The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is LeAnhTuan, Le Tung – OBS of Ho Chi Minh, Viet Nam. 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 September 29, 2016. On September 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 7, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant is the German company Osram GmbH.
It belongs to the Osram Licht group, which was founded in Germany in 1919.
Osram Licht AG employs currently more than 33,000 people and has operations in over 120 countries.
Osram is among the largest lighting manufacturing companies and well-known around the world.
The Complainant has always operated under the name “Osram”, which is protected as a trademark:
- the Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and jurisdictions;
- the Complainant owns over 100 international OSRAM trademarks. For instance, International Trademark Registration No. 501,480 OSRAM (word mark), registered on April 1, 1986 in class 42.
Due to their extensive international use, the distinctive OSRAM trademarks have become internationally well−known in the lightning industry.
The Complainant’s OSRAM trademark has also been recognized as widely known in many previous UDRP decisions (e.g., OSRAM GmbH v. Kang Xiaoping,WIPO Case No. D2016-1441; OSRAM GmbH v. Amorn Sritangratanakul, Boss Premium Group Co., Ltd.,WIPO Case No. D2015-0171; OSRAM GmbH v. Shin Uk Kang,WIPO Case No. D2015-1349).
The disputed domain name was registered on March 23, 2014. It redirects to a website via which lighting products of diverse producers are advertised and offered. 5. Parties’ Contentions A. Complainant
1. The Complainant first alleges that the disputed domain name is similar to its earlier marks, to the point of creating confusion.
The disputed domain name reproduces the Complainant’s earlier trademark OSRAM in its entirety.
The word “long” is to be regarded as insufficient to prevent Internet user confusion, as it is a common English word and also a common Vietnamese word, meaning “cage”.
2. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent is not the holder of the trademark OSRAM and has no rights or legitimate interests in the name “Osram”.
The Respondent is not a licensee of the Complainant with regard to the trademark rights and does not have the right to register the disputed domain name.
The Respondent is not an authorised dealer, distributor or licensor of the Complainant.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. On the website under the disputed domain name, the Respondent does not explain that this website is not related with the Complainant.
3. Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
OSRAM is a famous trademark of the Complainant, a lighting manufacturer.
The disputed domain name is used to lead to a webshop via which lighting products of diverse producers are advertised and offered.
The Respondent is obviously trying to exploit the Complainant’s famous trademark in order to attract, for commercial gain, potential clients by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in OSRAM, which predate the registration of the disputed domain name .
The Panel finds that the disputed domain name is confusingly similar to the registered OSRAM trademarks owned by the Complainant. Indeed, the disputed domain name incorporates the entirety of the Complainant’s OSRAM trademarks with the mere addition of the descriptive term “long”. The dominant part of the disputed domain name is the Complainant’s trademark and the addition of the generic term does not avoid confusing similarity.
See for instance: Pentair, Inc. v. Jianfeng Wu / Wu Jianfeng,WIPO Case No. D2016-1892:
“The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant’s distinctive trade mark PENTAIR in its entirety and the letters ‘xj’ as a prefix. The addition of two letters as a prefix to the mark PENTAIR does nothing to dispel confusing similarity between the mark and the Domain Name”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests.
The Complainant has stated that it has not authorized, licensed or consented to the Respondent’s use of its OSRAM trademark, despite the fact that the website operated under the disputed domain name reproduces Complainant’s trademarks and logos, and seems to promote Complainant’s products as well as products that compete with the Complainant’s products, without explaining the lack of a relationship between the Respondent and the Complainant.
It appears therefore that the Respondent is trying to create a misleading impression that it is affiliated or at least in connection with the Complainant. The Respondent’s use of the disputed domain name cannot therefore constitute use of the disputed domain name in the bona fide offering of the goods.
See in previous case OLX B.V. v. OLX Car,WIPO Case No. D2016-1905:
“The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes the presence of what appears to be a variation of the Complainant’s OLX logo on the Respondent’s website. As such, the Respondent appears to be creating the misleading impression that it is the Complainant, or somehow affiliated with the Complainant. The Panel does not find this to be a bona fide offering of goods and services within the meaning of the Policy”.
In light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Since OSRAM is a well-known and distinctive trademark and there is no evidenced relationship between the parties, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name .
Moreover, the Complainant submitted printouts showing that the website resolved by the disputed domain name reproduced not only the Complainant’s earlier word mark OSRAM but also the earlier trademarked Complainant’s logo which consists of a stylized lamp placed inside an orange stylized oval, combined with the word “osram”, as well as the stylized orange sign “osram”. Moreover, the Complainant also offered products that compete with the Complainant’s goods.
By using in a such manner the disputed domain name, the Respondent tried to create a likelihood of confusion with the Complainant’s mark OSRAM as to the source, sponsorship, affiliation, or endorsement of its website and to financially benefit from the Complainant’s reputation or to disrupt the Complainant’s business.
The Panel finds that this use of the Complainant’s OSRAM trademarks on the website leads to Internet user confusion and diverts to the Complainant’s customers looking for the Complainant to the Respondent’s site, which also promotes third-party branded goods. Therefore the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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.
Alexandre Nappey
Sole Panelist
Date: November 18, 2016
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