The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Dickerson Teresa, OSRAM Pty Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 14, 2020, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2020, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on December 15, 2020, providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint on December 16, 2020. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021. The Center appointed John Swinson as the sole panelist in this matter on January 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 OSRAM GmbH, a company incorporated in Germany. According to the Complaint, the Complainant is a lighting company with a long history of manufacturing a wide range of lighting products. The Complainant’s parent company employs over 23,000 people, has operations in over 120 countries, and in the 2019 financial year had a revenue of approximately EUR 3.5 billion. More than a third of this revenue was generated in the Asia/Pacific region. An independent company has distributed the Complainant’s lamps under licence since 2016. The Complainant has traded under the name “OSRAM” since its foundation and has registered more than 500 trade marks and service marks for OSRAM in various countries, including German registered trade mark number 86924, which was registered on April 17, 1906 (the “Trade Mark”). The Complainant is also the owner of more than 640 domain names incorporating the Trade Mark. The Respondent is Teresa Dickerson, an individual of Australia. No Response was received from the Respondent and therefore little information is known about the Respondent. At the time the Complaint was filed, the Disputed Domain Name resolved to a website selling Skechers footwear. As at the date of this decision, there is no active website associated with the Disputed Domain Name. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant has used the Trade Mark extensively in relation to its goods and services which are offered in a large number of countries. A number of panels in previous WIPO decisions have recognized that the Trade Mark is well known worldwide. The Disputed Domain Name is identical or confusingly similar to the Trade Mark. The use of the Trade Mark in the Disputed Domain Name is likely to lead customers to believe that the Disputed Domain Name is associated with the Complainant. The addition of “-lamps” is not sufficient to avoid confusion on the part of customers who access the Disputed Domain Name. Further, the term “lamps” is descriptive of the Complainant’s lighting business. Rights or Legitimate Interests To the best of the Complainant’s knowledge, the Respondent does not hold a trade mark for the term “osram”, has no rights or legitimate interests in the term, and is not commonly known by the Disputed Domain Name. The Respondent has not registered the Disputed Domain Name with bona fide intent given the Complainant has not licensed or endorsed the Respondent’s use of the Trade Mark. Accordingly, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Registered or Used in Bad Faith The Trade Mark is well known in connection with the Complainant’s business as a lighting manufacturer. The Respondent uses the website at the Disputed Domain Name to advertise and distribute footwear. The Respondent’s use of the Trade Mark in the Disputed Domain Name is intended to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. The Respondent is trading on the Complainant’s reputation and goodwill to generate traffic to the Disputed Domain Name. The Disputed Domain Name incorporates the well-known Trade Mark in its entirety which clearly indicates the Respondent’s bad faith intent in registering and using the Disputed Domain Name. The Respondent knew or should have known about the Trade Mark at the time she registered the Disputed Domain Name and has not made any bona fide use of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark 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 or has subsequently been used in bad faith. The onus of proving these elements is on the Complainant, even though the Respondent failed to submit a Response. The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s failure to file a Response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of “-lamps”. In the Panel’s view, the addition of “-lamps” to the Disputed Domain Name does not prevent the Trade Mark from being recognizable in it. “Lamps” is moreover a dictionary term which is closely associated with the Complainant’s business as a lighting manufacturer. Accordingly, the Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. At the time the Complaint was filed, the Disputed Domain Name resolved to a website selling Skechers footwear. There is no obvious relationship between the Disputed Domain Name and the content on the website. There is no reference on website to the Respondent or the registrant organization. The address and phone number displayed on the website do not match the contact details of the Respondent provided by the Registrar. The address displayed at the website appears to be a residential address. The Panel performed a number of Google searches but found no evidence suggesting that the Respondent has rights or legitimate interests in “osram” or “lamps”. The Panel thinks that it is more likely than not that the Respondent registered the Disputed Domain Name with the Complainant in mind and merely to draw web traffic. Based on the above, the Panel is satisfied that the Respondent has not made a bona fide use or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services. Similarly, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name or is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent to misleadingly divert consumers or to tarnish the Trade Mark. The Panel notes that the registrant organisation of the Disputed Domain Name is OSRAM Pty Ltd, which appears to be the company name of a genuine OSRAM branch in Australia (see https://www.osram.com/cb/services/contact/contact-australia/index.jsp). It appears to the Panel that the Respondent has falsely provided the company details of a genuine OSRAM branch in order to appear legitimate. The Respondent had the opportunity to demonstrate her rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered or Subsequently Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith. Registered in bad faith According to the Complainant, the Disputed Domain Name was registered on August 27, 2019. The Respondent had the opportunity to refute the date of registration provided by the Complaint but failed to submit a Response. Accordingly, the Panel accepts the date of registration provided by the Complainant and notes that the Disputed Domain Name could not have been registered prior to the Trade Mark in any case, given the Trade Mark was registered in 1906. The Complainant has used the Trade Mark extensively in connection with its lighting business since 1906. The Panel accepts that the Trade Mark is well known internationally. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). In the Panel’s view, the Respondent either knew or should have known about the Trade Mark at the time the Respondent registered the Disputed Domain Name. The use of the term “-lamps” in the Disputed Domain Name suggests that the Respondent was in fact aware of the Trade Mark at the time the Disputed Domain Name was registered, given the widespread use of the Trade Mark by the Complainant in relation to lighting. In the Panel’s view, the Respondent registered the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of her website or a product or service on her website. Accordingly, the Disputed Domain Name was registered in bad faith. Use in bad faith As outlined above, there is no evidence that the Respondent is commonly known by the Disputed Domain Name and there is no connection between the Disputed Domain Name and the content on the website at the Disputed Domain Name. The Panel therefore accepts the Complainant’s contention that by incorporating the Trade Mark in the Disputed Domain, the Respondent is trading on the reputation and goodwill of the Complainant and the Trade Mark to generate traffic to the Disputed Domain Name. Such use is use in bad faith. In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element of the Policy. 7. Decision For all 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 John Swinson
Sole Panelist
Date: January 29, 2021
Full & Egal Universal Law Academy