Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Names and Registrar
The disputed domain names <3ddosram.com> and <3dnosram.com> (the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 13, 2020, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. No formal Response was filed with the Center. On April 8, 2020, the Center sent the Commencement of Panel Appointment.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on April 28, 2020. 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.
On May 25, 2020, the Panel issued Procedural Order No. One to the Parties, the relevant text being reproduced below:
“The Panel notes that on March 16, 2020, in response to the Center’s Notification of Complaint, two communications were received from an individual by the name of “[…] from DAN.COM” at ‘[…]@undeveloped.com’. (The email address ‘[…]@undeveloped.com’ had been taken from the website at which the disputed domain names; <3ddosram.com> and <3dnosram.com> resolved).
In the first communication, […] offered to “forward a message to the owner on your behalf” and in the second communication he suggested; we “reach out to the owner directly in order to resolve this dispute”. The Panel therefore requests […] from DAN.COM to forward the Notification of the Complaint, the Complaint and its corresponding Annexes as offered to the “owner” of the disputed domain names <3ddosram.com> and <3dnosram.com>.
In light of the aforementioned, the Panel grants the Respondent a ten-day period (i.e., June 1, 2020) in which to indicate whether it wishes to participate to this proceeding. Any submissions should be submitted to the Center by email to domain.disputes@wipo.int for forwarding to the Panel. The Panel will deliver its decision on or before June 6, 2020.”
On May 26, 2020, […] from DAN.COM replied to the Panel Order with the following: “Why do we keep getting included in these emails and is even my private email used for this?”
The Respondent did not file any response to the Panel Order or to the Complaint. 4. Factual Background
Complainant is a multinational lighting manufacturer, with its headquarters in Munich, Germany. It is the operative company of OSRAM Licht AG, an international company which was founded in 1919. OSRAM Licht AG currently employs approximately 23,500 people and has operations in over 120 countries.
Complainant has traded under the name “Osram” since its foundation. The OSRAM brand was first registered as a trade mark in 1906. Complainant has registered more than 500 “Osram” containing trade and service marks in over 150 countries and regions, among others, International Trademark registration for OSRAM under No. 321818, of September 29, 1966 (“Complainant’s Marks”). Complainant is also the owner of more than 640 domain names based on the denomination “OSRAM” covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
According to the publicly available WhoIs the Domain Names were registered on June 3, 2019. The websites to which the Domain Names resolve are not in use. The Domain Name <3dnosram.com> is for sale. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Names are identical or at least confusingly similar to Complainant’s Marks, suggesting an association with Complainant and as a result likelihood of confusion among Internet users.
Complainant states that the “Osram” name is a made-up name, which was derived from osmium and Wolfram, both elements commonly used for lighting filaments at the time the company was founded. Complainant further contends that the addition of the number 3 and the letters “dd” and “dn” are meaningless to the Internet user.
Complainant submits that registration of two Domain Names which incorporate Complainant’s Mark which is well known worldwide, and the attempt to re-sell at least one of the Domain Names for profit, is evidence that Respondent has acted in bad faith.
Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Further, Respondent is not known by the Domain Names, nor has it used the Domain Names for personal noncommercial interests. In addition, Complainant states that Respondent it is not an authorised dealer, distributor or licensor of Complainant, nor associated with Complainant in any way. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has clearly established rights in Complainant’s Marks, through Complainant’s long-standing trading as a multinational lighting manufacturer. Having traded under the name “Osram” since its foundation and its registration of more than 500 “Osram” containing trade and service marks, the Panel is satisfied that Complainant has relevant rights under the Policy.
The Domain Names are confusingly similar to Complainant’s Marks as they both contain the distinctive element “Osram”. The Panel accepts Complainant’s submission that the addition of the number 3 and the letters “dd” and “dn” are meaningless to the Internet user. Further, the addition of the number and letters does nothing to negate the inherent confusing similarity, given the use of the word “Osram”.
Respondent does not explain its actions or try to refute the allegations made by Complainant. In the absence of such response it is found that:
a) Complainant has rights in respect of Complainant’s Marks.
b) The Domain Names are confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Names, in the absence of any response or explanation, the Panel finds that Respondent is not sponsored by or affiliated with Complainant, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Marks. Further, Respondent is not commonly known by the Domain Names. The fact that the Domain Name <3dnosram.com> is for sale, suggests that Respondent is seeking to monetize the Domain Name.
Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met. C. Registered or Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Marks, and its international repute the Panel infers that Respondent knew of Complainant’s Marks when registering the Domain Names.
The Panel finds that Respondent registered and is using the Domain Names to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Marks, at the time of registration of the Domain Names; and since. Respondent’s attempt to sell one of the two Domain Names is further evidence of bad faith.
The Panel thus finds that the third limb of the Policy has been met. 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 Domain Names, <3ddosram.com> and <3dnosram.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: June 6, 2020
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