The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Crawford Kieran of London, United Kingdom.
The disputed domain name <orsam-os.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2019, 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 the same date 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 January 9, 2019.
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 January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 13, 2019. 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 belongs to the international joint stock company Osram Licht group, founded in Germany in 1919 with headquarters in Munich. Osram currently employs around 27,000 people worldwide and has operations in over 120 countries.
Osram is one of the largest lighting companies around the world. Since July 2016, the company Ledvance is responsible as Licensee of the Complainant for the distribution of Osram products in many countries, while the Complainant is concentrating on technology and innovation-led applications related to the lighting industry market.
The Complainant owns several registrations in multiple jurisdictions for more than 500 OSRAM trademarks in over 150 countries and regions, including the United States of America registration No. 1552573 registered on August 22, 1989.
The Complainant also owns more than 640 domain names consisting of the mark OSRAM, covering both generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”).
The disputed domain name was registered on November 23, 2018.
The Complainant argues that the Respondent registered the disputed domain name in November 22, 2018 and that it is identical or at least confusingly similar to marks owned by the Complainant, suggesting an association with the Complainant and likelihood of confusion among the Complainant’s customers.
The Complainant alleges that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, and that it does not hold a trademark, trade name or other rights in the name Osram.
In addition, the Complainant says that the Respondent has not made a bona fide offering of goods or services and/or a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent was engaged in illegal activities by soliciting payment of fraudulent invoices by a customer of the Complainant through the disputed domain name.
According to the Complainant, the Respondent is not authorized to register and use the disputed domain name, and the disputed domain name was registered with full knowledge of the Complainant’s rights in the trademark OSRAM to create a likelihood of confusion among internet users and causing severe financial damage to the Complainant.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The evidence presented in the Complaint demonstrates that the Complainant is the owner of numerous trademark registrations for OSRAM around the world as well as several different domain names comprising OSRAM trademark.
The disputed domain name is confusingly similar with the Complainant’s trademark OSRAM. The intentional misspelling between the disputed domain name and the Complainant’s trademark does not prevent a finding of confusing similarity. The addition of the suffix “os” does not eliminate the confusing similarity between the disputed domain name and the Complainant’s trademark either.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark OSRAM.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complainant showed evidence that the disputed domain name was used for fraudulent activities.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
The trademark OSRAM is registered by the Complainant in several jurisdictions and has been used since a long time. Also, the Complainant registered many different domain names consisting of the mark OSRAM.
The disputed domain name represents an intentional misspelling of the Complainant’s mark and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s OSRAM mark is distinctive, widely known and has a strong worldwide visibility. Thus, a domain name that blatantly imitates such a well-known mark is suggestive of the registrant’s bad faith. It is not conceivable that the Respondent would not have been aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2018).
In addition to the above, the Complainant showed evidence in Annex 2 of the Complaint that the disputed domain name was used by the Respondent to mislead users into believing that an email linked to the disputed domain name was related to the Complainant, by soliciting payment of fraudulent invoices by one of the Complainant’s customers from this email.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its email linked to the disputed domain name belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark OSRAM as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., 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, <orsam-os.com>, be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: February 27, 2019
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