WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. / Morteza M.M Mogaddam, Noorosam
Case No. D2018-2163
1. The Parties
The Complainant is OSRAM GmbH of Munich Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Morteza M.M Mogaddam, Noorosram of Tehran, Islamic Republic of Iran.
2. The Domain Names and Registrar
The disputed domain names <noorosram.com> and <nourosram.com> are registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2018. On September 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 4, 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 the Respondent of the Complaint, and the proceedings commenced on October 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2018. On November 6, 2018, the Center received an informal communication from the Respondent.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 12, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is OSRAM GmbH, a German company operating in the lighting field from 1919 all over the world, owning many trademark registrations for OSRAM, including:
- International Trademark Registration No. 676.932 OSRAM, registered on April 16, 1997;
- European Union Trademark Registration No. 000027490 OSRAM, registered on April 17, 1998.
The Complainant provided evidence in support of the above.
The disputed domain names <noorosram.com> and <nourosram.com> were registered on July 3, 2018.
At the time of filing the Complaint, the disputed domain name <noorosram.com> redirected to a website where the Complainant’s and other companies’ lighting and LED products were on sale, while the website at the disputed domain name <nourosram.com> was not active.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain names <noorosram.com> and <nourosram.com> are confusingly similar to its trademark OSRAM.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them, nor is the Respondent commonly known by the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark OSRAM is well-known in the field of lighting and the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and is using one of them to mislead consumers for its commercial gain, by advertising and offering lighting and LED products at the relevant website, in order to attract internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
B. Respondent
The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted an informal email communication on November 6, 2018. In his email, the Respondent stated the following:
“First of all, we should thank you a lot to inform us about the similarity of domain names. Therefore, both domains (noorosram.com and nourosram.com) were changed to (nooresram.com) and also we changed the link below as you see: ‘https://www.bargnama.com/noorosram’ changed to ‘https://www.bargnama.com/nooresram’.””
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark OSRAM, both by registration and by acquired reputation and that the disputed domain names <noorosram.com> and <nourosram.com> are confusingly similar to the trademark OSRAM.
The Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and a complainant’s trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,
WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,
WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,
WIPO Case No. D2000-0713). The addition of the descriptive words “noor” and “nour” (both meaning “light” in Arabic and Persian) do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com,
WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5.
The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. The Respondent in its informal response stated that the disputed domain names <noorosram.com> and <nourosram.com> had been changed to <nooresram.com> because of their similarity to the Complainant’s trademark. The Panel considers this response as an admission by the Respondent that the disputed domain names are similar to the Complainant’s trademark and that the Respondent has no rights or legitimate interests on them.
Moreover, as regards the disputed domain name <noorosram.com>, pointing to an active website, should the products sold on the website to which this disputed domain name is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the current state of UDRP panel decisions in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 2.8.1:
“(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
This summary is mainly based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
On the other hand, should the products offered for sale on the website to which the disputed domain name <noorosram.com> is redirecting Internet users be counterfeit products, that would be clear evidence that the Respondent does not have any rights or legitimate interests in this disputed domain name. The nature of the disputed domain names also supports a finding of lack of rights or legitimate interests in the disputed domain names in this case. (see WIPO Overview 3.0, section 2.2.1).
In the present case, in the website where the disputed domain name <noorosram.com> is redirected are advertised and offered not only the Complainant’s products, but also alternative products of the Complainant’s competitors, like Philips and Tridonic, and the Panel is of the opinion that this is sufficient to support the allegation of the lack of rights or legitimate interests of the Respondent in relation to this disputed domain name.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent has failed to rebut or deny this allegation.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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.”
As regards to the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark OSRAM all over the world in the field of lighting is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain names were confusingly similar to the Complainant’s trademark, especially because the content of the website where one of the disputed domain names is redirected is advertising and selling lighting products of the Complainant as well as other lighting products of the Complainant’s competitors. In addition, the Panel notes that the nature of the disputed domain names contain the words “noor” and “nour” (meaning “light” in Arabic and Persian) which also shows that the Respondent was targeting the Complainant with the registration of the disputed domain name).
As far as the disputed domain name <noorosram.com> is concerned, pointing to an active website, the Panel further notes that the Respondent is also using it in bad faith, trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark OSRAM in order to sell different lighting products, including but not limited to the Complainant’s ones, an activity clearly detrimental to the Complainant’s business.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name <noorosram.com> in order to create confusion with the Complainant’s trademarks and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
As far as the disputed domain name <nourosram.com> is concerned, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. In the circumstances of these cases, the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 names <noorosram.com> and <nourosram.com> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: November 19, 2018
