Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Boss Premium Group Co., Ltd. / Khun Amorn Sritangratanakul of Bangkok, Thailand. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2014. On December 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 5, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on January 9, 2015. 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 names' registration agreements, as confirmed by the Registrar. 4. Factual Background
Complainant is the owner of numerous registered trademarks throughout the world for OSRAM, including at least one United States trademark registration. Specifically, Complainant owns at least the following trademark registration:
Country/Territory
Reg. no.
Mark
Classes
Date of Registration
United States
1552573
OSRAM
9, 10 and 11
August 22, 1989
The disputed domain name appears to have been registered on August 25, 2014. The disputed domain name also appears to have been registered on August 25, 2014. 5. Parties' Contentions A. Complainant
Complainant belongs to the OSRAM group which was founded in Germany in 1919 and is an international company with its headquarters in Munich, Germany. Complainant employs more than 43,000 people and supplies customers in about 150 countries. Complainant has 46 manufacturing sites in 17 countries. Complainant is one of the two largest lighting manufacturing companies in the world and is well-known.
Complainant has protected its OSRAM trademark in various countries and regions around the world.
The disputed domain names are identical or confusingly similar to Complainant's OSRAM trademarks.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names are 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 the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the OSRAM trademark and the disputed domain names are confusingly similar to Complainant's OSRAM trademark.
Complainant owns at least one trademark registration for OSRAM in the United States. The relevant priority date for this registration precedes the date upon which both of the disputed domain names were registered (i.e., August 25, 2014).
Accordingly, Complainant has established rights in its OSRAM mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002‑0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, , is confusingly similar to Complainant's OSRAM trademark because this disputed domain name incorporates the entirety of Complainant's OSRAM trademark and merely adds a generic geographically descriptive term immediately behind the trademark (i.e., "thai" which is nothing more than an abbreviation for the country Thailand), along with the generic Top-Level Domain (gTLD) ".com" suffix.
The disputed domain name, , is also confusingly similar to Complainant's OSRAM trademark because this disputed domain name also incorporates the entirety of Complainant's OSRAM trademark and merely adds a generic geographically descriptive term immediately behind the trademark (i.e., "thailand" which is nothing more than the name of a country), along with the gTLD ".com" suffix.
Neither the addition of a purely descriptive term to a well-known mark or the addition of a gTLD suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001‑0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Net2phone Inc. v. Netcall Sagl,WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being found confusingly similar); Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor "china" to form was confusingly similar to the CELLULAR ONE trademark); Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628 (finding confusingly similar to the WAL-MART trademark). Accordingly, in regard to both disputed domain names, Respondent has merely added a well-known geographic location to the OSRAM trademark.
Neither addition of the word "thai" nor the addition of the word "thailand" directly behind the OSRAM trademark is sufficient to avoid a finding of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000‑1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by either of the two disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words "thai", "thailand", "osram" or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain names predates the establishment of Complainant's rights in its OSRAM trademark.
Respondent's decision to add common geographic descriptive terms (i.e., "thai" and "thailand") to a well-known trademark (i.e., OSRAM) for the purposes of attracting Internet users to Respondent's own websites does not instill Respondent with rights or legitimate interests in the disputed domain names. See Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of and to the complainant).1
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Given the well-known nature of Complainant's OSRAM trademark, the Panel finds that Respondent likely chose the disputed domain names with full knowledge of Complainant's rights in the OSRAM trademark.
Respondent's awareness of the OSRAM trademark may also be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent's registration of the disputed domain names and since the OSRAM trademark is well-known and famous. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001‑1066 (finding bad faith where the respondent had actual and constructive notice of the complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000‑0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Complainant has alleged, and Respondent has not rebutted, that Respondent associated online retail stores to both of the disputed domain names that promoted the sale of lighting products in direct competition with Complainant. Complainant has also presented uncontested documentary evidence of this allegation. The Panel finds this unrebutted allegation, supported by documentary evidence, to be convincing and sufficient to establish the bad faith registration and use of the disputed domain names.
The Panel also finds that Respondent's use of the disputed domain names and is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's OSRAM trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. This ongoing activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 names, and , be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: January 23, 2015
1 For the sake of completeness, the Panel additionally notes that because the disputed domain names were used to sell the goods of Complainant's competitors in addition to Complainant's goods (see Section 6C), Respondent would not be able to establish rights or legitimate interests as a reseller of Complainant's goods. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
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