The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Liu Zhijun of Shaoyang, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 19, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 28, 2013. 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 headquartered in Munich and is part of the Osram Group which was founded in Germany in the year 1919. The Complainant has over 43,000 employees with 46 manufacturing sites in 17 countries supporting customers in about 150 countries. The Complainant is one of the largest lighting manufacturers in the world.
The Complainant has been trading under the name Osram since its foundation. OSRAM was registered as a trademark for “electrical incandescent and arc lamps” since 1906. The Complainant has since registered over 500 trademarks in over 150 countries incorporating the term “osram”.
The disputed domain name was registered on November 19, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
Due to the extensive international use of the distinctive OSRAM trademarks, they have become internationally “well-known”.
The disputed domain name is identical or confusingly similar to the trademark OSRAM in which the Complainant has rights. The dominant and distinctive feature of the disputed domain name is the word “osram”. The only difference is the addition of “” at the end which will be understood as the generic Top-Level Domain (“gTLD”) and the country code Top-Level Domain (“ccTLD”) for Colombia. The addition of “.co” is not sufficient to outweigh the similarity between the disputed domain name and the trademark OSRAM.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not hold a trademark OSRAM or any similar trademark. The Respondent does not use the trademark OSRAM in connection with a bona fide offering of goods or services. The Respondent is not an authorized dealer, distributor or licensee of the Complainant. The Respondent is not associated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent according to WhoIs data owns 1,605 domain names. This reveals that the Respondent´s core source of revenues must be trading in domain names.
The disputed domain name was registered and is being used in bad faith. The trademark OSRAM is a famous trademark of the Complainant. The Respondent’s website at the disputed domain name promoted products which compete with the Complainant’s products under the trademark OSRAM. The Respondent must have known about the well-known trademarks of the Complainant.
The Respondent is using the disputed domain name to mislead consumers searching for Osram products to a website with mainly competing products. The Respondent is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant and the trademark OSRAM.
The Complainant requests as a remedy the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns rights in the trademark OSRAM by virtue of its trademark registrations for the same.
The disputed domain name incorporates the trademark OSRAM in its entirety. The only difference between the disputed domain name and the trademark OSRAM are the suffixes “.com” and “.co”. The Panel accepts that the suffix “.co” is likely to be associated with the ccTLD for Colombia and is insufficient to distinguish the disputed domain name and the trademark OSRAM. As such, the Complainant has established that disputed domain name is confusingly similar to the trademark OSRAM. B. Rights or Legitimate Interests
The Complainant has shown that it owns trademark rights in the trademark OSRAM and confirmed that the Respondent is not authorized by or associated with the Complainant. There is no evidence before the Panel to suggest that the Respondent owns any rights in the trademark OSRAM.
There is no evidence indicating that the Respondent is known by the disputed domain name. The website at the disputed domain name indicates that the Respondent is not using the disputed domain name in a noncommercial manner. The Respondent has chosen to remain silent in this proceeding and has not provided any explanation which could account for the selection of the disputed domain name to serve a legitimate interest.
Accordingly, the Complainant has successfully made out a prima facie case that the Respondent does not have any right or legitimate interest in the disputed domain name. In the absence of a Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel accepts that the trademark OSRAM is a well-known trademark (See Osram GmbH v. bei jing tong xin shun kai shang mao you xian gong si,WIPO Case No. D2013-0191; Osram GmbH v. Transure Enterprise Ltd.,WIPO Case No. D2009-0010; OSRAM GmbH v. Jae Gyu Park,WIPO Case No. D2008-1578; OSRAM GmbH v. Emmanuel Jouret, Case No. D2008-1046; Osram GmbH v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004; and Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083).
Complainant states that the disputed domain name resolves to a website listing ads of competing products according to Annex 3 of the Complaint. The Respondent has not denied this assertion. The Panel has visited the disputed domain name. The website at the disputed domain name promoted products under the trademark OSRAM and competing products from other sources.
The Panel has no doubts that the Respondent must have been aware of the trademark OSRAM when the disputed domain name was registered. The Panel also finds that this case is a typical situation of bad faith registration and use according to paragraph 4(b)(iv) of the Policy.
Having established the prior knowledge of the trademark OSRAM by the Respondent and the commercial promotion of products under the trademark OSRAM and other brands on the website at the disputed domain name, it can only be reasonably concluded that the Respondent must have been using the disputed domain name to attract Internet users to the Respondent’s website with commercial gain in mind. The Respondent’s choice of the disputed domain name points inexorably to the conclusion that the Respondent must have intended to ride on the trademark OSRAM by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website or the goods on the website with the trademark OSRAM.
Without any explanation and justification by the Respondent to contradict this finding, the Panel holds that bad faith registration and use of the disputed domain name as such has been established. 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.
Pablo A. Palazzi
Sole Panelist
Date: June 11, 2013
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