The Complainant is Osram AG of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Laurus Trading & Holdings of New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed two amendments to the Complaint on August 1, 2012 and on August 14, 2012.
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” 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 19, 2012. 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 one of the largest manufacturers of lighting products in the world. The Complainant was founded in 1919 in Germany and remains headquartered in Munich. It employs more than 43,000 people and supplies customers in 150 countries. It has 46 manufacturing sites in 17 different countries.
The Complainant (or its predecessors) has held trade mark registrations for OSRAM (the “OSRAM Mark”) since at least 1906. It has registered more than 500 marks consisting or containing the OSRAM Mark in over 150 countries. Furthermore, the Complainant owns 160 domain names containing the OSRAM Mark, covering both generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”).
The Domain Name was created on May 11, 2010. The Domain Name redirects to a website (“Respondent’s Website”) that is a parking page maintained by the Registrar. The Respondent’s Website includes advertisements for products, such as lighting and LED products, that compete with the Complainant’s products. The Respondent’s Website also contains the statement “Want to buy this domain? Our Domain Buy Service can help you get it.” 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s OSRAM Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the OSRAM Mark. It owns trade mark registrations worldwide for the OSRAM Mark, including in Germany, Japan, Thailand, China, Brazil and other countries around the world. The OSRAM Mark has been recognised as a famous mark in Germany, Japan and Thailand.
The Domain Name consists of the OSRAM Mark in its entirety with the addition of the word “store”. Internet users will interpret the word store as an indication that the Domain Name leads to a shop where users can buy Osram products. Hence the word is purely descriptive and not sufficient to avoid a likelihood of confusion.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “osram” or any similar trade mark. The Respondent does not use the Domain Name for a bona fide offering of goods and services. The Respondent is not an authorised user of the OSRAM Mark nor is the Respondent authorised or affiliated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the famous OSRAM Mark. The Respondent uses the Domain Name to mislead customers who are searching for products produced by the Complainant by re-directing them to competing websites. This amounts to the registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the OSRAM Mark, having registrations for OSRAM as a trade mark in various countries around the world.
The Domain Name consists of the OSRAM Mark and the suffix “store”. The word “store” is a descriptive term that suggests that the Respondent’s Website offers the Complainant’s products for sale. As noted in LEGO Juris A/S v Private, Registration/Dohe Dot,WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive is likely to produce confusion since it creates an association with the Complainant. As such the addition of the suffix “store” does not distinguish the Domain Name from the OSRAM Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s OSRAM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the OSRAM Mark or a mark similar to the OSRAM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under 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 the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the OSRAM Mark at the time the Domain Name was registered. The OSRAM Mark has been extensively promoted by the Complainant around the globe, making it a well-known mark (Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083). It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the OSRAM Mark at the time it registered the Domain Name. Furthermore, the OSRAM Mark is a coined term with no descriptive and generic meaning and as such nobody would choose to register the Domain Name unless seeking to create an association with the Complainant. Finally, the Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for its registration of the Domain Name.
The registration of the Domain Name in awareness of the Complainant’s OSRAM Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Domain Name currently resolves to a holding site, operated by the Registrar which includes advertisements for products which compete with the Complainant’s products. It is not clear if the Respondent took any actual step in setting up the Respondent’s Website and there is no evidence that the Domain Name has been used by the Respondent for any purpose. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
a) The Respondent must have been aware of the Complainant at the time it registered the Domain Name;
b) The Domain Name reproduces a well-known mark;
c) While the Respondent’s Website appears to be operated by the Registrar, the Respondent’s Website contains a series of advertisements for third party products some of which relate to products manufactured by the Complainant;
d) The Respondent’s Website also suggests that the Domain Name is available for sale; and
e) The Respondent has failed to respond to this proceeding in any significant manner or to the initial cease and desist letters sent by the Complainant including providing any bona fide reason for registering the Domain Name.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Nicholas Smith
Sole Panelist
Dated: September 24, 2012
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