Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Nguyễn Trần Dũng, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 1, 2021, 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 Complainant on February 2, 2021, 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 February 3, 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2021. Respondent sent an informal email communication to the Center on March 5, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on March 5, 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. The Panel notes that Complainant’s request that English be the language of the subject proceeding is moot as the Registrar has confirmed that the language of the relevant registration agreement used by Respondent to register the Domain Name was English. As such, the Panel confirms that the language of the proceeding will be English. 4. Factual Background Complainant is a multi-national lighting manufacturer headquartered in Munich, Germany. Complainant is the owner of the OSRAM trademark and has obtained numerous trademark registrations worldwide for the trademark, including but not limited to registrations for the trademark in Germany, the United States of America, Argentina, Australia, Benelux, Canada, Switzerland, European Union, France, and the United Kingdom. Complainant has been using the OSRAM trademark for nearly 115 years prior to registration of the Domain Name when Complainant obtained its first trademark registration for the OSRAM trademark in 1906. Respondent, Nguyễn Trần Dũng, is an individual who resides in Viet Nam. On September 25, 2020, the Domain Name was registered with the Registrar. As of January 29, 2021, the Domain Name resolved to a website appearing to be related to Complainant with the webpage featuring use of the OSRAM word and OSRAM logo trademarks and containing the text “OSRAM LIGHTING – GERMANY” preceding additional text in what appears to be Vietnamese. Sometime thereafter, the Panel notes that the Domain Name stopped resolving to an active website. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. With respect to the first element of the Policy, Complainant asserts rights in the OSRAM trademark dating back to at least as early as 1906. Complainant alleges that the Domain Name is comprised of Complainant’s OSRAM trademark preceded by “ledhighbay”, terms which correspond to one of Complainant’s OSRAM products, and that the addition of these terms do not obviate the likelihood of confusion, but rather enhances the likelihood of confusion because of the direct connection to Complainant’s products, and thus, the Domain Name is confusingly similar to Complainant’s OSRAM trademark. With respect to the second element of the Policy, Complainant contends that there is no evidence that Respondent has rights or a legitimate interest in the Domain Name because Complainant is unaware of any trademark rights Respondent has in the words “osram” or “ledhighbayosram”. In addition, Complainant asserts that it has not authorized Respondent to use the OSRAM trademark as Respondent is not an authorized dealer, distributor, or licensee, and to the best of Complainant’s knowledge Respondent is not commonly known as “osram” or “ledhighbayosram”. In addition, Complainant alleges that the OSRAM trademark is a distinctive and internationally well-known and famous mark such that Respondent could not have any rights or legitimate interests in the Domain Name. Furthermore, Complainant contends that Respondent at one point was using the Domain Name to resolve to a website that conveyed an association, affiliation, sponsorship from, or connection with Complainant, but is now is merely passively holding the Domain Name. Thus, Complainant concludes Respondent is not making a bona fide noncommercial use of the Domain Name. With respect to the third element of the Policy, Complainant alleges that at the time the Domain Name was registered, Complainant’s OSRAM trademark enjoyed a global reputation as a result of Complainant’s nearly 115 years of use and international expansion of the trademark prior to Respondent’s registration of the Domain Name. As such, Respondent knew of, or should have known of, Complainant’s prior existing rights in the OSRAM trademark and registering a domain name incorporating another party’s well-known and famous trademark does not convey rights or legitimate interests in the Domain Name and thus the registration thereof constitutes bad faith registration. Complainant further contends that Respondent’s registration and use of the Domain Name in bad faith is evidenced by the fact that, as of January 29, 2021, the Domain Name resolved to a website featuring use of the OSRAM trademarks and purportedly was being used by Respondent to sell lighting products and thus conveyed an association, affiliation, sponsorship from, or connection with Complainant to attract visitors to the website for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s OSRAM trademark. Subsequently, the Domain Name stopped resolving to an active website and Respondent’s current passive holding of the Domain Name, combined with Respondent’s previous use, on balance, is evidence of Respondent’s bad faith. B. Respondent The Panel acknowledges Respondent’s March 5, 2021, email communication to the Center, received after appointment of the Panel, but notes that the communication did not specifically address any of Complainant’s contentions and, as such, Respondent did not submit a formal reply to Complainant’s contentions in the subject proceeding. The email stated only, “Mean? Pls explain”. 6. Discussion and Findings Although Respondent sent a March 5, 2021, email, after appointment of the Panel, the Panel does not find that this communication sent after the deadline for a response is sufficient to constitute a Response to the Complaint under paragraph 5 of the Rules and the Panel finds that Respondent is in default. Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (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. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of numerous trademark registrations globally for the OSRAM trademark, dating back as far as 1906. It is well-established, and the Panel agrees, that the addition of a descriptive or dictionary word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans,WIPO Case No. D2010-0097. The Panel finds that Respondent’s addition of “ledhighbay” preceding OSRAM in the Domain Name does not obviate a finding of confusing similarity with Complainant’s OSRAM trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s OSRAM trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Here, Complainant has demonstrated that there is no evidence in the WhoIs data for the Domain Name indicating that Respondent has been commonly known by the term “osram” or “ledhighbayosram”. Instead, the WhoIs data for the Domain Name indicates that the registrant’s name is Nguyễn Trần Dũng. Complainant also has established that Respondent is not authorized to register or use the OSRAM trademark. Respondent failed to submit any arguments on this point. Accordingly, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you 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 (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 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.” As noted above, as it pertains to Complainant’s allegation that Respondent is not authorized by Complainant to use the OSRAM trademark, although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a formal response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Notwithstanding the above, given the unique and well-known nature of Complainant’s OSRAM trademark, and based on the uncontested facts of the record, on balance, it is inconceivable that Respondent can establish rights or legitimate interests in a domain name incorporating a third-party’s well-known trademark. See Red Bull GmbH v. Premiere-PTC-Network,WIPO Case No. D2008-1077. The Panel also finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name initially resolved to a website that gave the appearance of being associated with Complainant, when Respondent have no such affiliation, association or authorization. Use of a Domain Name to impersonate or suggest a sponsorship or endorsement by the trademark owner does not constitute fair use and thus is evidence of a Respondent’s lack of rights or legitimate interests. Moreover, the nature of the Domain Name carries a risk of implied affiliation – the addition of the term “ledhighbay” will more likely than not increase potential confusion because “led high bay” is the name of one of Complainant’s OSRAM products. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in website linked to disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options); see alsoWIPO Overview 3.0, section 2.5.1 (even where domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner). Further, passive holding of a disputed domain name incorporating a third-party, well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242. The current passive holding of the Domain Name, without more, does not create rights or legitimate interests and does not alter the Panel’s findings above. Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which they had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the OSRAM trademark represents the goodwill of a well-known, multi-national lighting manufacturer. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s OSRAM trademark when it registered the Domain Name, which is comprised of Complainant’s OSRAM trademark combined with the name of one of Complainant’s OSRAM products. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) As discussed in the previous section, based on the uncontested facts, Respondent does not appear to have any rights or legitimate interests in the Domain Name and there does not appear to be any justification for Respondent’s choice to register the Domain Name. Accordingly, on balance, there does not appear to be any other reason for Respondent’s registration of the Domain Name other than for the possibility to trade off the goodwill and reputation of Complainant’s OSRAM trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. This is additionally evidence of bad faith registration and use. The Panel notes that the Domain Name initially resolved to a website that featured use of the OSRAM trademarks to create the appearance of an association or affiliation between the website and Complainant. Use of the OSRAM trademark in the Domain Name to attract visitors to the website, which featured use of Complainant’s OSRAM trademark, would easily and undoubtedly lead consumers to assume that the website is related to, authorized, endorsed, licensed, or otherwise approved by Complainant. Accordingly, the website that was previously hosted at the Domain Name was disruptive of Complainant’s business and is evidence of Respondent’s registration and use of the Domain Name in bad faith. See Dylos Corporation v. Yang,WIPO Case No. D2015-1959 (finding bad faith registration and use where the website to which the disputed domain name resolved mirrored the complainant’s site suggesting a desire to make commercial gain from the use of the disputed domain name and/or to defraud consumers); Allianz SE v. Air Fast,WIPO Case No. D2020-2251. Lastly, the fact that use of the Domain Name subsequently ceased and no longer resolves to an active website does not obviate a finding of bad faith use of the Domain Name. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three-member panel in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith: (i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries; (ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; (iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name; (iv) the respondent did not reply to the complainant’s communications before the proceedings; and (v) the respondent did not reply to the complainant’s contentions. Here, Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Name. However, it seems more likely than not that the Domain Name was registered to draw an association with Complainant, as evidenced by the initial use of the Domain Name to resolve to a website that portrayed an apparent connection with Complainant as a result of Respondent’s use of the OSRAM trademarks on the website. In addition, the Panel is satisfied that the OSRAM trademark is sufficiently In sum, the Panel finds that Respondent knew or should have known of Complainant’s trademark rights and that Respondent’s prior use and present passive holding of the Domain Name is evidence of registration and use of the Domain Name in bad faith. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that Domain Name, John C. McElwaine
well-known that such an inference is both reasonable and probable. In light of these factors, the Panel finds that Respondent’s prior use and present passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is being used in bad faith by Respondent.
Sole Panelist
Date: March 19, 2021
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