WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION OSRAM GmbH v. Jae Gyu Park Case No. D2008-1578 1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Patent-und Rechtsanwälte Hofstetter, Schurack & Skora, Germany.
The Respondent is Jae Gyu Park of Yongin, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2008. On October 17, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On October 20, 2008, OnlineNic, Inc. d/b/a China-C 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” 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 October 27, 2008. In accordance with the Rules, paragraph 4(a), the Center re-notified the Respondent of the Complaint on November 17, 2008, using additional email contact information of the Respondent, provided by the Registrar, OnlineNic, Inc. d/b/a China-C. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 18, 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 mark OSRAM in over 150 countries and regions, including IR 774581, registered on November 13, 2001.
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 with 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 Respondent registered the domain name on October 21, 2005. The domain name is active and resolves to a website showing a portal page with various links. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant's company name Osram (GmbH) and trademark OSRAM and that the element “led” is a commonly used term in the opto-electronics business for a specific type of components and modules.
Further, the Respondent has not been authorized in any way to use the Complainant's mark and has no rights or legitimate interests in respect of the disputed domain name.
Finally the Respondent is using the disputed domain name for a website that contains links to competitors of the Complainant and thereby generates pay-per-click revenue. The Respondent had to have knowledge of the Complainant's mark and the said use is liable to confuse users of the Internet as to the sponsorship of the site. Consequently, the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The disputed domain name contains the Complainant's distinctive and widely known trademark OSRAM in its entirety. Neither the addition of the acronym for light-emitting diode “led” as suffix nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant's trademark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case it is unlikely that any such rights or legitimate interests exist.
In this context the Panel notes that “Osram” is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any purpose unrelated to the Complainant or its products.
The Panel agrees with the Complainant that the alleged but not substantiated “private use” by the Respondent cannot constitute a legitimate interest.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the notoriety of the Complainant's trademark, the coined nature of the word “Osram”, the fact that the trademark is registered in the country of residence of the Respondent, Republic of Korea, and the extensive promotion of the trademark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark.
The disputed domain name resolves to a website that contains links including what appears to be “sponsored links” that offers products and services that are in competition with the products and services offered by the Complainant. This indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion to the Complainant's trademark, Rules, paragraph 4(b)(iv).
The Panel concludes that the Complainant has shown that requirements of paragraph 4(a)(iii) of the Policy are therefore fulfilled. 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.
Knud Wallberg
Sole Panelist
Date: January 8, 2009
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