The Complainant is OSRAM GmbH of Munich, Germany represented by Hofstetter, Schurack & Partner, Germany (hereinafter “Complainant”).
The Respondent is Vanmala Bansode of Nanded, Maharashtra, India, self-represented (hereinafter “Respondent”).
The disputed domain name <osram.xyz> is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2018, 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 July 18, 2018 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 2, 2018. Respondent sent an email communication to the Center on August 2, 2018.
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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Center informed the Parties about the commencement of the Panel appointment process on August 30, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 11, 2018. 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.
Complainant operates under the trade name Osram and has done so since 1919. It employs some 26,000 and has operations in over 120 countries. In the 2017 fiscal year it had revenues in excess of EUR four billion. Complaint, Annex 5. It is engaged in the manufacture and sale of lighting products. Complaint, Annex 6. It has registered more than 500 trademarks and service marks in more than 150 countries and regions which consist of or which incorporate the OSRAM mark. Complaint, Annex 8.
In 2017, 35% of its sales were made in the Asia/Pacific region. Complaint, Annex 5. The mark has been recognized as famous by the Customs authorities of the Peoples Republic of China located in Shanghai. Complaint, Annex 14. The Chinese International Economic and Trade Arbitration Committee (CIETAC) has conducted arbitration proceedings involving Complainant’s OSRAM marks have been recognized as famous and well-known. Complaint, Annex 15.
Respondent registered the disputed domain name on May 29, 2018. Complaint, Annex 1 a. At the time that the Complaint was filed, Respondent had been using the disputed domain name to resolve to a website at which lighting goods were offered for sale and on which website Complainant’s OSRAM trademark was used. Complaint, Annexes 2 a and 2 b.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s registered OSRAM trademarks and service marks. Complainant contends that Respondent has never been employed to use, licensed, or otherwise authorized to use Complainant’s OSRAM mark. Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith in that Respondent has been using the disputed domain name to resolve to a website at which Complainant’s OSRAM trademark is employed to suggest that the lighting goods being offered for sale on the website or those manufactured and sold by Complainant.
Respondent did not respond to Complainant’s allegations.
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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.”
The disputed domain name consists of Complainant’s famous OSRAM mark as the Second Level Domain name which Respondent registered in the “.xyz” generic Top-Level-Domain. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has used the disputed domain name to resolve to a website that features lighting goods and text that suggests that goods being offered for sale are those of Complainant and that the website is authorized by Complainant. This is clearly not the case.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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, <osram.xyz>, be transferred to Complainant.
M. Scott Donahey
Date: September 25, 2018
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