Complainant is OSRAM GmbH, Munich, Germany, represented by Hofstetter, Schurack & Partner, Munich, Germany.
Respondent is Amorn Sritangratanakul, Boss Premium Group Co., Ltd., Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with DotArai Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2015. On February 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2015, 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 February 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2015.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 2, 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
Complainant is an international company, belonging to the OSRAM group, founded in 1919, and with its headquarters in Munich, Germany. OSRAM is one of the largest lighting manufacturers in the world, with over 43,000 employees in over 150 countries. Among its products are LED lights (an abbreviation of "light emitting diodes"). Complainant owns numerous trademark registrations, including in Thailand, where Respondent lists his address of record. The mark has become well-known, and the Director of the Trademarks Office in Thailand issued on September 8, 2006 Certificates accepting the Notification of Well-Known Trademarks for OSRAM as a word mark and with a design. Some other registrations by Complainant include OSRAM (DT Registration No. 325028, registered 1966; DE Registration No. 567593, registered 1991, and DE Registration No. 614357, registered 1994) as well as OSRAM LED CREATING TOMORROW (DE Registration 1090869, registered 2011).
Complainant also owns over 160 domain names, some of which include geographical terms and some of which include the term "led". Examples are ; ; ; and ; as well as ; ; and . Numerous UDRP panels have found the OSRAM mark to be well known, including; OSRAM GmbH v. Transure Enterprise Ltd.,WIPO Case No. D2008-1032 (transferring ); Osram AG v. James Liang, WIPO Case No. D2012-1573 (transferring ; ; and ); Osram AG v. Laurus Trading & Holdings,WIPO Case No. D2012-1547 (transferring ); Osram GmbH v. bei jing tong xin shun kai shang mao you xian gong si,WIPO Case No. D2013-0191 (transferring ); Osram GmbH v. Liu Zhijun,WIPO Case No. DCO2003-0010 (transferring ); Osram GmbH v. Igor Ostapenko,WIPO Case No. D2013-0899 (transferring ); OSRAM GmbH v. To Hoang Tung,WIPO Case No. D2013-1453 (transferring ); OSRAM GmbH v. Joaquin Barbera Camarasa,WIPO Case No. DES2013-0029 (transferring ); OSRAM GmbH v. LED SMC ESPANA S.L.,WIPO Case No. DES2013-0030 (transferring ); OSRAM GmbH v. www / Privacy Protection Service / Pavol Icik, WIPO Case No. D2013-1571 (transferring www); OSRAM GmbH v. wangjin,WIPO Case No. D2013-1570 (transferring ) and OSRAM GmbH v. Boss Premium Group Co., Ltd. / Khun Amorn Sritangratanakul, WIPO Case No. D2014-2104 (transferring and , from this Respondent). In light of all the facts presented, this Panel finds this to be a proper conclusion.
The disputed domain name was registered by Respondent on November 19, 2014. Respondent has no affiliation with Complainant. Respondent has set up a website at the URL associated with the disputed domain name, which resolves to another website with links to products offered by competitors. Complainant has not authorized any of these activities by Respondent, nor any use of its trademarks thereby. 5. Parties' Contentions A. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not respond to Complainant's contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly and fully incorporates Complainant's well-known, registered trademark, and merely adds descriptive wording including the descriptive word "led" and the geographically descriptive "thai." The Panel finds that the added words would be perceived by Internet users as descriptive of a website where they could find information about sales of Complainant's OSRAM LED products, particularly in Thailand.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy, including if the terms added are geographically descriptive. See, for example, Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584; (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065. (transferring ); see also Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (transferring
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that Respondent has been "commonly known by the domain name"; or (iii) "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".
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel's decision, Respondent has used the disputed domain name to divert Internet users to a website that is unaffiliated with Complainant or Complainant's services. To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant's goods for purposes of retaining the mark under the UDRP, there is no evidence to that effect in the record. See Paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0") (discussing when an authorized reseller may be considered to have rights or legitimate interest in a mark); See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; cf. Beyonce Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
The Panel finds that considering the circumstances presented overall, Respondent has not shown rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site 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 [respondent's] website or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, Respondent has set up a website at the URLs associated with the disputed domain name, which resolves to a website from which it offers products that competes with those of Complainant's. Hence, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. Considering the high degree of renown of Complainant's OSRAM marks around the world, including in Thailand where Respondent lists his address of record, and the fact that the website associated with the disputed domain name refers to those products, it may be presumed that Respondent was aware of Complainant's rights in Complainant's marks when registering the disputed domain name. Accordingly, this too, evidences bad faith by Respondent. Finally, Respondent was involved in a prior proceeding with Complainant, having registered other domain names that include the OSRAM mark, and which were transferred by another UDRP panel to Complainant (see OSRAM GmbH v. Boss Premium Group Co., Ltd. / Khun Amorn Sritangratanakul, supra, referenced above), which appears to evidence a pattern of bad faith conduct in accordance with paragraph 4(b)(ii).
Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
Lorelei Ritchie
Sole Panelist
Dated: April 11, 2015
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