indicates that the Respondent must consent in writing directly to the Registrar, the Respondent replied that the Complainant may submit to the Registrar a copy of its consent given in writing to the Complainant.
2 On the Complainant’s part, a desire for a decision on the merits; on the Respondent’s part, a desire to prolong this proceeding to add to pay-per-click revenues from the disputed domain name.
3 As noted, the Complainant has provided evidence that carries its burden of proof under each necessary Policy element.
4 See, for example, The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS,WIPO Case No. DAM2010-0001, and GmbH v. Alan Lin,WIPO Case No. DME2009-0008.
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