WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Osram GmbH v. Transure Enterprise Ltd. Case No. D2009-0010 1. The Parties
Complainant is Osram GmbH of Munich, Germany, represented by Patent und Rechtsanwälte Hofstetter, Schurack & Skora, of Germany.
Respondent is Transure Enterprise Ltd., of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2009. On January 8, 2009, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the Domain Name. On January 9, 2009, A, Inc. transmitted by email to the Center its verification response. 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 19, 2009.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 2, 2009. 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
Complainant is one of the largest lighting manufacturing companies in the world.
Complainant owns a number of registrations worldwide for trademarks that consist of or contain the mark OSRAM. The OSRAM mark has been registered since 1906. Complainant is the registrant of more than a hundred domain names that consist of or contain the mark OSRAM.
The disputed domain name , which was created on April 5, 2008, redirects to a website that displays sponsored links to third parties' websites. 5. Parties' Contentions A. Complainant
Complainant claims that:
The Domain Name is confusingly similar to the aforementioned Complainant's trademarks, domain names and company name;
Adding the term “lighting” to the distinctive trademark OSRAM increases the likelihood of confusion;
Respondent has no rights or legitimate interests in respect of the Domain Name;
Before the dispute, Respondent had not been using the Domain Name in connection with a bona fide offering of goods and services;
At the time of the registration of the Domain Name, Respondent was not generally known under the Domain Name , nor did Respondent use the Domain Name for any legitimate, noncommercial or fair use purpose.
Respondent does not own any rights in the name or mark “Osram”. Complainant has not licensed or otherwise permitted Respondent to use its company name or trademarks or to apply for the registration of the Domain Name.
The Domain Name has been registered and is being used by Respondent in bad faith.
Respondent knew Complainant's trademarks at the time of the registration of the Domain Name;
Respondent has been involved in several UDRP administrative proceedings before WIPO for having registered domain names corresponding to third parties' trademarks;
The use of a domain name for a parking site with commercial ads and sponsored links generating click through (pay-per-click) fees has been regarded as a case of bad faith under UDRP paragraph 4(b)(iv). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the Domain Name registered by Respondent be transferred to Complainant:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it has rights in the trademark OSRAM in connection with a large range of goods and services, inter alia for lighting and related products. The Panel notes that the addition of a generic term, i.e., “lighting” in this case, to the famous trademark OSRAM, is not sufficient to avoid confusion. As has often been held by previous decisions, a domain name which either wholly or partially incorporates a third parties' registered trademark is typically held to be confusingly similar to it. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP,WIPO Case No. D2000-0413 and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022.
Moreover, this Panel agrees with Complainant's view that the combination in the Domain Name of the trademark OSRAM with the generic term “lighting”, which describes Complainant's field of activity, increases the chance of confusion. Therefore, this Panel finds the Domain Name to be confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant may do so, e.g., by establishing a prima facie case that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name, e.g., by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to Respondent of the dispute, he used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that Respondent is commonly known by the Domain Name, even if he has not acquired any trademark or service mark rights; or
(iii) that Respondent intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorized Respondent to use Complainant's trademark. Respondent has not alleged any facts or elements to justify rights and/or legitimate interests in the Domain Name. Respondent does not appear to make any legitimate use of the Domain Name for non commercial or otherwise fair use related activities. On the contrary, it appears that Respondent is using it to direct consumers to websites that offer services in competition with those offered by Complainant.
Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a right or legitimate interest under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on the holder's web site or location.
Accordingly, for Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.
Considering the notoriety of Complainant's trademarks and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant's trademark when it registered the Domain Name.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant's trademark and activities at the time of the registration of a disputed domain name may be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, which stated: “It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. The respondent was not authorized by the complainant to use its mark nor any of the disputed domain names”).
As regards Respondent's use of the Domain Name, it appears that Respondent's website is used for a website with commercial ads and sponsored links redirecting to websites of competitors of Complainant. By so deflecting Internet users, Respondent has shown bad faith registration and use of the Domain Name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy.
In addition, the Complainant has adduced sufficient evidence for the Panel to conclude that the Respondent has engaged in a pattern of registering domain names containing third party trademarks. In fact, the Respondent has appeared in at least ten previous UDRP proceedings. Such pattern of conduct is strong evidence supporting a finding of bad faith.
Finally, Respondent has not denied Complainant's assertions of bad faith, has not given any justification for the registration of the Domain Name or substantiated or at least alleged any concurrent right or legitimate interest to the Domain Name which could give rise to good faith registration and use of the Domain Name.
Considering the foregoing, the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 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.
Fabrizio Bedarida
Sole Panelist
Dated: March 13, 2009
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