ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Signify Holding B.V v. Sencia Limited Case No. DIE2023-0002 1. The Parties The Complainant is Signify Holding B.V, Netherlands (Kingdom of the), internally represented. The Registrant is Sencia Limited, Ireland. 2. The Domain Name and Registrar The disputed domain name is registered with IE Domain Registry Limited ("IEDR"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2023, via email. On June 30, 2023, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On June 30, 2023, IEDR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on July 3, 2023, providing the registrant and contact information disclosed by IEDR, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 5, 2023. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Registrant sent an informal email communication to the Center on July 7, 2023, and copied to the Center an email addressed to the Complainant dated July 13, 2023. In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on July 19, 2023. In accordance with the Rules, paragraph 5.1, the due date for Response was August 16, 2023. The Registrant did not submit a formal Response. On August 21, 2023, the Center informed the Parties of its commencement of panel appointment. page 2 The Center appointed Adam Taylor as the sole panelist in this matter on August 28, 2023. 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 supplies lighting products worldwide under the mark SIGNIFY. The Complainant owns a number of trade marks for SIGNIFY including International Registration No. 1389801, designating the European Union, registered on September 15, 2017, in classes 9, 11 and 42. The Complainant operates a website at "www.signify.com". The disputed domain name was registered on October 18, 2019. As of June 30, 2023, the disputed domain name was redirected to a website at "www.ilight.ie", which offered lighting products for sale. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the IEDR Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the Registrant has failed to comply with the applicable requirements for a bona fide offering by a reseller, that the disputed domain name carries a high risk of affiliation with the Complainant's mark and that the Registrant acted in bad faith by redirecting the disputed domain name to a website selling competing products. B. Registrant The Registrant did not reply formally to the Complainant's contentions. In its email of July 7, 2023, the Registrant stated that it believed that the case could be quickly resolved, that the traffic diverted to "www.ilight.ie" was negligible, if not non-existent, and that the Registrant had bought the disputed domain name "to protect our own business in 2020/21 as we found out that the product that we look after in Ireland (iLight) had been sold to Phillips/Signify and we did not know at the time whether this product was to be marketed as a brand within Signify or not." The Registrant added that it had no objection to "selling on" the disputed domain name. In its email of July 13, 2023, the Registrant added that it had no objection to transferring the disputed domain name "subject to purchase of same at going rate value", and that the disputed domain name has been bought in good faith "and should be transferred on in the same manner in good faith". 6. Discussion and Findings Under paragraph 1.1. of the IEDR Policy, the Complainant is required to prove on the balance of probabilities that:- page 3 - the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; - the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered or is being used in bad faith. A. Identical or Misleadingly Similar Based on the available record, the Panel finds the Complainant has shown rights in respect of a protected identifier for the purposes of the IEDR Policy. Under paragraph 1.3.1 of the IEDR Policy, "protected identifiers" include "trade and service marks protected in the island of Ireland". The Complainant owns an international trade mark that designates the European Union. This has effect within the island of Ireland and therefore constitutes a protected identifier. The Panel finds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the IEDR Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition1, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the first element of the IEDR Policy has been established. B. Rights in Law or Legitimate Interests While the overall burden of proof is on a complainant, panels have recognised that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Registrant lacks rights or legitimate interests in the disputed domain name. The Registrant has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the IEDR Policy or otherwise. Paragraph 3.1 of the IEDR Policy provides a list of circumstances in which the Registrant may demonstrate rights or legitimate interests in a disputed domain name. As to paragraph 3.1.1 of the IEDR Policy, the Registrant indicates that it acquired the disputed domain name due to the fact "that the product that we look after in Ireland (iLight) had been sold to Phillips/Signify and we did not know at the time whether this product was to be marketed as a brand within Signify or not." The Panel notes this assertion in itself is not sufficient to give rise to rights or legitimate interests in the disputed domain name. It is unclear whether the Registrant claims to be a reseller of the "iLight" products and, if so, whether that brand and/or some or all of the iLight products are actually those of the Complainant or have some sort of connection with the Complainant. However, even if the Registrant is a reseller of Complainantrelated products, that would not give rise to rights or legitimate interests under the IEDR Policy in the circumstances of this case. The consensus view of UDRP panels - as expressed in section 2.8 of 1 Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarity between the UDRP and the IEDR Policy, it is appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. page 4 WIPO Overview 3.0 - is that to establish a good faith offering in the circumstances when respondent is a reseller of the complainant's products, a respondent must comply with certain conditions (the "Oki Data requirements"). These criteria have also been applied under the IEDR Policy. See, e.g., Uni-cleaner Europa ApS v. Miltek Environmental Equipment Limited, WIPO Case No. DIE2021-0006. In this case, the Panel considers that the Registrant has failed to comply with the Oki Data requirements to accurately and prominently disclose the Registrant's relationship with the trade mark holder (assuming such a reseller relationship exists), to actually offer the goods and services at issue (i.e., goods under the SIGNIFY trade mark) and only to use the site to sell only the trademarked goods. If any of the products on the iLight site are unconnected with the Complainant, then the Registrant is effectively using the disputed domain name to redirect users to a website offering competing products in breach of the Oki Data requirements. However, even if all of the iLight products, and the iLight brand itself, are connected with the Complainant, that would not entitle the Registrant to register, and redirect to the iLight website, a domain name incorporating the SIGNIFY trade mark, i.e., nothwithstanding that both brands are being used to identify Complainant-related products. The Panel considers that would amount to taking an unfair advantage of the high risk of implied affiliation between the Complainant's trade mark and the disputed domain name under the IEDR Policy. WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel considers that the Registrant's use of the disputed domain name cannot be said to be bona fide. Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case. Based on the available record, the Panel finds the second element of the IEDR Policy has been established. C. Registered or Used in Bad Faith The Panel notes that for the purposes of paragraph 1.1.3 of the IEDR Policy, paragraph 2.1 of the IEDR Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith. The Panel considers that the Registrant has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark in accordance with paragraph 2.1.4 of the IEDR Policy. First, the disputed domain name is identical to the Complainant's trade mark. Second, the Registrant has used the disputed domain name to inappropriately redirect traffic to a website that offers goods/services of, similar to, or that compete with, those of the Complainant. See also the Panel's comments under the second element above. Based on the available record, the Panel finds the third element of the IEDR Policy has been established. page 5 7. Decision For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Adam Taylor/ Adam Taylor Sole Panelist Dated: September 14, 2023
Full & Egal Universal Law Academy