Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Kim Chanroc of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2015. On April 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 proceeding commenced on April 30, 2015, giving Respondent until May 20, 2015, to submit a Response.
Upon Complainant’s request, the administrative proceeding was suspended on May 20, 2015. On June 15, 2015, Complainant sent an email to the Center requesting an extension to the suspension until July 18, 2015. On the same date, the Center notified the extension of suspension. On July 13, 2015, Complainant requested for further suspension of the administrative proceeding until August 17, 2015. The administrative proceeding was suspended on the same date. On August 10, 2015, Complainant requested re-institution of the proceeding “since we had to take note of the fact that the Respondent has not yet transferred the domain.” On August 10, 2015, the proceeding was reinstituted.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 20, 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.
To date, the Panel has received no communication of any kind from Respondent. 4. Factual Background
Complainant states that it is part of a group that was founded in 1919, that it is “one of the two largest lighting manufacturing companies in and well-known around the world”, that it employs more than 43,000 people and supplies customers in about 150 countries, and that it manufactures at 46 sites in 17 countries.
Complainant further states that it has registered more than 500 OSRAM trademarks in more than 150 countries and regions, as well as “over 100 international ‘OSRAM’ trademarks”. In support thereof, Complainant provided a selection of trademark registration certificates, including for United States of America Registration No. 1,552,573 (first used in commerce 1908; registered August 22, 1989) for the mark OSRAM for use in connection with, among other things, “electric lamps and parts thereof.”
The Disputed Domain Name was created on April 15, 2000, and is being used in connection with a website selling lighting products.
Complainant provided a copy of a letter dated April 2, 2015, that it said it sent to Respondent regarding the Disputed Domain Name, but Complainant stated that Respondent’s “contact details failed.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because “[t]he dominant and distinctive feature of the disputed domain name is the well-known element ‘OSRAM’” and “[t]he additional letter[s] ‘tg’ [are] not sufficient to prevent a risk of confusion here.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not [the] holder of a trademark ‘OSRAM’ and has no rights or legitimate interests in the name ‘OSRAM’”; “Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name”; “Respondent is also not commonly known by the disputed domain name”; “Respondent is no authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant”; “Respondent is using the disputed domain name for a website of a company, which sells various lighting products”; and Respondent’s “website does not clarify that [it] is not related to” Complainant.
The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he disputed domain name is being used for competitive lighting products”; Respondent “is trading on the Complainant’s goodwill to attract visitors to the competitive website”; and “[t]here is no other plausible reason” – other than to create a likelihood of confusion with Complainant’s OSRAM trademark – “why the Complainant’s trademark was chosen for the creation of the disputed domain name.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the OSRAM trademark. This conclusion is consistent with numerous previous decisions under the Policy, including, most recently, Osram GmbH v. Azat Seitmuhamedov,WIPO Case No. D2015-1192.
As to whether the Disputed Domain Name is identical or confusingly similar to the OSRAM trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “tgosram”), as it is well-established that the top-level domain (i.e., “.com”) may be usually disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
This Panel agrees that inclusion of the letters “tg” in the Disputed Domain Name do not dispel any confusing similarity. Although the significance of the letters “tg” is unclear, the Panel finds that the OSRAM trademark is “the dominant portion of the domain name”, LEGO Juris A/S v. Domain Tech Enterprises,WIPO Case No. D2011-2286, and the OSRAM trademark in the Disputed Domain Name represents “the most prominent part of the disputed domain name which will attract consumers’ attention.” Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not [the] holder of a trademark ‘OSRAM’ and has no rights or legitimate interests in the name ‘OSRAM’”; “Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name”; “Respondent is also not commonly known by the disputed domain name”; “Respondent is no authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant”; “Respondent is using the disputed domain name for a website of a company, which sells various lighting products”; and Respondent’s “website does not clarify that [it] is not related to” Complainant.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to Policy paragraph 4(b)(iv), given that the Disputed Domain Name has been used in connection with a website to sell competing lighting products. Such use of a domain name in connection with a competitor’s website repeatedly has been held to constitute bad faith. See, e.g., Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp,WIPO Case No. D2010-1063 (“[t]he inevitable conclusion is that Respondent registered the domain names in full knowledge of Complainants’ rights and reputation and in the expectation that it could profit from the identity or confusing similarity between those trademarks and the respective domain names”).
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: August 31, 2015
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