Complainant is Osram AG, Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Alvin Ronaldo, jawa tengah Indonesia, self represented. 2. The Domain Name and Registrar
The disputed 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 January 24, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 6, 2013.
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 Respondent of the Complaint, and the proceedings commenced on February 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2013. On February 26, 2013, several email communications were received from Respondent. However no official Response was filed with the Center. In response to an enquiry from the Center, the Respondent confirmed on February 27, 2013 that its emails of February 26, 2013 constitute its response.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 5, 2013. 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.
In reply to emails received from Respondent, specifically Respondents email of February 12, 2013, the Center issued an email communication to the Parties regarding a possible suspension for the purposes of a settlement between the Parties. On February 26, 2013, Complainant transmitted by email with attached letter the following statement:
“we have contacted the Respondent well before the Complaint was filed, see Attachment 2 of the Complaint. The Respondent did receive the letter via e-mail and facsimile. The Respondent had the chance to
contact us within the deadline set. This shows that the Respondent has no serious intentions to transfer or cancel the domain. Due to the Respondent’s inactiveness, the Complainant had to file the Complaint and start the UDRP proceedings which has incurred considerable costs. It seems therefore the
most time- and cost-effective solution to simply proceed with the UDRP proceedings.”
On March 5 2013, the Center received a further email communication from Respondent. 4. Factual Background
Complainant is an international company, with headquarters in Munich. It belongs to the Osram group, founded in Germany in 1919. Complainant employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures its products in 17 countries. Osram is one of the two largest lighting manufacturing companies in the world.
Complainant has traded under the name “Osram” since its foundation, having become the most relevant of its trademarks. On April 17, 1908 the OSRAM brand was registered as a trademark for electrical incandescent and arc lamps. A few years later Complainant established offices in other countries, Brazil and China.
Complainant has registered more than 500 OSRAM trademarks and service marks in around 150 countries. Complainant owns trademark registrations for the mark OSRAM inter alia in Argentina, Reg. No. 1764817, Reg. Date December 4, 2000, covering products of class 11; Australia 676932, Reg. No. April 16, 1997, covering products of class 11 and products and services of several other classes; Benelux Reg. No. 102496, Reg. No. December 30. 1971, covering products of classes 1, 9, 10 and 11; Canada Reg. No. TMA 336801, Reg. No. September 11, 2002, covering products of class 11 and other classes, etc.
Moreover, Complainant owns over 100 international OSRAM trademark registrations
The disputed domain name was registered on October 23, 2012. 5. Parties’ Contentions A. Complainant
In its amended Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to a trademark in which Complainant has rights. The disputed domain name is identical to the OSRAM trademarks on which the Complainant has trademark rights and is identical with the company name of the Complainant, too. The dominant and distinctive feature of the disputed domain name is the word “osram”. The only difference between the disputed domain name and Complainant's trademark is the addition of the letters "led". This element however does not outweigh the strong similarity between the disputed domain name and Complainant’s mark and company name. The addition of ”led” is purely descriptive as “led” stands for “light emitting diodes” and thus for lighting products. The fact that Complainant has been a pioneer in the sector of led-products even enhances the risk that consumers will assume that under “” specific goods produced by Osram GmbH are offered. The top level domain “.net” is also not sufficient to avoid the confusing similarity. It is well established that similarity is not avoided by the addition of generic terms to trademarks.
Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of Complainant’s knowledge, Respondent is not holder of a trademark OSRAM. Respondent is not using the trademarks OSRAM and the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not an authorized dealer, distributor or licensor of Complainant, nor is Respondent in any way associated with Complainant. Respondent is in no way authorized or affiliated with Complainant. Additionally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. OSRAM is a famous trademark of the lighting manufacturer OSRAM GmbH. The disputed domain name is being used for affiliate marketing regarding lighting products. Some of the advertised products even originate from Complainant's competitors. Respondent certainly must have knowledge about worldwide well-known Complainant. This shows that the disputed domain name has been registered in bad faith for the purpose of being rewarded by affiliates and violates Complainant’s rights. The use of the disputed domain name for affiliate marketing is not legitimate.
Respondent does not use the disputed domain name for personal noncommercial interests. Respondent’s selection of the domain name that is virtually identical to the well-known registered trademark OSRAM clearly indicates bad faith intent. Respondent uses the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's company name and trademark OSRAM. Respondent has not attempted to make any bona fide use of the disputed domain name. The registration of a domain name incorporating another's famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith. This proves on the one hand that Respondent knows Complainant well and thus registered the domain in bad faith. On the other hand the disputed domain name is used in a way that will lead to confusion. The Internet user will be misled and will assume that the respective website is at least sponsored by Complainant.
Further, Respondent, according to the WhoIs data record, owns 129 domain names. This indicates that Respondent’s business model is based on the registration of domain names, thus benefiting from financial advantages of affiliate marketing or profitable sales of domain names.
In sum, Respondent uses the well-known trademark and company name of Complainant to direct Internet users to its own websites. That is a further and strong factor for use in bad faith. Such use is neither legitimate nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's mark is evidence of bad faith registration. B. Respondent
Respondent sent several email communications to the Center, and later confirmed that these communications constitute its Response. The Panel notes however that these communications do not respond specifically or otherwise to any of the statements and allegations contained in the Complaint, as required under Rules paragraph 5(a)(i). In its emails Respondent states that it does not sufficiently understand English, and that the fact that the disputed domain name is on hold prevents Respondent from transferring it to Complainant. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
With printouts of various trademark registrations for the mark OSRAM, Complainant has shown to the satisfaction of the Panel that it has rights in the mark OSRAM. See section 4 above.
The disputed domain name contains the OSRAM mark in its entirety, adding the generic term “led” and the gTLD “.net”. It is well established that the addition in a domain name of a generic term and a gTLD to a mark is inapt to distinguish both identifiers for the purposes of Policy paragraph 4(a)(i). Rather, since Complainant is itself a manufacturer of led-products under the OSRAM mark, the addition of the generic term “led” emphasizes the association of the disputed domain name with Complainant and its OSRAM mark. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s OSRAM mark. B. Rights or Legitimate Interests
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has a right or legitimate interest in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1 (“[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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”).
In the instant case, Complainant contends that Respondent does not own a trademark for "OSRAM", that Respondent is not using the OSRAM trademarks or the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is not an authorized dealer, distributor or licensor of Complainant, that Respondent is not in any way associated or affiliated with, or authorized by, Complainant, and that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
Also, Complainant submits a printout from Respondent’s website at the disputed domain name which contains pictures of LED and other lightning products with accompanying texts indicating that they are OSRAM products, as well as products presumably from other manufacturers.
Since Respondent is using the OSRAM mark without any authorization by Complainant, the Panel believes this use is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). Also, using the full mark of Complainant together with the generic term “led” - a product typically produced by Complainant - is clearly an attempt to lure Internet users into believing that the website at the disputed domain name belongs to or is associated with Complainant, with a purpose of commercial gain. In the Panel’s view, this use of the disputed domain name is not a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ mark pursuant to Policy paragraph 4(c)(iii). Further, as there is no allegation or evidence that Respondent is commonly known by the disputed domain name, or by any other term corresponding to the disputed domain name, Policy, paragraph 4(c)(ii) must be excluded.
In addition, although Respondent is not formally in default, in its email communications it did not contest any of Complainant’s allegations or evidence, nor did it provide any explanation or evidence for its use of the disputed domain name, or otherwise suggest that it may have some right or legitimate interest in the disputed domain name. Since in these communications Respondent stated that it had tried either to delete the registration of the disputed domain name, or to transfer it to Complainant, and that he had failed to accomplish either because the domain name registration had been put on hold, the Panel believes that this explanation at a minimum means that Respondent is willing to relinquish the domain name registration. Finally, the website at the disputed domain name presently is inactive, which certainly does not suggest that Respondent may have at least some legitimate interest in the disputed domain name.
Accordingly, the Panel is satisfied that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant has shown that its OSRAM mark has been registered in 1908 as a trademark for electrical incandescent and arc lamps, and that it owns trademark registrations in numerous countries. The Panel, as recognized by previous panels, also acknowledges that the OSRAM mark is well known worldwide. See Osram AG v. Laurus Trading & Holdings,WIPO Case No. D2012-1547 (“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).”), see also Osram AG v. James Liang,WIPO Case No. D2012-1573 (“Complainant’s [OSRAM] trademark is widely-known. It is well-known not only to persons in the lighting industry but also to consumers”). Also, since Complainant manufactures and markets led-products, the registration of a domain name which combines the OSRAM mark with the “led” term suggests that the registrant must have been aware of Complainant, its mark and products at the time of the domain name registration.
Lastly, Respondent did not contest Complainant’s contention that it had Complainant’s mark and products in mind when it registered the disputed domain name.
From these facts the Panel cannot but conclude that Respondent knew and targeted Complainant, its OSRAM mark and products at the time of the registration of the disputed domain name.
As to use in bad faith, a printout taken from Respondent’s website at the disputed domain name as of January 1, 2013 submitted by Complainant shows a text in German announcing news and reviews on OSRAM led-technology and “best offers” for OSRAM led-products. On this page next to various pictures and texts referring to OSRAM products - whether authentic or not - other images and links on the website appear to correspond to products presumably from other sources.
In the Panel’s view, Complainant’s uncontested allegations and supporting evidence suggest that Respondent used the website at the disputed domain name as a means for affiliate marketing. Accordingly, the Panel concludes that Respondent, by using the disputed domain name as shown, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's OSRAM mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: March 18, 2013
Full & Egal Universal Law Academy