WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lamps Plus, Inc. v. Cai Yu
Case No. D2007-1061
1. The Parties
The Complainant is Lamps Plus, Inc., Chatsworth, California, United States of America, represented by Fulbright & Jaworski, LLP, United States of America.
The Respondent is Cai Yu, Guang Zhou, Guang Dong, China.
2. The Domain Name and Registrar
The disputed domain name <lampsplus.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 23, 2007, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the domain name at issue. On July 26, 2007, after several reminders, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 3, 2007. 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”), 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 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2007.
The Center appointed M. Scott Donahey, Linda Chang and Dr. Colin Yee Cheng Ong as panelists in this matter on September 21, 2007. The Panel finds that it was properly constituted. Each member of 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.
The Registration Agreement is in Chinese. The Complaint was filed both in Chinese and English. The Respondent has been notified of the Complaint and its contents in both Chinese and English. The Respondent has failed to file a Response. The language for the purpose of this decision will be handed down in the English language.
4. Factual Background
The Panel has looked at the Complainant’s submissions and indices containing various attached printouts from various Web sites showing use of the trade name “Lamps Plus” and the Complainant’s letters relating to the Complainant. The Panel finds that the Complainant owns valid and subsisting rights as well as trademark registration. The Complainant has for more than 20 years used the LAMPS PLUS mark both to identify its goods and services as well as the name of the company. The LAMPS PLUS mark has been registered as a federal trademark with the United States Patent and Trademark Office (“USPTO”) since September 10, 1985. The Complainant owns several domain names that direct to Lamps Plus’ main Internet Web site “www.lampsplus.com” and this Web site was registered as a domain name in 1997. The Respondent does not appear to use the domain name as the address of an active Web site
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
Since it was established in 1976, Lamps Plus is the largest specialty lighting company in the United States of America and operates 47 state-of-the-art superstores throughout the Western United States of America to serve over five million customers each year.
Lamps Plus’ net revenues in fiscal 2006 were more than US$228 million and that over the past two years, the Complainant spent more that US$35 million on advertising and promoting its stores, products and services. It contends that Lamps Plus’ products and services have generated significant attention in the media including references to Lamps Plus products over the last few years.
It had since the mid-1980’s distributed multi-page advertising flyers that prominently feature the LAMPS PLUS mark and advertised various Lamps Plus products to households throughout the Western United States of America eight times per year. It contends that over the past four years, the total mailings to households totalled 32-40 million mailings per year.
The Complainant contends that the “www.lampsplus.com” Web site that was registered as a domain name in 1997 generates, on average, more than million “hits” from visitors per month. In addition to the fact that all of Lamps Plus’ domain names consist entirely of the registered trademark, the LAMPS PLUS mark is incorporated into many of the individual “pages” within the site and offers more than 6,000 items for on-line purchase which is accessible everywhere in the world by anyone with Internet access. In 2004, Lamps Plus was recognized as one of the Top 50 Retailing Sites by Internet Retailer’s Best of the Web survey for its “www.lampsplus.com” Web site.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. According to paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with paragraph 14 (b), the Panel shall “draw such inferences there from as it considers appropriate.”
The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the domain name. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy.
( PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc./ Titan Net/ NOLDC, Inc., WIPO Case No. D2006-0808).
The Panel should not decide in the Complainant’s favor solely because of the reason of the Respondent’s default ( Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521 and Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In line with such provision, the Complainant must prove two limbs – that it enjoys the trademark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698;
The Panel finds that the Complainant has been successful in proving these two aspects. First, the Complainant enjoys trademark rights over the trademark LAMPS PLUS both through its trademark registration as well as extensive usage via the Internet, which is reachable from any country. Secondly, the disputed domain name, which wholly incorporates the Complainant’s trademark LAMPS PLUS is confusingly similar to the Complainant’s trademark LAMPS PLUS.
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
Although the trademark LAMPS PLUS, appears to be merely descriptive of the products and services of the Complainant, the USPTO has issued a trademark registration to the Complainant. As such the mark is entitled to a rebuttable presumption that the mark is inherently distinctive. The Respondent has submitted no evidence on this point. The Panel has to respect the trademark as inherently distinctive, regardless of whether or not its inherent distinctiveness is weak.
The Panel thus finds that the domain name <lampsplus.mobi> is identical to LAMPS PLUS mark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(b)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name.
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among Panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy or any other right or legitimate interest, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent’s registration of the domain name prior to notification of this dispute was not in connection with a bona fide offering of goods or services. The Respondent is neither affiliated with Lamps Plus, nor has Lamps Plus granted the Respondent the right or permission to use its famous LAMPS PLUS trademark.
As previously held by other WIPO Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant” (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001 and Drexel University v. David Brouda, WIPO Case No. D2001-0067).
The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical to the Complainant’s mark.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made a non-commercial or fair use of the disputed domain name.
Under these circumstances, the Panel finds the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of what constitutes bad faith registration.
Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (see Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The Panel had debated as to whether or not the trademark can be said to be a famous mark. Although the mark is registered in the United States of America and entitled to a presumption of distinctiveness, it was felt to be on the weak side of the distinctiveness scale as it is descriptive of the goods offered by the Complainant. The geographical territory in which the Complainant sells its goods (exclusive of its online Internet activities) is rather limited, as it appears to be mainly in the western United States of America. Arguably it may be hard for a registrant in China to know of a U.S. registered mark and the business of a company that is geographically active only wholly within the western United States of America. However, the Complainant had pointed out that it has a presence on the world wide web and that Respondent’s city of residence is in the central location in China where lighting products are manufactured for import and distribution to the United States of America. The Complainant also has commercial relationships with several manufacturers in this area of China.
The Panel views that the fact that the Respondent is from an area where the Complainant has had business relationships for years has provided the Panel with sufficient belief that the Respondent in all likelihood knew about the trademark LAMPS PLUS when he registered the domain name at issue.
In addition, the Complainant attempted to contact the Respondent using the contact information listed in Whois and received no response. Finally, the Respondent also failed to respond to the Complaint in this matter. Accordingly, under these facts and circumstances, the Panel finds that the domain name was registered and is being used in bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Accordingly, the Panel finds that the Respondent registered and used the domain name <lampsplus.mobi> in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 name, <lampsplus.mobi> be transferred to the Complainant.
|
Dr. Colin Yee Cheng Ong | |
M. Scott Donahey | Linda Chang |
Dated: October 11, 2007