Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Vijay Anand, Self, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2020. On December 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 11, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 5, 2021. 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Response was filed with the Center on January 24, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on February 2, 2021. 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 Complainant OSRAM GmbH is part of the OSRAM Licht Group, which was founded in Germany in 1919. Complainant operates in 120 countries, and in 2019 achieved annual sales of EURO 3.5 billion. Complainant makes various products, but is perhaps best known as a leading light bulb manufacturer. Complainant holds numerous registered trademarks for OSRAM, including Reg. No. 1,552,573 with the United States Patent and Trademark Office, registered on August 22, 1989, in connection with electric lamps and parts thereof, incandescent and fluorescent lamps, and other goods. Complainant has cited dozens of prior decisions under the UDRP in which panels have found the OSRAM mark to be distinctive and well known in many jurisdictions. The Domain Name was registered on August 9, 2019. The Domain Name resolves to a parking page which, in the German language, contains hyperlinks to various products within the purview of the lamp products manufactured by Complainant. The links include “Lampen und Leuchten Online” and “LED Lampen”. Respondent’s full substantive explanation for having registered the Domain Name (plus six others that same day which contain the string of letters “osram”) on August 9, 2019, is as follows: “I practice the Hindu religion and an ardent devotee of Lord Rama. My intention was to set-up a charity called ‘Om Shri Ram’ that promotes the learnings of the Hindu religion and is an avenue for the needy to find help and peace. The word OSRAM was meant to represent the name of the charity (Om Shri RAM). With this intention I purchased several related domain names in August 2019 […]. As a millennial, I am cognisant that these days it is important to have an internet presence first. While I purchased several domain names, a year later I decided to only renew osram-ams.com as I had better clarity on the charity’s purpose. I have two young kids and as they grow-up I came to the realisation that several Hindu parents would be in the same boat as us, living in a different country where it is perhaps challenging to inculcate our values into kids. For this reason, I felt that it might be more effective for the charity to just focus on my local community. The words ‘ams’ in the domain name stand for ‘all Middlesex society.’ Middlesex is the name of the area I live in […]. You can easily confirm this as you have my home address. To explain this further, the Hindu population in my area is above the national average. While I know this anecdotally, I was unable to find the exact statistics to support my point. Nevertheless, I was able to find the stat for Harrow according to Wikipedia, while the national average of Hindus in the UK is 1.5%, it is 25.3% in Harrow […]. Harrow is one of the boroughs in Middlesex. Therefore, just focusing on my local community and having a positive impact would have been a worthy achievement. I am hopeful that this explains my interest in the domain name. Secondly, I would like to disagree that the domain name was registered and is being used in bad faith. I have already explained the purpose of the domain name in the point earlier. Furthermore, if I really was acting in bad faith, I would have kept all the domain names referenced in the snapshot earlier. As mentioned earlier, once the charity’s mission was clear to me, I renewed the one name which fit my purpose. I am sure my statement can be easily verified as the other domain names are no longer owned by me. I would also like to state that the site isn’t in use currently, certainly not for selling lighting products as suggested in the complaint. I do acknowledge that it has been almost 18 months since I have purchased the domain name and yet my charity isn’t up and running. Unfortunately, my plans have been scuppered by COVID. The pandemic and the associated lockdowns in the UK have been particularly challenging for my personal circumstances as I am sure it has been for many. Therefore, my plans have been delayed. I am hopeful that I can get back to this noble cause but at the moment, I am unable to say when.” 5. Parties’ Contentions A. Complainant Complainant asserts that it has satisfied all three elements required under the Policy for the remedy it seeks, viz., an order canceling the Domain Name registration. B. Respondent Respondent’s position vis-à-vis the Domain Name is set forth in full in the “Factual Background” section above. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has registered trademark rights in the trademark OSRAM through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The distinctive OSRAM mark is clearly recognizable within the Domain Name. The hyphen and the additional letters “ams” do not prevent a finding of confusing similarity between the mark and the Domain Name. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent’s explanation why he registered the Domain Name is set forth above. The Panel finds it almost impossible to credit. First, Respondent provides no evidence of his “ardent devotion” to Lord Rama, or any evidence of his preparations to found a charity. Second, the Panel cannot fathom why Respondent would use the first initials, “o” and “s”, for the words “Om” and “Shri,” but use the first three letters,”ram”, of the word “Rama”. Nor is there any explanation why the last letter in “Rama” is omitted from Respondent’s chosen string of letters. In other words, why not “osrama” instead of “osram”? In sum, the Panel finds this chosen string of letters to be highly implausible – either “osr” or “omshrirama” would seem to fit Respondent’s purported needs much better – to the point of finding Respondent’s explanation a mere pretext rather than a genuine statement of motive vis-à-vis the Domain Name. Third, and perhaps most tellingly, Respondent’s explanation for the additional letters “ams” cannot be credited. Respondent essentially asserts that “ams” stands for “All Middlesex Society.” It is difficult to conceive a less well-suited abbreviation (except perhaps one with no “m” at all) to indicate a geographical association with Middlesex County in the United Kingdom. In sum, the Panel concludes that Respondent’s entirely uncorroborated account of his motives in connection with the Domain Name is more likely than not pretextual. The actual use to which the Domain Name has been put since its registration, namely, a parking page with hyperlinks to commercial sites related to lamp and lighting products (the field of business in which Complainant operates), is manifestly not a legitimate use of the Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered or Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent registered and used the Domain Name in bad faith. On this record, the Panel finds it more likely than not that Respondent had Complainant’s well-known OSRAM trademark in mind when he registered the Domain Name. The Panel notes that Respondent did not expressly deny having knowledge of the OSRAM trademark at the time he registered the Domain Name. As discussed above, the Panel finds Respondent’s explanation why he registered the Domain Name to be wholly uncorroborated and highly implausible. In addition, based on the commercial hyperlinks provided at Respondent’s website, the Panel finds that Respondent has registered and used the Domain Name in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv). Complainant has established Policy paragraph 4(a)(iii). 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 Robert A. Badgley
Sole Panelist
Date: February 11, 2021
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