Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is PT. Skena Wahana Kreatif, Indonesia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on September 21, 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 September 28, 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 September 29, 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on November 9, 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 BackgroundComplainant belongs to the OSRAM Licht group which was founded in Germany in 1919. Complainant is the operative company of OSRAM Licht AG, an international joint stock company, with its headquarters in Munich. On July 8, 2013, the listing of the stocks for OSRAM Licht AG began on Frankfurt Stock Exchange. OSRAM Licht AG employs currently approximately 21,400 people and has operations in over 120 countries. In the financial year 2020, a revenue of about EUR 3.0 billion was achieved. Complainant has traded under the OSRAM brand since its foundation.
On April 17, 1906 the OSRAM brand was registered as a trademark. Complainant is the owner of numerous trademarks for OSRAM, including European Union trademark no 000027490, filed on April 1, 1996 and registered on April 17, 1998, for goods and services in international classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28 and 42.
The Domain Name was registered on July 29, 2021 and at the time of filing of the Complaint it lead to what appeared to be an online shop for OSRAM products (the Website). It currently leads to an inactive page.
5. Parties’ Contentions A. ComplainantComplainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements that 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 SimilarThe Domain Name incorporates Complainant’s OSRAM trademark in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The addition of the letters “idn”, country code for Indonesia, does not prevent a finding of confusing similarity as it is a geographical term and the OSRAM trademark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s OSRAM trademark.
B. Rights or Legitimate InterestsPursuant 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 Respondent of the dispute, Respondent’s 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) 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) Respondent is 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 has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website containing content that suggested falsely that the website was that of Complainant or of an affiliated entity or of an authorized partner of Complainant.
Per Complainant, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, existed allowing the use of Complainant’s trademarks on the website of Respondent.
A distributor, reseller or service provider, can make a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1): (i) respondent must actually be offering the goods or services at issue; (ii) respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggested that it was official website of Complainant or of an entity affiliated to or endorsed by Complainant. The Website reproduced, without authorization by Complainant, Complainant’s trademarks, without any disclaimer of association (or lack thereof) with Complainant.
Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).
In addition, the nature of the Domain Name, comprising Complainant’s trademark in its entirety in combination with the geographical abbreviation “idn”, carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 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 has registered and used the Domain Name in bad faith.
Because the OSRAM mark had been widely used and registered by Complainant before the Domain Name registration, and enjoys reputation as repeatedly recognised (e.g. OSRAM GmbH v. huangwenge, WIPO Case No. D2019-1019, OSRAM GmbH v. Shen Duo Wu,WIPO Case No. D2019-0684) the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000‑0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462).
Furthermore, the content of the Website further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).
The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc.,WIPO Case No. D2015‑0403).
Last, Respondent could have conducted a trademark search and should have found Complainant’s prior registrations in respect of OSRAM (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create the Website, which prominently displayed Complainant’s registered trademarks, thereby giving the false impression that it was operated by Complainant or a company affiliated to Complainant or an authorised partner of Complainant. The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388 and WIPO Overview 3.0, section 3.1.4).
The Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000‑0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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,
Marina Perraki
Sole Panelist
Date: November 23, 2021