WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Ocean Grenier
Case No. D2008-0083
1. The Parties
The Complainant is Osram GmbH, Munich, Germany, represented by Patent und Rechtsanwälte Hofstetter, Schurack & Skora, Germany.
The Respondent is Ocean Grenier, Paris, France.
2. The Domain Name and Registrar
The disputed domain name <osram-led.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2008. On January 22, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 22, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2008.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on March 5, 2008. 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 company registered under the name OSRAM GmbH. It is the owner of several trademarks consisting of or containing the word “Osram”, including (amongst several others) international trademark No. 321818, registered on September 26, 1966 in international class 9.
The Complainant is in particular active in the field of opto-electronic components and modules. It develops and produces LED systems for a wide range of applications.
The Respondent registered the domain name on September 5, 2007. The domain name is active and resolves to a website showing a title “www.studio-led.com” and containing a generic, unmodified, template for a placeholder page.
5. Parties’ Contentions
Concerning the first test under the Policy paragraph 4 (a)(i), the Complainant submits that the domain name is confusingly similar to a trademark in which it has rights. In this respect, the Complainant first contends that its company name, “Osram”, is protected as a common law trademark or as an unregistered trademark under German law. In addition, the Complainant relies on several hundred registered trademarks, consisting of or containing the term “Osram”. The Complainant further alleges that due to the extensive use of the OSRAM trademarks, the latter have become internationally well-known. It also points out that it is the holder of more than 141 domain names based on the denomination “Osram”. In addition, the Complainant explains that the second part of the domain name, “led”, corresponds to one of the most important products of the Complainant, which develops and produces specially optimized LED systems for a wide range of applications.
Concerning the second test under the Policy paragraph 4 (a)(ii), the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. According to the Complainant, the Respondent is not the holder of a trademark OSRAM or any similar trademark, the Respondent does not use the name “Osram” and the domain name in dispute in connection with the offering of any own goods or services, and the Respondent is not an authorized dealer, distributor or licensor of the Complainant.
Concerning the third test under the Policy paragraph 4 (a)(iii), the Complainant argues that the Respondent registered and used the domain name in bad faith. In this respect, the Complainant alleges that it contacted the Respondent, informing it about its trademark rights and requesting the cancellation of the domain name. According to the Complainant, the Respondent replied by offering only the transfer of the domain name without telling the price requested, and mentioning that if the Complainant were not interested in acquiring the domain name the same would be transferred to a Chinese company. The Complainant submits that this is evidence of intent to sell the domain name for a profit. In addition, the Complainant contends that registration of a domain name incorporating a famous trademark constitutes bad faith under the Policy. The fact that the domain name at issue includes the entire trademark of the Complainant is a further factor supporting bad faith.
On this basis, the Complainant requests the transfer of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
(iii) The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several trademarks consisting of the word “Osram”.
Concerning the second issue, the Panel finds that the domain name is confusing similar to the Complainant’s OSRAM trademarks. First, the domain name wholly incorporates the Complainant’s trademark. In the Panel’s view, the addition of the letters “led”, separated from the word “osram” by a hyphen, is not sufficient to avoid the risk of confusion. On the contrary, the Panel finds that the addition of this word, which is descriptive of products sold by the Complainant, actually increases the risk of confusion between the domain name and the Complainant’s trademark (see, e.g., Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 and cases cited).
The Panel therefore finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate non-commercial 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.”
In the present case, there is no evidence on record that the Respondent has used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. On the contrary, the domain name resolves to a website showing a title “www.studio-led.com” and containing a generic, unmodified, template for a placeholder page.
Second, there is no evidence that the Respondent is or has been commonly known by the domain name. On the contrary, the name of the Respondent does not consist of or contain any of the words or letters “osram”or “led”.
Third, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain.
Finally, there are no other elements on record, nor explanations by the Respondent (which did not file a reply in the course of these proceedings), indicating that the Respondent would have rights or legitimate interests in respect of the domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provide as an instance of registration and use in bad faith, circumstances indicating that :
“(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
Based on the evidence produced by the Complainant, the Panel considers that the OSRAM trademark is a widely-known mark and has a worldwide reputation in connection with the products sold by the Complainant. It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the OSRAM trademarks at the time it registered the domain name. The addition of the letters “led”, corresponding to products sold by the Complainant, to the Complainant’s trademark in the domain name is further evidence of the fact that the Respondent was aware of the Complainant’s mark.
Moreover, there is no justification in the submissions and documents produced for the use of the Complainant’s trademark in the domain name, other than the attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Panel notes that the Respondent does not currently appear to use the words “osram” or “osram-led” to offer goods and/or services through the domain name.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <osram-led.com>, be transferred to the Complainant.
Fabrizio La Spada
Dated: April 11, 2008