WIPO Domain Name Decision D2021-0600 for osrammexico.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION OSRAM GmbH v. Private Registration, OK HOSTING SC Case No. D2021-0600 1. The Parties

The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Private Registration, OK HOSTING SC, Mexico. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On February 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2021, 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 March 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 the Respondent of the Complaint, and the proceedings commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on April 15, 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

The Complainant is the registered owner of trademarks in several jurisdictions consisting of or containing the term OSRAM, e.g., International trademark registration No. 676932 OSRAM (word), registered on April 16, 1997 for goods and services in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28, and 42. This trademark has been duly renewed and is in force. European Union trademark registration No. 000027490 OSRAM (word), registered on April 17, 1998 for goods and services in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28, and 42. This trademark has been duly renewed and is in force.

The disputed domain name was registered on October 29, 2020, and resolved to an online shop in the making for “OSRAM” products, where the Complainant’s trademark is prominently featured. 5. Parties’ Contentions A. Complainant

It results from the Complainant’s undisputed allegations that it belongs to the OSRAM Licht Group which was founded in Germany in 1919. The Complainant is the operative company of OSRAM Licht AG, an international joint stock company in the lighting sector, with its headquarters in Munich, Germany, which currently employs approximately 23,500 people and has operations in over 120 countries. It is meanwhile concentrating its business on technology and innovation-led applications based on semiconductor technologies, addressing new trends of the lighting industry market, among others Opto semiconductors, Automotive and Digital (Lighting & Solutions, Specialty Lighting), while the distribution of OSRAM LED lamps and classic lamps and ballasts is carried out by an independent company Ledvance GmbH as a licensee since 2016.

The Complainant contends that its distinctive trademarks OSRAM have become internationally “well-known” due to the extensive international use.

The Complainant further contends that the disputed domain name is identical or highly similar to the Complainant’s earlier trademarks and the Complainant’s company name, since the disputed domain name contains the famous trademark “OSRAM” and the word “mexico” is simply geographical so that Internet users will expect the Complainant’s homepage for Mexico under the disputed domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not registered the disputed domain name in connection with a bona fide intent as he is not licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name and he is also not commonly known by the disputed domain name. Finally, the Respondent is not authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant submits that OSRAM is a famous trademark and provided evidence that the disputed domain name resolved to an online shop in the making for “OSRAM” products, where Complainant’s famous mark is prominently featured. Therefore, the Respondent seeks to take unfair advantage of the Complainant’s famous trademark. In addition, according to the Complainant, the Respondent’s choice of the disputed domain name, which is identical to the well-known Complainant’s registered trademark OSRAM, clearly indicates a bad faith intent to register and use of the disputed domain name. Finally, according to the Complainant, its famous trademark is being used in order to attract potential buyers to the website to which the disputed domain name resolves. Here, the Respondent clearly knows about the worldwide well-known Complainant’s trademarks OSRAM, as it intends to offer and sell the Complainant’s products. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark OSRAM. Reference is made in particular to International trademark registration No. 676932 OSRAM (word), registered on April 16, 1997 for goods and services in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28, and 42. This trademark has been duly renewed and is in force. European Union trademark registration No. 000027490 OSRAM (word), registered on April 17, 1998 for goods and services in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28, and 42. This trademark has been duly renewed and is in force.

Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; LEGO Juris A/S v. ken Teo,WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter,WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409).

This Panel shares this view and notes that the Complainant’s registered trademark OSRAM is fully included in the disputed domain name, followed by the geographical term “mexico”. Furthermore, it is the view of this Panel that the addition of the term “mexico” in the disputed domain name cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademark, since the Complainant’s trademark is clearly recognizable in the disputed domain name.

Finally, the generic Top-Level-Domain (“gTLD”) “.com” of the disputed domain name could be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark OSRAM, e.g., by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered and well-known trademark OSRAM and that the trademark OSRAM is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain (e.g.,Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello,WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847).

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation, since the disputed domain name contains the Complainant’s trademark OSRAM followed by the geographic term MEXICO and geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner see WIPO Overview 3.0, section 2.5.1.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark OSRAM is widely known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed OSRAM mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100).

Moreover, the further circumstances surrounding the disputed domain name’s registration and use support a finding that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark OSRAM is widely known; (2) the Respondent has used a privacy service hiding its identity; (3) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (4) the implausibility of any good faith use to which the disputed domain name may be put. Furthermore, the use of the disputed domain name to resolve to an online shop prominently displaying the Complainant’s mark suggests an intent by the Respondent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark OSRAM and affirms the finding of bad faith in these circumstances.

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 disputed domain name be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: April 27, 2021

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