WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Implus Co
Case No. D2017-1555
1. The Parties
Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Implus Co of Bangkok, Thailand.
2. The Domain Name and Registrar
The Disputed Domain Name <osam.site> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 21, 2017 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 August 23, 2017.
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 August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 14, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on September 27, 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
Complainant's company name "OSRAM" is protected as a trademark in various countries and regions around the world (the "OSRAM Marks"). The "GmbH" in the company name indicates a German limited liability company. Complainant belongs to the OSRAM Licht Group which was founded in Germany in 1919. Complainant is the operating company of OSRAM Licht AG, an international joint stock company with its headquarters in Munich.
OSRAM Licht AG employs currently more than 33,000 people and has operations in over 120 countries. In the 2015 financial year, a revenue of about EUR 5.6 billion was achieved.
Until recently OSRAM was one of the three largest lighting manufacturing companies in the world. In July 2016, Complainant legally carved out part of its business, transferring it to its fully owned subsidiary, LEDVANCE GmbH, which is now responsible as licensee of Complainant for the distribution of OSRAM products in many countries. LEDVANCE GmbH's portfolio comprises LED lamps and classic lamps and ballasts.
Complainant is meanwhile concentrating on technology – and innovation-led applications based on semiconductor technologies, addressing new trends of the lighting industry market, including among others: opto semiconductors, automotive and specialty lighting, and luminaries and solutions.
The historical advancement shows that the company OSRAM has developed into a strong, big and prosperous company. Towards the end of the First World War, the co-founder of OSRAM Siemens & Halske, AEG and Deutsche Gasglühlicht AG – took the decision to combine their forces and produce and market incandescent lamps under a single company. The Deutsche Gasglühlicht AG (DGA), owner of the OSRAM Marks, spun off light bulb manufacture from the company in November 1918 and founded OSRAM Werke GmbH. OSRAM Werke GmbH was converted into a Kommanitgesellschaft (limited partnership), with DGA as the limited partner. AEG and Siemens & Halske became limited partners of OSRAM GmbH KG on February 5, 1920 and brought their light bulb factories and shareholding in other light bulb factories with them. When OSRAM GmbH KG was founded, the name of the brand became the name of the company.
Complainant was the largest European light bulb manufacturer. In the early years, OSRAM succeeded in founding new subsidiaries abroad and acquiring companies and shareholdings in Zurich, Vienna, Oslo, Copenhagen, Milan, Stockholm, Bucharest, Helsinki, Amsterdam, Riga, Shanghai, Brussels, London and Rio de Janeiro.
On June 30, 1929, International General Electric (GE) USA became a shareholder of OSRAM GmbH KG. It took over a 16% share from AEG. The shares in OSRAM GmbH KG were two sixths each for AEG and Siemens and one sixth each for GE and the Koppel Group, the legal successor of the DGA (Auer-Gesellshaft).
On April 1, 1938, the first fluorescent lamps in the form that we know today were demonstrated at the World Fairs in New York and San Francisco by GE. Since 1954, OSARAM has had a second headquarters in Munich. To avoid legal and fiscal complications, the OSRAM GmbH KG was converted into a GmbH (limited liability company) on July 1, 1956. Its official name was now "OSRAM GmbH Berlin/Munich."
In 1967, a number of associated companies were set up. These were OSRAM Centroamericana SA in San Salvador, Neron Lamps London, PY OSRAM AS Helsinki and Compañia Eléctrica Mexicana AA de CV in Naucalpan. On August 6, 1992, the managing board reported that, subject to the approval of the relevant antitrust authorities, OSARM had signed an agreement with GTE Corporation of Stamford, Connecticut for the purchase of the North American lighting company. OSARM acquired the second largest lighting manufacturer in North American, known as "Sylvania," together with all its activities in the United States of America, Canada and Puerto Rico.
Between 2001 and 2013, OSRAM built the world's most advanced factory for light emitting diodes (LEDs) with its headquarters in Regensburg and the PMC division (Precision Materials and Components) with its headquarters in the United States of America. Opto semiconductors are among OSRAM's most innovative products. They convert electricity directly into colored light using a semiconductor chip. OSRAM Opto Semiconductors GmbH develops and manufactures opto-electronic components for the illumination, sensor and visualization sectors.
OSRAM expanded to the Asian Pacific market, which in the year 2015 made a part of 24.4% of its sales, with China 13.6%. In the same year, OSRAM had about 6,400 employees in China.
Meanwhile, OSRAM GmbH had been transformed into a joint stock company, OSRAM AG. The joint stock company was registered in July 2011 and then later retransformed into OSRAM GmbH again.
On July 5, 2013, the listing of the stock for OSRAM Lich AG began on July 8, 2013 on the Frankfurt Stock Exchange.
The operative company of OSRAM Licht AG is now OSRAM GmbH.
Complainant has traded under the name "OSRAM" since its foundation, having become the most relevant of its trademarks. On April 17, 1906, the OSRAM brand was registered as a trademark for "electrical, incandescent and arc lamps" (German trademark DE86924). A global OSRAM trademark was born, since only a few years later OSRAM established offices in European countries, Rio de Janeiro and Shanghai and meanwhile expanded its international presence with growing success. As a matter of fact, Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions. Moreover, Complainant owns over 100 international OSRAM trademarks.
Numerous WIPO cases have recognized the trademark rights of Complainant. These cases show that the OSRAM Marks are world-wide well-known.
Complainant is the owner of more than 640 domain names based on the denomination "OSRAM," covering both gTLDs and ccTLDs.
5. Parties' Contentions
A. Complainant
Complainant contends that the Disputed Domain Name is identical or at least confusingly similar to the OSRAM Marks in which Complainant has rights.
Complainant further contends that the absence of the letter "r" from the Disputed Domain Name is not sufficient to prevent a risk of confusion here. Complainant states that a person searching for "OSRAM" may likely erroneously visit the website to which the Disputed Domain Name resolves due to typing errors.
Complainant further states that the applicable Top-Level Domain ("TLD") suffix in the Disputed Domain Name ".site" is to be disregarded under the confusing similarity test, since it is a technical requirement.
Complainant alleges that Respondent has not shown any of the elements which give rise to rights or legitimate interests in respect of the Disputed Domain Name under paragraph 4(c) of the Policy. Respondent cannot show that it is the holder of any of the OSRAM Marks or that it has any rights or legitimate interests in the name "OSRAM." Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as Respondent is not a licensee of Complainant with regard to the trademark rights or the right to register the Disputed Domain Name and is not commonly known by the Disputed Domain Name.
Complainant alleges that Respondent's registration and use of the Disputed Domain Name has been in bad faith under paragraph 4(b) of the Policy.
Respondent is not an authorized dealer, distributor or licensee of Complainant, nor is Respondent in any way associated with Complainant. Additionally, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant avers that Respondent has included fraudulent content on Respondent's website as supported by screenshots in Annex 2 to the Complaint.
Complainant alleges that the OSRAM Marks are famous and their use in the Disputed Domain Name is evidence of bad faith. Complainant alleges that Respondent is using the Disputed Domain Name to divert traffic to Respondent's website. Complainant further alleges that there is no other plausible reason why Respondent has chosen the Disputed Domain Name.
Complainant asserts that the fraudulent content on Respondent's website referred to above is further evidence of bad faith.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Respondent is not obliged to participate in a domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the OSRAM Marks; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the OSRAM Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the OSRAM Marks.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Therefore, the Panel finds that Complainant has enforceable trademark rights for purposes of this proceeding.
Complainant contends that the Disputed Domain Name is identical or confusingly similar to the OSRAM Marks pursuant to the Policy paragraph 4(a)(i).
Complainant argues that the entirety of the OSRAM Marks is contained in the Disputed Domain Name with the absence of the letter "r."
Complainant further argues that the missing letter "r" is not distinctive and that the TLD suffix ".site" is to be disregarded under the confusing similarity test, since it is a technical requirement.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is identical or confusingly similar to a complainant's mark. The addition of non-distinctive phrases or a TLD suffix is not sufficient to dispel confusing similarity. See, Hoffmann-LaRoche AG v. P Martin,
WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,
WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,
WIPO Case No. D2008-0792. The Panel also finds that the omission of the letter "r" in the Disputed Domain Name is not sufficient to dispel confusing similarity.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the OSRAM Marks for purposes of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of respondent, respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the OSRAM Marks.
Complainant alleges that Respondent has not shown any of the elements which give rise to rights or legitimate interests in respect of the Disputed Domain Name under paragraph 4(c) of the Policy. Respondent cannot show that it is the holder of any OSRAM trademark or that it has any rights or legitimate interests in the name "OSRAM." Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as Respondent is not a licensee of Complainant with regard to the trademark rights or the right to register the Disputed Domain Name and is not commonly known by the Disputed Domain Name.
Respondent is not an authorized dealer, distributor or licensee of Complainant, nor is Respondent in any way associated with Complainant. Additionally, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant avers that Respondent has included fraudulent content on Respondent's website as supported by screenshots in Annex 2 to the Complaint.
The Panel finds that Complainant has made a prima facie case under paragraph 4(c). Respondent has not contested these allegations.
Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the OSRAM Marks or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the OSRAM Marks in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the OSRAM Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that the OSRAM Marks are famous and their use in the Disputed Domain Name is evidence of bad faith. Complainant alleges that Respondent is using the Disputed Domain Name to divert traffic to Respondent's website for commercial gain. Complainant further alleges that there is no other plausible reason why Respondent has chosen the Disputed Domain Name.
Complainant asserts that the fraudulent content on Respondent's website referred to above is further evidence of bad faith.
Respondent has not offered any explanation of a good faith use.
Therefore, the Panel finds that Complainant has satisfied the requirements of 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 <osam.site> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: October 12, 2017
