WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Domain Admin, Whoisprotection.cc / Oscar Tunastama, Benny Benny

Case No. D2021-0299

1. The Parties

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

Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Oscar Tunastama, Benny Benny, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <distributorosram.com> (“the Domain Name”) 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 February 1, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 3, 2021.

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 Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 15, 2021. 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

Complainant is a German based company belonging to OSRAM Licht AG, which was founded in Germany in 1919. OSRAM Licht AG employs currently approximately 23,500 people and has operations in over 120 countries. In the 2019 financial year, its revenue was about EUR 3.5 billion. Complainant concentrates its business on technology and innovation led applications based on semiconductor technologies, addressing new trends in the lighting industry market, including: Opto semiconductors; Automotive; and Digital (Lighting & Solutions, Specialty Lighting).

Complainant has traded under the name “OSRAM” since it was founded. The OSRAM Mark was registered as early as April 17, 1906 for electrical incandescent and arc lamps in Germany (Registration No. DE86924) and in the United States on August 22, 1989 (U.S. Registration No. 1,552,573), among many other countries. Also, Complainant owns many domain names under generic Top-level Domains ("gTLDs") and country code Top-level Domains ("ccTLDs") containing the term "osram".

Respondent registered the Domain Name on November 5, 2019. It resolves to a website selling various kinds of lighting including lighting manufactured by Complainant.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or at least confusingly similar to Complainant’s OSRAM Mark. The Mark is included in its entirety in the Domain Name. The additional word “distributor” does not prevent Internet user confusion. To the contrary, it enhances confusion by indicating that Respondent is an authorized distributor of Complainant. The Domain Name leads the public to think that it is somehow connected to Complainant. The gTLD “.com” is to be disregarded under the confusing similarity test.

Respondent does not own the OSRAM Mark and has no rights or legitimate interests in the name “Osram”. It has not registered the Domain Name in connection with a bona fide intent as Respondent is not a licensee of Complainant. Also, Respondent is not commonly known by the Domain Name. Furthermore, it is not an authorized dealer, distributor or licensor of Complainant, nor is Respondent in any way associated with Complainant. Additionally, Respondent is not making a legitimate non-commercial or fair use of the Domain Name.

Respondent is using the Domain Name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation. Respondent chose the Domain Name, which is identical to the well-known OSRAM Mark which clearly indicates bad faith intent to register and use the Domain Name. Registering a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name but rather constitutes bad faith. This proves that Respondent knew Complainant well and thus registered the Domain Name in bad faith. Respondent is using the Mark to attract potential buyers to its website to which the Domain Name resolves as it offers and sells Complainant’s products.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds Complainant has established rights in the OSRAM Mark based on the aforementioned trademark registrations for the Mark that Complainant made of record.

The Panel further finds that the Domain Name <distributorosram.com> is confusingly similar to Complainant’s OSRAM Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “distributorosram”). The Domain Name wholly incorporates the OSRAM Mark, adding the word “distributor”. Including the OSRAM Mark in the Domain Name in its entirety is enough to render the Domain Name confusingly similar to that Mark. SeeBritannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. Furthermore, combining the OSRAM Mark with an additional term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Furthermore, adding the gTLD such as “.com” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrations. SeeSBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark for any purpose including to register the Domain Name. Furthermore, Respondent is not an authorized dealer or distributor of Complainant, nor is it associated with Complainant in any way. Furthermore, there is no evidence Respondent has been known by the name “Osram” or that it has any rights in the Mark.

Complainant alleges Respondent did not register the Domain Name in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate non-commercial or fair use of the Domain Name insofar as Respondent is using a the confusingly similar Domain Name to sell lighting products in competition with Complainant on the website associated with the Domain Name.

Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the OSRAM Mark has been registered on a worldwide basis and notes that it has been recognized as “well known” in many earlier UDRP decisions (e.g., OSRAM GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004; Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Enterprise Ltd., WIPO Case No. D2008-1032; OSRAM GmbH v. Kim Chanroc, WIPO Case No. D2015-0742; OSRAM GmbH v. Domain Administrator, See PrivacyGuardian.org / Ario Mardowo, WIPO Case No. D2016-0267, etc.). The Domain Name comprises the OSRAM Mark in its entirety, adding the descriptive term "distributor", which does nothing to distinguish the Domain Name from the Mark. In this case, using the particular term “distributor” with the OSRAM Mark where Respondent is selling lighting made by Complainant supports the Panel’s findings under the second and this element as it increases the likelihood of confusion.

Indeed, it suggests some formal relationship, which does not exist, between Respondent and Complainant. By using the <distributorosram.com> Domain Name, for a website that is selling lighting products including Complainant’s lighting products, and featuring the Domain Name prominently in conjunction with images of lighting fixtures moving horizontally across the front of the website to misrepresent a relationship with Complainant, this is clear evidence that Respondent registered the Domain Name with knowledge of Complainant and its rights in the OSRAM Mark, and with a clear purpose.

Furthermore, Respondent’s use of the Domain Name constitutes bad faith use because Respondent is using a confusingly similar Domain Name on a website misrepresenting itself as a distributor of Complainant’s products to sell Complainant’s products and competitors’ products for Respondent’s commercial gain, which is evidence of bad faith as described under paragraph 4(b)(iv) of the Policy..

The Panel therefore holds that Complainant has satisfied 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 Domain Name <distributorosram.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: March 29, 2021