The Complainant is OSRAM GmbH. of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Mohammed Rafi of Dubai, United Arab Emirates / Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 9, 2015.
The Center verified that the Complaint together with the amendment to 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 July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on August 18, 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 is a large multinational lighting manufacturer and part of the OSRAM Licht group, founded in 1919 and headquartered in Munich, Germany. The Complainant owns over 500 registrations for the trademark OSRAM in more than 150 countries and regions. The OSRAM mark, in use since as early as1906, has been recognized as a well-known mark in several jurisdictions and so acknowledged in a considerable number of UDRP decisions.
The Respondent registered the disputed domain name on May 31, 2015. The disputed domain name resolves to a parking page populated with advertising links related to lighting products and accessories. 5. Parties’ Contentions A. Complainant
The Complainant observes that the OSRAM Licht group is one of the three largest lighting manufacturers in the world, employing more than 34,000 in its operations in over 120 countries, with revenues in 2014 in the neighborhood of 5.1 billion Euros. According to the Complainant, the OSRAM mark was initially registered on April 17, 1906, for “electrical incandescent and arc lamps,” becoming a global trademark shortly thereafter with the establishment of offices in Europe, Rio de Janeiro, and Shanghai. The Complainant represents that it currently holds more than 500 registrations of OSRAM marks in over 150 countries and regions, including some 100 international registrations. The Complainant submits that due to extensive international use the OSRAM mark has been recognized in numerous countries around the world as a distinctive and well-known mark, which is also reflected in numerous panel decisions under the UDRP.
The Complainant maintains that the disputed domain name is identical or at least confusingly similar to its OSRAM mark. The Complainant submits that the replacement of the letter “s” with the letter “j” in the disputed domain name does not serve to distinguish it from the Complainant’s mark, and appears to be an attempt at typosquatting.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name and has not been authorized to use the Complainant’s OSRAM mark. The Complainant submits that the Respondent is not using the disputed domain name with a bona fide intent and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that OSRAM is a famous mark owned by a prominent lighting manufacturer, and remarks that the disputed domain name resolves to a pay-per-click landing page with advertising links related to lighting products, including those of the Complainant’s competitors. The Complainant concludes that the Respondent obviously is seeking to exploit and profit from the Complainant’s well-known trademark by using the disputed domain name to attract visitors to the Respondent’s pay-per-click website, constituting bad faith registration and use within the meaning of paragraph 4(b) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a 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.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s OSRAM mark, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s OSRAM mark for purposes of the Policy. The disputed domain name would be identical to the Complainant’s OSRAM mark but for the Respondent’s substitution of the letter “j” for the letter “s” therein. The foregoing is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. In a typical typosquatting case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s distinctive and well-known OSRAM mark, and is using the disputed domain name with a pay-per-click parking site containing advertising links for lighting products and accessories. Given the foregoing and the indicia of typosquatting, a prima facie showing has been demonstrated.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant’s OSRAM mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent almost certainly registered the disputed domain name in order to divert Internet users to the Respondent’s pay-per-click parking page. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
As noted above, the Respondent has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Panel, after reviewing of the facts and circumstances in the record, and absent any reply by the Respondent, finds nothing to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights. This further appears to be a case of typosquatting, in which the Respondent registered and has intentionally used the disputed domain name for commercial gain, in order to divert Internet users to the Respondent’s pay-per-click parking site. See, e.g., Red Bull GmbH v. Grey Design, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Date: September 1, 2015
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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