WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Sinclare Vabalon, BHG
Case No. D2008-1045
1. The Parties
The Complainant is OSRAM GmbH, Munich, Germany, represented by Patent und Rechtsanwälte Hofstetter, Schurack & Skora, Germany.
The Respondent is Sinclare Vabalon, BHG, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Basic Fusion, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 11, 2008, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the domain name at issue. On July 17, 2008, Basic Fusion, 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2008.
The Center appointed Lone Prehn as the sole panelist in this matter on August 15, 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 Complainant is a German company registered under the name OSRAM GmbH. It is the owner of more than 500 trademarks consisting of or containing the word “OSRAM” in over 150 countries and regions, including (according to the provided evidence of trademark registration under the Madrid system):
IR 321818, registered on September 26, 1966
IR 501480, registered on April 1, 1986
IR 567593, registered on February 15, 1991
IR 676932, registered on April 16, 1997
The Complainant belongs to the OSRAM group of companies which was founded in Germany in 1919. The OSRAM group today employs more than 38,000 people and supplies customers in about 150 countries with opto-electronic components and modules. It develops and produces LED systems for a wide range of applications.
The Complainant is the owner of more than 141 domain names including the denomination “OSRAM”. The notoriety of the trademark OSRAM has been established in e.g. Osram GmbH v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004 and Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083.
The Complainant's products are marketed in the United States, Canada, Puerto Rico and Mexico under the trademarks SYLVANIA and/or OSRAM, and the Complainant is the owner of several domain names incorporating the trademarks OSRAM and SYLVANIA.
The Respondent registered the domain name on March 25, 2008. The domain name is active and resolves to a website showing a portal page with various links.
5. Parties' Contentions
A. Complainant
Concerning the first test under the Policy paragraph 4 (a)(i), the Complainant submits that the domain name is confusingly similar to trademarks in which it has rights. In this respect, the Complainant first contends that its company name, “Osram”, is protected as a common law trademark or as an unregistered trademark under German law. In addition, the Complainant relies on several hundred registered trademarks, consisting of or containing the term “OSRAM”. The Complainant further alleges that due to the extensive use of the OSRAM trademarks, the latter have become internationally well-known. It also points out that it is the holder of more than 141 domain names based on the denomination “Osram”. As far as the trademark SYLVANIA is concerned, the Complainant alleges that it is the owner of common law trademark rights as a result of use in the United States, Canada, Puerto Rico and Mexico, and that it is the holder of several domain names incorporating the terms OSRAM and SYLVANIA.
In the disputed domain name , the Respondent has simply changed the place of the letters “y/l” in SYLVANIA to SLYVANIA thus creating a domain name quasi-identical to the Complainant's trademarks and domain names.
Concerning the second test under the Policy paragraph 4 (a)(ii), the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. According to the Complainant, the Respondent is not the holder of a trademark right to OSRAM or SYLVANIA / SLYVANIA, the Respondent does not use the name “Osram” or “Sylvania/Slyvania”, and the domain name in dispute in connection with the offering of any own goods or services, and the Respondent is not an authorized dealer, distributor or licensor of the Complainant.
Concerning the third test under the Policy paragraph 4 (a)(iii), the Complainant argues that the Respondent registered and used the domain name in bad faith. In this respect, the Complainant alleges that it contacted the Respondent, informing it about its trademark rights and requesting the cancellation of the domain name. The Complainant submits that the Respondent is a typosquatter who uses the mistyped version of the word “sylvania” in order to divert business away from the Complainant and/or try to resell the domain name to Complainant for a profit. In addition, the Complainant contends that registration of a domain name incorporating a famous trademark constitutes bad faith under the Policy. The fact that the domain name at issue is quasi-identical to the Complainant's trademarks and domain names is a further factor supporting bad faith.
On this basis, the Complainant requests the transfer of the domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Having confirmed the Complainant's rights to the OSRAM mark (and indeed the notoriety of that mark), and the Complainant's rights to the trademark SYLVANIA, the Panel finds that the only difference between the disputed domain name and Complainant's trademarks OSRAM and SYLVANIA is that the position of the letters “y” and “l” have been changed in “sylvania/slyvania”. Therefore, the disputed Domain Name is quasi-identical to Complainant's trademarks OSRAM and SYLVANIA. The Panel finds for the Complainant under the first element of the Policy.
The Panel further believes (as discussed further under paragraph 6. C below) that Respondent has intentionally misspelled Complainant's trademarks in order to attract the flow of Internet users who have mistyped Complainant's URL address presumably enabling Respondent to increase the traffic to its website and derive revenue as a result – a practice known as “typosquatting” which has been clearly condemned in various panelists' decisions.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard. Thus, this Panel is satisfied that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names.
Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.
Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense or the inferences that the Panel may draw from the fact of a default (Rules, paragraph 14). If Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) or any other circumstance is present in its favor.
In view of the above findings, it is obvious that Respondent's only likely reason in registering and using the contested Domain Name is to benefit from the reputation of the renowned trademark OSRAM, and the traffic to the websites under the various OSRAM and SYLVANIA domain names, and illegitimately trade on it for commercial gain and profit. Such use of the Domain Name by Respondent cannot constitute a bona fide offering of goods and services. See Bayerish Motoren Werke AG v. Ivan Razin, WIPO Case No. D2005-0341.
Furthermore, the Panel notes that Respondent is not commonly known as an individual, business or organization under the Domain Name at issue.
In light of the above, the Panel considers that none of the circumstances required under paragraph 4(c) of the Policy exist, and concludes that Respondent had no rights or legitimate interests in the disputed Domain Name.
C Registered and Used in Bad Faith
It is a third condition that the Panel must find that the contested domain name was both registered and used in bad faith.
In the present matter, the Panel is satisfied that Respondent registered the domain name in bad faith insofar as he was, or should have been aware, of Complainant's prior rights in the notoriously well known trademark OSRAM. The Panel is also of the opinion that the Respondent has been aware of the traffic generated to the Complainant's websites under the various OSRAM-SYLVANIA domain names.
Complainant claims that Respondent's bad faith is further evidenced when using an incorrect spelling of the mark SYLVANIA in the Domain Name . The Panel agrees with Complainant and finds that Respondent has no justified reason to incorporate an obvious spelling variation in the disputed Domain Name . The most plausible explanation for such variation seems related to an attempt on the part of the Respondent to increase revenues and profits by additionally targeting those Internet users who mistype or ignore the proper spelling of the OSRAM SYLVANIA marks and directing such consumers to different commercial websites which in return remunerate Respondent for each corresponding click-through giving access to their sites.
Accordingly, the Panel decides that deliberately using misspelling variation in the disputed Domain Name constitutes a further factor of Respondent's bad faith in registering and using the Domain Name . See Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713 in which the panel found that the typosquatting facts in this proceedings evidenced Respondent's bad faith in registering and using the disputed domain names. See Nasdaq Stock Market, Inc. v. N, N and N,WIPO Case No. D2001-1492 supra; deciding that the Internet and financial communities would be seriously confused if mistyping would lead to the megaGo website.
Respondent, by using the disputed Domain Name, is in the Panel's view intentionally misleading the consumers and confusing them so as to lure them to its website making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate revenue for each click-through by online consumers of the sponsored links. Respondent is therefore illegitimately capitalizing on the OSRAM and SYLVANIA trademarks. Such finding indicates Respondent's bad faith in the registration and use of the disputed Domain Name (see Philip Morris Incorporated v. ,WIPO Case No. D2003-0004).
In light of all the above findings, the Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likehood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website.
The Panel considers, based on all the above elements, that Complainant has established the bad faith of Respondent in registering and using the disputed Domain Names in accordance with paragraph 4(b)(iv) of the Policy.
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.
Lone Prehn
Sole Panelist
Dated: August 29, 2008
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