The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is / Privacy Protection Service of Shangai, China / Pavol Icik of Bratislava, Slovakia. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center informed the Parties that the language of the registration agreement for the disputed domain name is Slovak, and invited the Complainant to either: (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English; (ii) to submit the Complaint translated into Slovak; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On September 19, 2013, the Complainant submitted a request for English to be the language of the proceedings and filed an amendment to the Complaint. The Respondent neither filed language submissions nor responded to the Complainant’s request.
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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on November 4, 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. 4. Factual Background
The Complainant´s company name OSRAM is a German joint stock company and belongs to the OSRAM group which was founded in Germany in 1919. The Complainant is an international company, with its headquarters in Munich and employs currently more than 43, 000 people and supplies customers in about 150 countries. OSRAM is one of two largest lighting manufacturing companies in and well-known round the world (Annexes 5 and 6 to the Complaint).
The Complainant has registered more than 500 OSRAM trademarks, including over 80 international trademarks, in over 150 countries and regions (Annex 7 to the Complaint). Due to the extensive international use of the distinctive OSRAM trademarks they have become internationally “well-known” (Annex 9 to the Complaint).
For example, the trademark OSRAM, was registered on September 18, 1989 in Argentina, reg. No. 2236783; on April 10, 1964 in Australia, reg. No. A5900; on July 14, 1986 in Canada, reg. No. 336801; internationally Madrid registration on April 16, 1987, reg. No. 676932.
The disputed domain name was registered on December 29, 2008.
Moreover the Complainant is the owner of more than 160 domain names on the domination “OSRAM”, covering both generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) (Annex 17 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is in its relevant distinguishing part identical to the trademark owned by the Complainant and the Complainant’s company name and that the dominant and distinctive feature of the disputed domain name is the word “osram”. The only difference between the disputed domain name and the Complainant’s trademark resides in the adjunction of the term “www”, however this does not outweigh the strong similarity between the disputed domain name and the Complainant’s trademark and its company name. According to Complainant’s opinion, this term is strongly descriptive as it stands for “world wide web” and it is very likely that consumers searching for e.g. “” due to a typing error are being led to the Respondent’s domain name. The term “.com” is a gTLD suffix and is to be disregarded under the confusing similarity test.
As to the rights or legitimate interests in respect of the disputed domain name , the Complainant contends that to the best of its knowledge, the Respondent is not holder of a trademark OSRAM and has no rights in a personal name “osram”. Moreover, the Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is no licensee of the Complaint with regard to the trademark rights or the right to register the disputed domain name. The Respondent is not authorized dealer, distributor or licensor of the Complaint and is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant argues that disputed domain name was registered and is being used in bad faith as it is used for domain parking and for a site via which lighting products of competitors are sold and advertised (Annex 3 to the Complaint) and it is obvious that the Complainant’s famous trademark OSRAM is being used in order to attract potential buyers to the domain parking site. The Respondent knew or should have known about the Complainant’s trademark rights before registering his disputed domain name and that the disputed domain name is in use for a related field of business. The Complainant concludes that the disputed domain name was also registered and is being used in bad faith, as the Respondent uses the well-known trademark and company name of the Complainant to address Internet users to his own website and that is a strong factor for use in bad faith. Such use of the disputed domain name 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 trademark, is evidence of bad faith registration (Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated,WIPO Case No. D2004-0752). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the question of the language of the proceedings, the Complainant introduces that the Complaint has been submitted in English and requests the language of proceedings to be English and provides supporting arguments and evidence. The Registrar confirmed that the language of registration agreement is Slovak. The Respondent did not comment on the language of the proceeding by the specified due date. Paragraph 11(a) of the UDRP provides, considering the circumstances of the proceeding, that the Panel may determine that the language of this proceeding may be different than the language of the registration agreement. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov,WIPO Case No. D2011-1636).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is 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. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is in its relevant distinguishing part identical to the trademark OSRAM owned by the Complainant and the Complainant’s company name. The only difference between the disputed domain name and the Complainant´s trademark resides in the adjunction of the term “www”. This term is strongly descriptive as it stands for “world wide web”. The addition of this term is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 420671). As well the inclusion of the gTLD suffix “.com” does not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making 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.
It is necessary to accept the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy as it has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent is not holder of a trademark OSRAM and that the Respondent has not been commonly known by the disputed domain name, even if he has acquired no trademark. The Respondent’s use of the disputed domain name to intentionally trade on the well-known mark of another, in order to lure Internet users to a website unrelated to the trademark owner, cannot and does not constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847). Moreover, the Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is no licensee of the Complaint with regard to the trademark rights or the right to register the disputed domain name. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use the term “osram” within the disputed domain name and therefore the Respondent is not able to establish rights or legitimate interests in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero,WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensor of the Complaint and is not making a legitimate noncommercial or fair use of the disputed domain name.
For the above cited reasons, 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
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel finds that it is necessary to accept the arguments of the Complainant that the disputed domain name was registered and is being used in bad faith as it is used for domain parking and for a site via which lighting products of competitors are sold and advertised (Annex 3 to the Complaint) and it is obvious that the Complainant’s famous trademark OSRAM is being used in order to attract potential buyers to the domain parking site. There is no doubt that the Respondent knew or should have known about the Complainant’s trademark rights before registering his disputed domain name and that the disputed domain name is in use for a related field of business. The disputed domain name was registered and is being used in bad faith, as the Respondent uses the well-known trademark and company name of the Complainant to address Internet users to his own websites and that is a strong factor for use in bad faith. Such use of the domain name 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 trademark is evidence of bad faith (Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated,WIPO Case No. D2004-0752). The Respondent registered the disputed domain name in order to attract Internet users seeking for the Complainant’s website for the Respondent’s own commercial gain and the registration and use of a confusingly smiliar domain name in order to misdirect consumers, display banner advertisements or links to third-party commercial websites, or subject users to unsolicited pop-up advertisements is evidence of bad faith under paragraph 4(b)(iv) of the Policy (Hanover Communications Ltd., v. Maison Tropicale, S.A.,WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883; Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304; Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512).
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 the Complainant.
Ladislav Jakl
Sole Panelist
Date: November 9, 2013
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