The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Anucha Joomjuntuk - Parinya of Bangkok, Thailand. 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 November 10, 2014. On November 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing all contact information related to the disputed domain name.
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 November 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2014.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 18, 2014. 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.
The proceedings were conducted in English since that is the language of the disputed domain name’s registration agreement, as confirmed by the Registrar. 4. Factual Background
The Complainant is one of the leading lighting manufacturers in the world. It manufactures lighting products, such as light emitting diodes (LED) for consumer, commercial, and industrial applications at 46 sites in 17 countries, and supplies customers in about 150 countries.
The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions. The first OSRAM trademark registration dates back to 1906.
According to the Registrar’s verification response, the disputed domain name was registered on June 2, 2014.
Since inception the website at the disputed domain name consists of pay-per-click hyperlinks to lighting-related products. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends as follows:
i. Due to the extensive multinational use of the distinctive OSRAM trademarks, they have become well-known internationally;
ii. In Thailand, the Respondent`s country, the OSRAM trademarks have been registered as well-known trademarks;
iii. The dominant and distinctive feature of the disputed domain name is the Complainant’s trademark;
iv. The only difference between the disputed domain name and the Complainant’s trademark consists of the mere addition of the words “getprice”, which are highly descriptive and unsuited to outweigh the strong similarity between the Respondent’s domain name and the Complainant’s mark;
v. To the best of the Complainant’s knowledge, the Respondent is not holder of a trademark OSRAM, nor does he have rights in a personal name “osram”;
vi. The Respondent is not an authorised dealer, distributor or licensee of the Complainant, nor is the Respondent in any way associated with the Complainant;
vii. The Respondent has used the website for affiliate marketing and has tried to make financial profit of the well-known sign OSRAM to attract readers to visit the website, which is not to be regarded as a bona fide offering of goods or services under the Policy;
viii. There can be no doubt that the Respondent must have had knowledge of the worldwide widely known Complainant’s mark OSRAM when it registered the disputed domain name, which constitutes bad faith as per the Policy;
ix. The Respondent’s selection of the disputed domain name, which is virtually identical to the widely known Complainant’s registered trademark OSRAM clearly indicates a bad faith intent as there is no plausible reason why said trademark was chosen for the domain name at issue;
x. The fact that Respondent did not respond to Complainant’s warning letter but had stopped using the disputed domain after receiving said letter is an indication of Respondent’s bad faith;
xi. The Respondent uses the Complainant’s widely known trademark to attract Internet users to its own website, for commercial gain, by creating confusion with the Complainant’s mark in contravention of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
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 is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
As digested in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
To the Panel’s eye, OSRAM stands out in the disputed domain name as the Complainant’s household name in the lighting industry worldwide.
Further, the Panel finds that the juxtaposed construction “getprice” has a descriptive meaning which enhances rather than dispels the confusing similarity between the Complainant’s widely known mark and the disputed domain name. See Hoffmann-La Roche Inc. v. Danner Bruce,WIPO Case No. D2010-0703 (including “price” in the disputed domain name does not dispel confusion, but rather compounds it, because it signals an authorized commercial use of the mark).
It is well established that a generic Top Level Domain (gTLD) such as “.com”, must normally be excluded from the comparison of a complainant’s mark and a contested domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks in the sense of Policy, paragraph 4(a)(i).
The Complainant has thus passed through the first gateway of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “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 [the Respondent’s] 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 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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The Complainant represents that Respondent is not an authorized dealer, distributor, or licensee of the OSRAM mark, nor is it associated in any way with the Complainant.
The Complainant also submits that the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services or for a legitimate noncommercial use.
In view of the worldwide use and inherent distinctiveness of the Complainant’s OSRAM mark, the Respondent’s default in the instant proceedings, and the competing links featured on the Respondent’s website, the Panel is convinced that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of the Policy. See OSRAM GmbH v. yangjun/WHOISAGENT, Domain Whois Protection Service,WIPO Case No. D2014-0552 (in the absence of contrary evidence from the respondent, the OSRAM trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the complainant.)
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or…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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Complainant has established that it holds registered trademark rights in the term “osram” since as early as 1906. The Complainant has also established that the OSRAM mark is registered and has been used in no less than 150 countries around the world. As a result, the trademark has become widely known internationally. See Osram AG v. Domain Whois Protection Service / Ecosram LED Technology Limited,WIPO Case No. D2012-2076 (the complainant’s trademarks are well-known and famous, particularly in connection with lighting manufacturing).
Accordingly, the Panel has little difficulty in inferring that the Respondent’s deliberate selection of a domain name featuring the mark OSRAM evidences bad faith registration and use under the Policy. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well-known trademark, its very use by someone with no connection with the complainant suggests opportunistic bad faith).
Likewise, the Panel notes that the Respondent’s website enables PPC access to lighting products in competition with those manufactured by the Complainant. The Respondent’s website also includes names of Complainant’s lighting products as bait to divert customers to third party websites related or unrelated to Complainant’s OSRAM products.
Consequently, this Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s OSRAM mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the source, licensing, distributorship or authenticity of the lighting products featured therein, thus falling under the bad faith use scenario described in paragraph 4(b)(iv) of the Policy.
In sum, the Panel holds that the disputed domain name was registered and has been used in bad faith within the realm of the Policy.
The Complainant has therefore discharged its burden in connection with 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 disputed domain name be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: January 1, 2014
Full & Egal Universal Law Academy