WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. ussdwqsuzhi, beijingqunfangkejiyouxiangongsi

Case No. D2017-0482

1. The Parties

The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is ussdwqsuzhi, beijingqunfangkejiyouxiangongsi of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <xmosram.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, 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 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 March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2017.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on April 12, 2017. 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 the proprietor of the trademark OSRAM, registered for the first time in 1906. The trademark has been registered in over 150 jurisdictions. Currently the trademark is registered, e.g., as a European Union Trademark No. 000027490, registered on April 17, 1998 with priority from April 1, 1996.

The disputed domain name was registered on November 4, 2016. The disputed domain name resolves to a website with pornographic content.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name merely adds the letters “x” and “m” to the Complainant’s trademark. This is insufficient to prevent confusion, especially as one of the Complainant’s product designations is OSRAM XM.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no affiliation or connection with the Complainant and is not known by the disputed domain name. The Complainant has not authorized the Respondent to use the disputed domain name.

The Complainant’s trademark is a well-known trademark and the disputed domain name resolves to a website with pornographic content. The disputed domain name is intentionally tarnishing the Complainant’s trademark, which also being used to acquire traffic to the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The disputed domain name contains the Complainant’s trademark in its entirety and combines it with the letters “x” and “m”. As the Complainant has shown, it uses OSRAM XM as one of its product designations.

Putting two letters in front of an otherwise identical domain name is not considered sufficient to remove likelihood of confusion. In this case the same letters are also used by the Complainant, which in this Panel’s opinion merely increases the likelihood of confusion with the Complainant’s trademark.

On these grounds the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Respondent has not rebutted these arguments.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

- “(i) circumstances indicating that [the respondent has] registered or has 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 or competitor; or

- (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 [the respondent’s] website or location.”

The Panel agrees with a number of previous UDRP panels and the Complainant’s evidence and finds that the Complainant’s trademark OSRAM is a well-known trademark in many countries in the world. It is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when it registered the disputed domain name. This is also supported by the fact that the disputed domain name includes the letter “x” and “m”, also used by the Complainant in connection with its well-known trademark.

The disputed domain name resolves to a website with pornographic content. Such content is unrelated to the Complainant’s trademark, which is well known for lighting products. In accordance with paragraph 3.11 of the WIPO Overview 2.0, the Panel finds that the intentional tarnishment of the Complainant’s trademark constitutes bad faith.

Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled.

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 <xmosram.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: April 25, 2017