The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 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 21, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details. The Center sent an email communication to the Complainant on June 23, 2021 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint on June 24, 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 June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2021. The Center appointed Kateryna Oliinyk as the sole panelist in this matter on July 23, 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 a German based multi-national lighting manufacturer belonging to OSRAM Licht AG, which was founded in Germany in 1919. OSRAM Licht AG employs currently approximately 21,400 people and has operations in over 120 countries. In the 2020 financial year, a revenue of about EUR 3 billion was achieved. On August 6, 1992, the Complainant had signed an agreement with GTE Corporation of Stamford, Connecticut for the purchase of the North American lighting company. The Complainant acquired the second largest lighting manufacturer in North America, known as “Sylvania”, together with all its activities in the United States of America, Canada and Puerto Rico, United States of America. The Complainant concentrates its business on technology and innovation-led applications based on semiconductor technologies, addressing new trends of the lighting industry market, including: Opto semiconductors; Automotive; Digital (Lighting & Solutions, Specialty Lighting). The Complainant has expanded to the Asian/Pacific market, which, in the year 2020 made 37,1 % of its sales. The Complainant has traded under the name “Osram” since its foundation. The German trademark OSRAM was registered as early as April 17, 1906 for electrical incandescent and arc lamps in class 11. The Complainant has the large worldwide portfolio of the trademark registrations of an OSRAM series. The Complainant also owns many domain names under generic Top-level Domains (“gTLDs”) and country code Top-level Domains (“ccTLDs”) containing the term “osram”. Various WIPO UDRP panels have recognized the well-known status of the OSRAM trademark. Also, the OSRAM trademark has been recognized as well-known trademark by various competent forums in different countries, including the following ones: - Germany: the OSRAM trademark was recognized to be the famous trademark in 1937 by the German Supreme Court (Reichsgericht). The court held that “OSRAM is a “trademark with international standing”; The Complainant is the owner of more than 640 domain names including the OSRAM trademark, covering both gTLDs and ccTLDs. The Respondent registered the disputed domain name on January 5, 2021. The disputed domain name resolves to a parking page with pay-per-click links redirecting to third parties’ websites selling various kinds of lighting. The Respondent’s true identity is unknown. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or at least confusingly similar to marks owned by the Complainant and the Complainant’s company name as the disputed domain name consists of the name of the Complainant’s North American corporation known as “Sylvania”. The disputed domain name also contains the famous OSRAM trademark. The disputed domain name leads the public to think that it is somehow connected to the Complainant. The gTLD “.com” is to be disregarded under the confusing similarity test. The Respondent does not own the OSRAM trademark and has no rights or legitimate interests in the name “Osram”. The Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is not a licensee of the Complainant. The Respondent is also not commonly known by the disputed domain name. The Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. The Complainant further contends that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation. The disputed domain name clearly indicates bad faith intent to register and use the disputed domain name. Registering a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain (“gTLD”) “.com” is ignored as the standard registration requirement as reflected in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the disputed domain name consists of the whole of the Complainant’s registered OSRAM trademark combined with the name of the Complainant’s North American corporation “Sylvania”, and with the abbreviation “inc” referring to the term incorporation. The disputed domain name incorporates the Complainant’s OSRAM trademark as its initial element and eliminates, for technical reasons, the space between the words. Thus, the Complainant’s OSRAM trademark is clearly recognizable within the disputed domain name, as well as the name of the Complainant’s North American corporation “Sylvania”. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Thus, the addition of the element “inc” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to the OSRAM trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its OSRAM trademark. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a parking page with PPC links to third party websites selling various kinds of lighting. Section 2.9 of the WIPO Overview 3.0 states that panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. Thus, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to target the Complainant. As the Respondent’s true identity is unknown in this case, the Panel establishes that there are no evidences or statements of fact in the case which might evidence that the Respondent has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, has rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007. The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. According to section 3.1.1. of the WIPO Overview 3.0 the circumstances which may indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark include, alone or together: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity. Thus, bad faith registration can 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. Based on the evidence submitted by the Complainant, the Panel shares the view of previous UDRP panels and, with reference to the decisions of other competent forums which are on record, also finds that the Complainant’s OSRAM trademark is well-known and has the global outreach. Respectively, based on the Complainant’s submission, which was not rebutted by the Respondent, the Respondent must have known of Complainant’s well-known OSRAM trademark when it registered the disputed domain name, which is comprised of the Complainant’s OSRAM trademark combined with the name of the Complainant's North American corporation Sylvania. It appears to be a deliberate choice to combine the Complainant’s mark OSRAM with the name Sylvania. This clearly evidences on the intention on the part of the Respondent to confuse users seeking the Complainant. 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”.) 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: (i) the Respondent has used a privacy service hiding its identity; For the sake of completeness, the Panel should add that the fact that links on the website to which the disputed domain name resolves might be automatically generated does not prevent a finding of bad faith under the Policy (section 3.5 of the WIPO Overview 3.0). 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 Kateryna Oliinyk
- Japan: the OSRAM trademarks are cited as well-known trademarks in a legal textbook titled “FAMOUS TRADEMARKS IN JAPAN”;
- China: the International Economic and Trade Arbitration Commission (CIETAC) in its decisions has cited the trademarks of an OSRAM series as the trademarks with a high level of fame and reputation in China.
(ii) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use;
(iii) the use of the disputed domain name for the parking page, apparently containing links to third parties’ competitive websites to attract, for the commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website;
(iv) the implausibility of any good faith use to which the disputed domain name may be put.
Sole Panelists
Date: August 10, 2021
Full & Egal Universal Law Academy