The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Suslov Kirill of Nizhny Novgorod, Russian Federation.
The disputed domain name <ledosram.trade> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 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 the Complainant on October 2, 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 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.
The Center appointed William F. Hamilton as the sole panelist in this matter on October 29, 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 Complainant is an international business which has sold lighting services and products around the globe, including LED lamps and classic light bulbs. The Complainant now focuses its business on optic semiconductors, automotive lighting, and specialty lighting. The Complainant owns the mark OSRAM (the “Mark”) and the domain <osram.com>. The Complainant traces its background to its founding in 1919 and has conducted business under the Mark since its founding. The Complainant currently has over 26,000 employees in over 120 countries. Over the course of the last century, the Complainant obtained registrations of the Mark in over 150 jurisdictions around the world. See, e.g., International Registration No. 321818 for OSRAM, registered on September 26, 1966). The Complainant owns and operates the website at “www.osram.com”.
The disputed domain name was registered on August 13, 2018. The disputed domain name does not resolve to an active website other than a Namecheap hosting page indicating that the WhoIs information for the disputed domain name is pending verification.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is composed of the Mark preceded only by a generic term “led”. The Complainant further asserts that the Respondent has no rights or legitimate interests in the Mark or the disputed domain name as the Respondent has never been known by the Mark or disputed domain name and the Complainant has disavowed licensing the Mark to the Respondent. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith, notwithstanding the fact that the disputed domain name does not currently resolve to an active website.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name adopts the distinctive Mark entirely and merely adds the prefix “led”. The term “led” is an acronym for light-emitting diode which is a modern energy-efficient and rapidly developing lighting technologies. The utilization of “led” as a prefix does not avoid confusing similarity with the Complainant’s Mark, noting that the Complainant is a provider of lighting products and services. Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.) Further, a generic Top-Level Domain, in this case “trade,” is a standard registration requirement and as such is disregarded under the confusing similarity test. Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Société Nationale des Chemins de Fer Français, SNCF v. TransureEnterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0447.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for a number of reasons. There is no evidence that the Respondent has been known by the disputed domain name or that the Respondent has conducted any bona fide business utilizing the disputed domain name. In fact, no apparent use is being made of the disputed domain name. The Respondent has failed to respond to the Complainant’s contentions and provide any evidence of rights of legitimate interests in the disputed domain name. Finally, the Complainant has specifically disavowed permitting use by or licensing of the Mark to the Respondent. World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642.
The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel finds the disputed domain name was registered and is being used in bad faith. It is inconceivable the Respondent would willy-nilly and innocently appropriate the Complainant’s well-known and distinctive Mark utilized by the Complainant in the sale of lighting products and then affix the contemporary lighting term “led” to the Mark to compose the disputed domain name. The Respondent has clearly attempted to create a misleading impression of association with the Complainant’s name and Mark. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (only feasible explanation for registration of the domain name is intention to cause confusion, mistake and deception).
The fact that the disputed domain does not currently resolve to an active website does not prevent a finding of bad faith. The registration and use of the disputed domain name deprives the Complainant of the use of the disputed domain name and may confuse Internet users as to the Complainant’s status when directed to the Respondent’s inactive website. A respondent with no bona fide claim to rights or legitimate interests in the Mark cannot be permitted to passively hold a confusingly similar disputed domain name registered in bad faith. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. See generally section 3.3, WIPO Overview 3.0.
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 <ledosram.trade> be transferred to the Complainant.
William F. Hamilton
Date: November 6, 2018
Stay updated! Get new cases and decisions by daily email.