The Complainant is Siteco Beleuchtungstechnik GmbH of Traunreut, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Identity Protection Service / Amru Al-Kadhi, Spear Lighting of Surrey, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2014 against Identity Protection Service. On August 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 18, 2014 adding Amru Al-Kadhi, Spear Lighting as Respondent.
The Center verified that the Complaint together with the amendment to 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 August 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2014.
The Center appointed Andrea Mondini as the sole panelist in this matter on September 15, 2014. 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 Complainant belongs to the OSRAM group and is a leading manufacturer of lighting products under the SITECO trademark. The Complainant employs over 1,100 individuals worldwide.
The Complainant owns a number of trademark registrations comprised of the Siteco name, including International Registration No. 691387 for the trademark SITECO, which was registered on March 6, 1998 for lightings (class 11) and services in the lighting field (class 42) and extends to numerous countries.
The Complainant also owns more than 60 domain names referencing the SITECO trademark.
The disputed domain name was registered on February 12, 2014. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns many trademark registrations for the trademark SITECO, including International Registration No. 691387.
The Complainant contends that the disputed domain name is identical to the SITECO trademark, except for the addition of the Top-Level Domain ("TLD") designation ".lighting". The gTLD designation ".lighting" adds to the likelihood of confusion because it relates directly to the products associated with the trademark. Rights and Legitimate interests
The Complainant contends that the Respondent was never authorized or licensed to use the Complainant's SITECO trademark. The Respondent is not commonly known by that name. The Complainant contends that the disputed domain name is not being used in association with a bona fide offering of goods and services. The disputed domain name resolves to a web page which contains links to third party websites, functioning as pay-per-click ("PPC") advertisements. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant's SITECO trademark at the time that the disputed domain name was registered. The Respondent registered and is using the disputed domain name to trade on the goodwill of the Complainant's reputation and attract potential buyers to the Respondent's PPC site, which resolves to websites of Complainant's competitors. The Respondent, after receiving the Complainant's cease-and-desist letter, refused to transfer the disputed domain name to the Complainant and sought compensation in the amount of GBP 325. The Complainant contends that this shows that the Respondent has not registered and is not using the disputed domain name in good faith. The Complainant also notes that the Respondent was involved in a prior UDRP case (Louis Poulsen Lighting A/S v. Spear Lighting, Amru Al-Kadhi,WIPO Case No. D2014-0623) in which the Respondent had registered and used the domain name which contained the trademark of a major lighting manufacturer in Denmark. In that case, the panel had ordered the transfer of said domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the trademark SITECO, e.g. the International Registration No. 691387 .
The Panel further finds that the disputed domain name is confusingly similar to the Complainant's registered trademark SITECO. The disputed domain name is identical to the Complainant's registered trademark except for the addition of the TLD ".lighting". The addition of the TLD designation ".lighting" does not serve to distinguish the disputed domain name from the Complainant's trademark, but rather increases the likelihood of confusion, considering that the Complainant is a lighting manufacturer.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondent must have been aware of the Complainant's trademark rights in the SITECO trademark, especially considering that the chosen TLD ".lighting" clearly refers to the Complainant's products and business area. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant's trademark, and that the Respondent's use of the disputed domain name in association with a PPC site is not evidence of a bona fide offering of goods and services.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In this Panel's view, several circumstances show that the Respondent registered and is using the disputed domain in bad faith: (i) as already mentioned, the Respondent was obviously aware of the Complainant's trademark; (ii) the Respondent's PPC site resolves to websites of Complainant's competitors; (iii) after receiving the Complainant's cease-and-desist letter, refused to transfer the disputed domain name to the Complainant and sought compensation in the amount of GBP 325; and (iv) in a similar case, the Respondent had registered and used the domain name which contained the trademark of another major lighting manufacturer (see Louis Poulsen Lighting A/S v. Spear Lighting, Amru Al-Kadhi,WIPO Case No. D2014-0623).
The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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.
Andrea Mondini
Sole Panelist
Date: September 17, 2014
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