The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Rong Lei of Changzhou, China. 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 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 name. On December 3, 2014, 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 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 December 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 29, 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. 4. Factual Background
The Complainant, OSRAM GmbH, is a German limited liability company, headquarters in Munich. The Complainant belongs to the OSRAM group which was founded in Germany in 1919. OSRAM GmbH has been transformed into a joint stock company, OSRAM AG. The joint stock company was registered in July 2011.
The Complainant is an international company, employs currently more than 43,000 people and supplies customers in about 150 countries. The Complainant manufactures at 46 sites in 17 countries. The Complainant is one of the two largest lighting manufacturing companies in the world.
The Complainant is the owner of numerous trademark registrations for the mark OSRAM around the world. For example: European Community trademark registration no. 000027490 OSRAM, filed on April 1, 1996 and registered on April 17, 1998; United States of America trademark registration no. 1,552,573 OSRAM, registered on August 22, 1989; International trademark registration no. 567593 OSRAM, registered on February 15, 1991; and many more.
The disputed domain name was registered on December 11, 2012.
The Complainant is the owner of more than 160 domain names based on the denomination “osram”, covering both generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs).
Currently, the disputed domain name resolves into an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the name OSRAM is protected as a trademark in various countries and regions around the world.
The Complainant further argues that the disputed domain name is identical or at least confusingly similar to marks owned by the Complainant and the Complainant’s company name.
The Complainant further argues that the dominant and distinctive feature of the disputed domain name is the well-known element “osram”. The Complainant further contends that the additional letters “sz” used within the disputed domain name is the mere addition of a geographic designation and is to be regarded as insufficient to prevent threshold Internet user confusion.
The Complainant further argues that the Respondent is not a holder of a trademark OSRAM and has no rights or legitimate interests in the name “Osram”.
The Complainant further argues that the Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is not licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name. The Complainant further argues that the Respondent is not commonly known by the disputed domain name.
The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further argues that the Respondent is using the disputed domain name to provide “ghostwriting” services for, inter alia, academic papers which is regarded as academic fraud in many countries around the world.
The Complainant further argues that the Respondent has registered and uses the disputed domain name in bad faith. The Complainant further contends that the Respondent uses the disputed domain name not for personal noncommercial interests.
The Complainant further argues that the sole purpose of the Respondent’s act is to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location.
The Complainant further argues that the Respondent certainly must have knowledge about the Complainant’s mark OSRAM, especially since the trademark is recognized as a famous trademark in China, where the Respondent appears to be located.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademark registrations for the mark OSRAM. For example: European Community trademark registration no. 000027490 OSRAM, filed on April 1, 1996 and registered on April 17, 1998; United States trademark registration no. 1,552,573 OSRAM, registered on August 22, 1989; International trademark registration no. 567593 OSRAM, registered on February 15, 1991; and many more.
The Complainant also owns domain names with the trademark OSRAM, i.e., ; ; ; and many more.
The disputed domain name is identical to the registered trademark OSRAM apart from the addition of the prefix “sz”. The disputed domain name integrates the Complainant’s trademark OSRAM in its entirety, as a dominant element.
The addition of the prefix “sz” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s OSRAM trademark as “sz” are meaningless English characters which are also considered as the ccTLD for Swaziland. It is clear that the most prominent element in the disputed domain name is the term “osram”. Consequently, this panel finds that the disputed domain name is confusingly similar to the Complainant’s OSRAM trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of gTLD “.info” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.info” is without legal significance since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the Respondent.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the OSRAM trademark, or a variation thereof.
The Respondent had not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark OSRAM and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark, the Complainant has owned a registration for the OSRAM trademark at least since the year 1966. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name resolved to.
In addition, the evidence filed by the Complainant shows that the Respondent had used the disputed domain name to provide “ghostwriting” services for, inter alia, academic papers. The Respondent did not respond to the claim. Therefore, the Panel accepts this evidence and finds that the Respondent has incorporated the OSRAM trademark in the disputed domain name in order to attract consumers for commercial gain.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
In the instant case, the Complainant has provided sufficient evidence to show that its OSRAM trademark has a strong reputation and is widely known. The record also shows that the Respondent provided no evidence of use of the disputed domain name and did not respond to the Complaint.
Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant’s OSRAM trademark, in a domain name may be considered as a clear indication of bad faith use (see Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441). Another indication for the Respondent’s bad faith use is raised from the incorporation of the Complainant’s well-known trademark into the disputed domain name by the Respondent who has no plausible good faith explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The circumstances of this case, and especially the use of the Complainant’s well-known trademark as the prominent part of the disputed domain name may also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith use of the disputed domain name.
In light of the Complainant’s distinctive registered trademark and the Respondent’s use of a confusingly similar disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has established the third element under 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.
Jonathan Agmon
Sole Panelist
Date: February 12, 2015
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