WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram GmbH v. Domain Admin, Whoisprotection.cc / PD Pisces Perkasa

Case No. D2019-2597

1. The Parties

The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Martanata Martanata PD Pisces Perkasa, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <osramonlineshop.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2019. On October 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 November 5, 2019, 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 November 6, 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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2019.

The Center appointed Luca Barbero as the sole panelist in this matter on December 24, 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.

4. Factual Background

The Complainant is a multinational lighting manufacturer, part of the OSRAM Licht AG group, founded in Germany in 1919.

The Complainant is the owner of several trademarks composed by the term “osram”, including the following, as per trademark certificates submitted as annexes to the Complaint:

- International Trademark registration No. 676932 for OSRAM (word mark), registered on April 16, 1997, in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28 and 42;
- Benelux Trademark registration No. 0102496 for OSRAM (word mark), registered on September 1, 1974, in classes 1, 9, 10 and 11;
- European Union Trademark registration No. 000027490 for OSRAM (word mark), registered on April 17, 1998, in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28 and 42.

The Complainant is also the owner of numerous domain names covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), most of which redirect to the website published at the domain name <osram.com>, which was registered on March 25, 1999, and is used by the Complainant to promote its products and services under the trademark OSRAM.

The disputed domain name <osramonlineshop.com> was registered on September 17, 2019, and is pointed to a website promoting the sale of purported OSRAM products along with other products of competitors in the same market category.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <osramonlineshop.com> is confusingly similar to the trademark OSRAM in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the descriptive terms “online” and “shop” and the gTLD “.com”.

The Complainant highlights that the words “online” and “shop” are common English words that strongly indicate that the website linked to the disputed domain name is an online shop operated by the Complainant.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant submits that the Respondent, by advertising OSRAM products under the disputed domain name, is leading the public to thinking that it is an authorized dealer of OSRAM products. In doing so, the Respondent is therefore acting with the intent for commercial gain, to misleadingly divert consumers and to tarnish the Complainant’s reputation.

The Complainant also states that the Respondent is in no way an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant, has in any way been authorized by the Complainant to register the disputed domain name or is in any way commonly known by the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the website to which the domain name resolves, is in use as an online shop for lighting products of the Complainant, unduly suggesting that the Respondent or the website operator is purportedly authorized by the Complainant to register and use the disputed domain name.

Moreover, the Complainant asserts that, by registering the disputed domain name, the Respondent is purposely aiming at disrupting the Complainant’s business, whilst using the disputed domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source or affiliation and trading on the Complainant’s reputation and goodwill to generate traffic to its online shop or to third party online shops.

The Complainant emphasizes that even the choice of wording for the disputed domain name was not accidental, since the disputed domain name is virtually identical to the Complainant’s registered and well-known trademark OSRAM. Such conduct would only serve to clearly exacerbate the fact that the Respondent’s registration of the disputed domain name was carried out in bad faith.

In addition, the Complainant underlines that the Respondent has in no way attempted to make any bona fide use of the disputed domain name and that, considering the use of the disputed domain name in connection with the sale of purported OSRAM products, that the Respondent is clearly aware of the Complainant’s business and registered the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the 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

The Panel finds that the Complainant has established rights over the trademark OSRAM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 8 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark OSRAM, as it reproduces the trademark in its entirety with the addition of the descriptive words “online” and “shop” and the gTLD “.com”, which does not prevent a finding of confusing similarity.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark or service mark at issue.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name.

The Panel also notes that, based on the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.

In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name.

As mentioned above, the disputed domain name is pointed to a website advertising and selling purported OSRAM products along with other products of competitors in the same product category.

According to paragraph 2.8.1 of the WIPO Overview 3.0, “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.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”.

In the case at hand, as mentioned above, there is no evidence of any agreement between the parties as to the resale of OSRAM products and/or the authorization or prohibition to register the disputed domain name. Therefore, the Panel shall evaluate the presence of the cumulative requirements prescribed by the Oki Data test to determine whether the Respondent could be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.

According to the screenshots submitted by the parties and the Panel’s review of the Respondent’s website currently published at the disputed domain name, the first condition is met as the Respondent appears to actually offer for sale OSRAM products. Although there is no prima facie evidence that the Respondent has tried to corner the market in domain names reflecting the trademark, the second and third conditions are not fulfilled, since the Respondent is advertising and selling also products of competitors on the website at the disputed domain name and has not published an accurate and prominent disclaimer aimed at informing users about its relationship or lack thereof with the trademark owner.

In view of the above, the Panel finds that the Respondent is not making a bona fide offering of goods or services under the disputed domain name. Moreover, since the Respondent’s activity on its website is clearly commercial in nature, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to the bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the trademark OSRAM in connection with the Complainant’s products and of the widely known character of the trademark in several countries of the world, the Respondent ought to be aware of the Complainant’s trademark at the time of registration.

Moreover, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s trademark and offering for sale purported OSRAM products demonstrates that the Respondent was indeed well aware of the Complainant and its trademark.

Furthermore, in view of the well-known character of the Complainant’s trademark, recognized also in prior decisions rendered under the Policy, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

In view of the use of the disputed domain name in connection with the promotion and sale of the Complainant and competitors’ products, the Panel also finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website and the products offered therein, according to paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <osramonlineshop.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: January 7, 2020