WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION OSRAM GmbH v. Transure Enterprise Ltd. Case No. D2008-1032 1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany.
The Respondent is Transure Enterprise Ltd. of British Virgin Islands, Over Seas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 9, 2008, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the domain name at issue. On July 10, 2008, A, Inc. 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”), 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 July 28, 2008. The administrative proceedings were suspended from August 18, 2008 until September 17, 2008 upon the Complainant's request, received by the Center on August 18, 2008 via e-mail. The administrative proceedings were reinstituted on September 24, 2008 upon the Complainant's request, received by the Center on September 22, 2008 by fax. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on October 7, 2008. 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 summary sets out the uncontested factual submissions made by the Complainant:
4.1 The history of the Complainant and the OSRAM mark began towards the end of the first world war when its co-founders, Siemens & Halske, AEG and Deutsche Gasglühlicht AG (DgA), decided to combine forces to provide and market incandescent lamps under a single company. In November 1918, DgA, the owner of the OSRAM trademark decided, however, to shift the light bulb manufacturing business to a single company and, hence, founded OSRAM Werke GmbH, which subsequently became OSRAM G.m.b.H. KG.
4.2 On June 30, 1929, International General Electric (GE), USA became a shareholder of OSRAM G.m.b.H. KG when it took over 16% of the shares held by AEG. OSRAM G.m.b.H. KG subsequently converted into OSRAM GmbH, a limited liability company, on July 1, 1956 for legal and financial reasons.
4.3 The company undertakes its activities using the name, trademark and service mark OSRAM in various jurisdictions around the world. It currently employs more than 38,000 employees and supplies its products to more than 150 countries. It manufactures its products in 49 sites spread across 19 countries and is one of two of the largest lighting manufacturing companies in the world.
4.4 The mark OSRAM was first registered by on April 17, 1906 as a trademark for “electrical incandescent and arc lamps”. The Complainant has since registered the OSRAM trademark and service mark in more than 150 countries and regions including 116 international trademarks.
4.5 The Complainant also owns more than 141 generic (gTLD) and country-code (ccTLD) top level domain names comprising the term “osram”.
4.6 The Complainant is responsible for the trademarks and domain names of the OSRAM group. 5. Parties' Contentions 5.1 Complainant
(a) The Complainant contends that the disputed domain name is confusingly similar or identical to the Complainant's trademark for the following reasons:
(i) the domain name comprises the OSRAM trademark; and
(ii) the only difference between the disputed domain name and the Complainant's trademark is the word “online”, which is a descriptive word and ought not impact the consumer's perception that the domain name is confusingly similar to the Complainant's trademark.
(b) The Complainant further states that the Respondent does not have any rights or legitimate interests in respect of the domain name as the Respondent:
(i) does not own the trademark OSRAM;
(ii) does not use the trademark OSRAM and the domain name in connection with the offering of goods or services; and
(iii) is not an authorized dealer, distributor, or licensor of the Complainant.
(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(i) the Respondent is a known cybersquatter (see F. Hoffmann-La Roche AG v Transure Enterprise Ltd., WIPO Case No. D2008-0422; Wolters Kluwer US Corporation v Transure Enterprise Ltd., WIPO Case No. D2008-0384);
(ii) the Respondent is offering the domain name for sale to the general public as the webpage states that “[t]his domain name may be for sale”;
(iii) the domain name resolves to a website that contains sponsored advertising links to websites that advertise services related to employment, hotels, travel, entertainment, and medical insurance. The Respondent, therefore, intends to generate Internet traffic arising from the consumer's mistaken belief that the domain name is connected to the Complainant in order to receive commercial gain;
(iv) the Respondent misleads consumers by diverting Internet traffic away from the Complainant's website in an attempt to generate business by luring potential customers to the Respondent's website;
(v) the registration of a domain name incorporating another famous name does not confer any rights or legitimate interests in the domain name to the Respondent; and
(vi) the Respondent uses the Complainant's well-known mark to direct Internet users to the website of a potential competitor. 5.2 Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith. 6.1 Identical or Confusingly Similar Trade Mark
The disputed domain name comprises the mark OSRAM in its entirety. The addition of the word “online”, by itself, merely lends the domain name a descriptive feature in that the domain name may resolve to a website featuring the online presence of an entity or product known as “Osram”.
From the Panel's perspective, this additional descriptive term is insufficient to distinguish the similarities between the OSRAM trademark and the domain name (see also Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma Sa v. Daniel Kunkel,WIPO Case No. D2008-0638; Repsol YPF S.A. v. Talk2middle Top Domain Reg,WIPO Case No. D2008-0556; Align Technology, Inc. v. Doug Wright,WIPO Case No. D2008-0300; Dow Jones & Company Inc. v. Ms. Sorokin,WIPO Case No. D2008-0027; Sanofi-aventis v. Debra Cook,WIPO Case No. D2007-1941; Driver and Vehicle Licensing Agency (DVLA) v. UK Hire Services,WIPO Case No. D2007-1904; Osram Sylvania, Inc. v. iLighting Solutions Inc.,WIPO Case No. D2008-0003; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511).
Based on the confusing similarity between the Complainant's trademark and the domain name in issue, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant. 6.2 Rights or Legitimate Interests in the Domain Name
The Complainant's assertions had not been rebutted by the Respondent to indicate whether it had rights or legitimate interests in the disputed domain name. The Respondent failed to answer whether it owned rights to the OSRAM mark or whether it was using the mark or domain name to offer goods or services. The Complainant had also clearly indicated that it had no dealings with the Respondent as a dealer, distributor, or licensor.
Moreover, the evidence adduced by the Complainant reveals that the website resolved by the disputed domain name is a commercial website with sponsored links. There does not, therefore, appear to be any grounds that the Panel can find to support a counter-argument that the domain name is being used for legitimate noncommercial or fair use.
Given the circumstances of its use and the notoriety of the OSRAM mark held by the Complainant, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant. 6.3 Registration and Use in Bad Faith
Having reviewed the evidence adduced by the Complainant and in particular the print-outs from the website at the disputed domain name, the Panel could not find any link between the Respondent and the mark OSRAM, except for the use of the mark OSRAM as part of the disputed domain name. The absence of such link suggests that the term “osram” was calculatively selected by the Respondent to form the domain name in order to ride on the established goodwill of the Complainant.
This finding is fortified by the fact that the disputed domain name resolves to a website that contains sponsored links to third party websites. It appears, therefore, that the Respondent seeks to generate Internet traffic (and, hence, commercial gain resulting from the flow of such traffic) resulting from the confusion which arises due to the similarities between the Complainant's widely known trademark and the domain name. In Digital Spy Limited v Moniker Privacy Services and Express Corporation,WIPO Case No. D2007-0160, the Panel held that “[r]egistering a domain name with knowledge of another company's rights in the name and with intention to divert traffic is evidence of bad faith”.
The Complainant has also adduced sufficient evidence for the Panel to conclude that the Respondent has engaged in a pattern of registering domain names containing third party trademarks. The Respondent has appeared in at least two past similar WIPO proceedings (see F. Hoffmann-La Roche AG v Transure Enterprise Ltd, WIPO Case No. D2008-0422; Wolters Kluwer U.S. Corporation v. Transure Enterprise Ltd.,WIPO Case No. D2008-0384). Such pattern of conduct is strong evidence supporting a finding of bad faith (See Société BIC v. LaPorte Holdings, LLC,WIPO Case No. D2005-0342).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant. 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 be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: October 21, 2008
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