The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Azarenko Vladimir Alexeevich, Azarenko Group Ltd of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 7, 2016, the Center transmitted to the Registrar by email, a request for registrar verification in connection with the disputed domain name. On July 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and also providing the contact details of the Respondent.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was August 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 22, 2016. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a German limited liability company that belongs to the OSRAM Licht group, founded in Germany in 1919. The Complainant is the operative company of OSRAM Licht AG, an international joint stock company with headquarters in Munich. The Complainant currently employs more than 33,000 people and has operations in over 120 countries including but not limited to Germany, France, Mexico, the United States of America, Japan and the Russian Federation. The Complainant is one of the three largest lighting manufacturing companies in the world.
The Complainant holds about 500 trademarks registrations for OSRAM and the OSRAM family of trademarks in more than 150 countries and regions around the world. The OSRAM trademark was first registered on March 10, 1906 in respect of “electrical incandescent and arc lamps” of class 11, in the case of German trademark No. 86924.
The Complainant’s OSRAM trademark has been recognized as widely known in many earlier UDRP panel decisions, e.g., OSRAM GmbH v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004; OSRAM GmbH v. Azat Seitmuhamedov,WIPO Case No. D2015-1192; OSRAM GmbH v. Shin Uk Kang,WIPO Case No. D2015-1349; OSRAM GmbH v. shidankj,WIPO Case No. D2016-1250.
The Complainant owns more than 640 domain names based on the OSRAM trademark including for the Russian Federation.
The Respondent appears to be a Russian individual with a residence in Moscow, in the Russian Federation.
The disputed domain name was registered on August 11, 2014. It does not resolve to any active website.
On June 24, 2016, the Complainant sent an email to the Respondent regarding its ownership of the OSRAM trademark and to request a transfer of the disputed domain name. The Respondent did no reply. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the OSRAM trademarks owned by the Complainant. It contains the widely known trademark, OSRAM, which leads to the public thinking that it is somehow connected to the owner of the OSRAM trademark. The Generic Top-Level Domain (“gTLD”) “.club” is to be disregarded as it is a technical requirement of registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Firstly, the Respondent is not the holder of rights to the OSRAM trademark, to the best of the Complainant’s knowledge. Secondly, the Respondent has not registered the disputed domain name in connection with a bona fide intention as the Respondent is not a licensee of the Complainant nor an authorized dealer or distributor of the Complainant. Thirdly, the Respondent is not commonly known by the disputed domain name. Fourthly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The OSRAM trademark is a widely known trademark of the Complainant. The Respondent registered the disputed domain name in bad faith per paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Even though the Respondent has not actively used the disputed domain name, the registration and the Respondent’s choice thereof which contains the widely known OSRAM trademark constitutes bad faith. The Respondent obviously knew of the Complainant and its trademark when it registered 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
The Complainant has established it has rights in the OSRAM trademark. The entire trademark has been adopted without variation into the disputed domain name. The only difference with the disputed domain name lies in the fact that the gTLD “.club” features therein. It is a well-established principle that the gTLD should typically be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy since it is a technical requirement of a domain name registration. See, e.g., Beiersdorf AG v. Richard Trainor, Houghton Richards/WHOIS Limited, WIPO Case No. D2015-0459 ().
Moreover, the “.club” gTLD introduces a new dimension to the determination of confusing similarity under the Policy. Indeed, the “.club” gTLD increase the confusing similarity with the widely known OSRAM trademark as Internet users may believe in the existence of an authentic “Osram Club”. See, e.g., Rolls-Royce PLC v. Sergey Sevreev / Sigmal LP, WIPO Case No. D2014-1469 ().
The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark, and that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, for the purposes of paragraph 4(a)(ii) of the Policy that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name … :
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent 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 Panel agrees that OSRAM is a long-established and widely known trademark. The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has the consequent burden of providing evidence of its rights or legitimate interests in the disputed domain name. The Respondent, however, did not respond and therefore none of the circumstances enumerated in paragraph 4(c) of the Policy have been established by the Respondent. The Panel has no basis to find for the Respondent on the issue of paragraph 4(a)(ii) of the Policy. The Panel has noted not only the Respondent’s silence in this proceeding but also the failure to respond to the Complainant’s email regarding its request for the disputed domain name to be transferred. This set of circumstances is indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
In view of the fact that OSRAM is a widely known trademark, also in the Russian Federation, and has been incorporated in its entirety in the disputed domain name and the Respondent does not appear to have any rights or legitimate interests in the disputed domain name, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Respondent has not rebutted the reasonable inference one may draw, that the Respondent must have been aware of the Complainant and its said trademark when it registered the disputed domain name. The Respondent has no apparent connection with the OSRAM trademarks. Moreover, the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s long-established trademark rights. In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name amounts to use of the disputed domain name in bad faith for the purpose of the Policy. See paragraph 3.2 of the WIPO Overview 2.0.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Nathalie Dreyfus
Sole Panelist
Date: September 5, 2016
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