The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Sharwan Kumar, Osram India Led Smart Light, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 June 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Center received email communications from the Respondent on June 14 and 21, and August 17, 2021. On the Complainant’s request, the Center suspended the proceedings from June 21, 2021, until July 5, 2021. A further email communication from the Respondent was sent on October 20, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 20, 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 BackgroundThe Complainant 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, with its headquarters in Munich and operations in over 120 countries, concentrating its business on technology and innovation-led applications and the lighting industry market.
It is the owner of hundreds of trademark registrations for OSRAM (Annexes 7 and 8), amongst which the European Union trademark registration No. 27490 for OSRAM, registered on April 1, 1996, and subsequently renewed in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28, and 42.
The disputed domain name
The Complainant asserts to have been trading under the name OSRAM since its foundation, having become the most relevant of its trademarks. The Complainant further claims to have registered on April 17, 1906 the OSRAM trademark for “electrical incandescent and arc lamps”, which later and presently became a global trademark, registered in over 150 countries and regions.
Due to the extensive international use of the distinctive OSRAM trademark it has become internationally well-known, as recognized in dozens of past UDRP decisions, in addition to having been registered as a well-known trademark in Thailand (Annex 9 to the Complaint), recognized as a famous trademark by the German Supreme Court in 1937 (Annex 10 to the Complaint) and regarded as a well-known trademark in Japan, China, Brazil and Republic of Korea (the) (Annexes 11-16 to the Complaint).
According to the Complainant, the disputed domain name is identical or confusingly similar to its OSRAM trademark, the addition of the term “lights” in the disputed domain name does not prevent a finding of confusing similarity.
As to the absence of rights or legitimate interests, the Complainant argues that the Respondent:
(i) is not an authorised dealer, distributor or licensee of the Complainant, nor is the Respondent in any way associated with the Complainant;
(ii) does not own any OSRAM trademark or holds any rights or legitimate interests in the OSRAM name; and
(iii) is not commonly known by the disputed domain name.
Furthermore, the Complainant asserts that the Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s trademark in view of the combination of the English term “lights” and the Complainant’s famous mark “OSRAM” which clearly shows that the Respondent knew of the Complainant and its lighting business and thus has registered the domain name in bad faith; there being no other plausible reason for the Respondent to have registered the disputed domain name other than to exclude the Complainant from its registration or to offer it to the Complainant for sale or to profit from the parked page that presently resolves from the disputed domain name.
B. RespondentThe Respondent sent four informal messages appearing to agree with the Complaint or showing his willingness to settle: on June 14, 2021, the Respondent stated that he agreed with the Complainant. On June 21, 2021, a further email communication was sent from the Respondent stating that he would settle. On August 17, 2021, the Respondent asked to close the matter as he would suspend the domain name as required and, lastly, on October 20, 2021, he wrote that “we are agree to withdraw this domain, so we are requested you to close this matter”.
While the Panel notes the Respondent’s email communications, the Panel will proceed to a substantive decision on the merits.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainant has established its rights in the OSRAM trademark.
The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety. The addition of the term “lights” does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Respondent’s use of the disputed domain name comprising the Complainant’s trademark in its entirety in connection with a parked webpage displaying PPC links cannot be considered a bona fide offering of goods or services.
The Panel notes that for the registration of the disputed domain name the Respondent provided the name “Osram India Led Smart Light”. The Panel further notes the absence of an explanation on why such name was used for the registration of the disputed domain name. The use of such name for the registration of the disputed domain name is not sufficient in itself to give rise to rights or legitimate interests in the disputed domain name. In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain name, or that it has acquired any registered trademarks or trade names corresponding to the disputed domain name corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
Moreover, the Panel notes that the Respondent has not asserted any rights or legitimate interests in respect of the disputed domain name in its informal response. On the contrary, the Respondent appears rather to have consented to the transfer of the disputed domain name, which may affirm the Panel’s consideration that it has no rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name characterizes the Respondent’s intent of commercial gain by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant. Two other factors further corroborate the Panel’s finding of bad faith, in the circumstances of this case: the Respondent’s choice to retain a privacy protection service so as to conceal his true identity and the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier.
For the reasons above, the Panel finds that the Respondent’s amounts to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: November 3, 2021