WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Maike Tasci

Case No. D2020-2959

1. The Parties

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

The Respondent is Maike Tasci, Germany.

2. The Domain Name and Registrar

The disputed domain name <osram.expert> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2020, 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 11, 2020 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 12, 2020.

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 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2020.

The Center appointed Kaya Köklü as the sole panelist in this matter on December 9, 2020. 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 German corporation, which is part of the Osram Light Group. The Group is an internationally active company for lighting products and solution, initially founded in 1919 in Germany. The group nowadays employs around 23,500 people and is active in more than 120 countries worldwide.

The Complainant owns a large number of OSRAM trademark registrations around the world. According to the provided documents in the case file, the Complainant is, inter alia, the registered owner of the European Trademark Registration No. 000027490 (registered on July 20, 1998), covering trademark protection inter alia, for various goods and services, particularly for lighting related goods and services.

As evidenced in the case file, the OSRAM trademark is in various jurisdictions, accepted to be a well-known trademark according to Article 6bis of the Paris Convention.

The Complainant also owns and operates various domain names which incorporate its OSRAM and trademark, such as <osram.com>.

The Respondent appears to be an individual from Germany. However, the true identity of the Respondent remains unknown as name and contact details in the WhoIs records for the disputed domain name are apparently inaccurate.

The disputed domain name was registered on October 8, 2020.

So far, the disputed domain name did not resolve to an active website. However, the disputed domain name was used to send out fraudulent emails to third parties (evidence is provided in Annex 2 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is identical to its OSRAM trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and has also registered and is using the disputed domain name in bad faith. It is particularly argued that the disputed domain name has apparently been registered for the purpose of fraudulent activities.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Identical or Confusingly Similar

The disputed domain name is, in view of the Panel, identical to the Complainant’s OSRAM trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

In the Panel’s view, the general Top-Level Domain (“gTLD”) “.expert” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark.

In view of the finding above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark OSRAM, especially as the disputed domain name is identical to the Complainant’s trademark (see section 2.5.1 of the WIPO Overview 3.0).

Further, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a Response, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Plicy.

C. Registered and Used in Bad Faith

The unopposed allegation of fraudulent activities by the Respondent, and the evidence submitted in support of such allegation, are in view of the Panel sufficient evidence of the Respondent’s bad faith.

The Panel has no doubt that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name, particularly as the disputed domain name is identical to the Complainant’s non-dictionary OSRAM trademark.

Furthermore, the Panel finds that the Respondent acted in bad faith as he tried to trade-off the goodwill and reputation of the Complainant’s trade name and trademark rights for illegitimate commercial or possibly even criminal purposes. The fraudulent emails to third parties using the disputed domain name confirms the latter finding of bad faith.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

The fact that the disputed domain name does currently not resolve to an active website does not change the Panel’s findings in this respect.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 name <osram.expert> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: December 21, 2020