The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Contact Privacy Inc. Customer 0154649100, Canada / Ramon Rego Ferreira, Rosramshop, Spain. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 13, 2020, 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 August 12, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Center received an informal email from the Respondent on August 13, 2020. The Respondent did not submit any formal response. The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 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. 4. Factual Background The Complainant is the operative part of OSRAM Licht AG. It is in the business on technology and applications addressing trends of the lighting industry market. OSRAM Licht AG employs currently approximately 23,500 people and has operations in over 120 countries. In 2019, it had a revenue of about EUR 3.5 billion. The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries. Moreover, the Complainant owns over 100 international OSRAM trademarks such as the European Union Trademark 000027490 registered on April 17, 1998. The Complainant has registered more than 640 domain names based on the denomination OSRAM. The Domain Name was registered on May 4, 2019. At the time of drafting the Decision, the Domain Name resolved to a web page with the text: “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: rosram.com”. According to the evidence provided by the Complainant, the Domain Name had been used to resolve to a website that offered and distributed electronic devices. 5. Parties’ Contentions A. Complainant The Complainant provides evidence of trademark registrations and that the trademark has a strong, international reputation. The Complainant argues that the Domain Name is almost identical to the mark and company name OSRAM, save the addition of the letter “r”. In the Complainant’s view, such a difference does not avoid Internet user confusion. The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Domain Name has been used to resolve to a website that offered and distributed electronic devices, goods similar to those of the Complainant. The Complainant believes the Respondent was aware of the Complainant’s activity and trademark, the Complaint argues it is obvious that the Complainant’s famous trademark is used in order to attract potential buyers to the website to which the Domain Name resolves. The Respondent has used the Complainant’s trademark color. By registering the Domain Name, the Respondent was seeking to create a likelihood of confusion with the trademark and exploit the confusion with the well-known trademark OSRAM to attract Internet users. The Respondent freerides on the Complainant’s reputation and goodwill to generate traffic to his website. 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 rights in the trademark OSRAM. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark, with the addition of the letter “r” in front of the trademark. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. Based on the submitted documents from the Complainant, the Respondent has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name is not bona fide. The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Domain Name is confusingly similar to the Complainant’s well-known trademark. The Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel notes that due to the extensive international use of the distinctive OSRAM trademarks, they have been recognized as internationally “well-known” in former domain name disputes. The Panel agrees with the Complainant that the Respondent by registering the Domain Name was seeking to create a likelihood of confusion with the Complainant’s trademark to mislead third parties and generate traffic to the Respondent’s website. For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name Mathias Lilleengen
Sole Panelist
Date: September 30, 2020
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