WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Dan Naptali, acom
Case No. D2011-0319
1. The Parties
Complainant is Osram GmbH of Munich, Germany, represented by Hofstetter, Schurack & Skora Patent Attorneys and Lawyers, Germany.
Respondent is Dan Naptali, acom of Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name < osram.mobi> is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2011. On February 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on April 4, 2011. 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 owns many international registrations for trademarks and service marks containing OSRAM. For example, Complainant is owner of the trademark OSRAM, International Trademark No. 321818 registered September 26, 1966, in Class 9.
The disputed domain name was registered December 9, 2009. The website to which the disputed domain name routes redirects users to a website with links to other websites making commercial offerings, at present for example, of video and computer-game products.1
5. Parties’ Contentions
Complainant avers that it belongs to the Osram group, which was founded in Germany in 1919. Complainant avers that its group is one of the two largest lighting manufacturers in the world, and that the Osram group employs over 38,000 people and supplies customers in 150 countries. Complainant alleges that its OSRAM mark has achieved “well-known” status worldwide.
In its legal allegations, Complainant contends that the disputed domain name is identical to a trademark in which Complainant has interests, and that Respondent has no rights or legitimate interests in use of the disputed domain name.
With respect to bad faith under the Policy, Complainant makes several arguments, including that: Respondent does not have any license or authorization and does not demonstrate any intention to make legitimate or bona fide use of the disputed domain name; users will be confused into believing that the website to which the disputed domain name routes is sponsored or endorsed by Complainant; and, that Respondent’s use of the disputed domain name to block Complainant from using the disputed domain name is a “holding” of the name which demonstrates bad faith, citing OSRAM GmbH v. Yuri A. Ivanov, WIPO Case No. D2009-0692. Finally, Complainant alleges that Respondent’s use of the disputed domain name “to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the paragraph 4(b)(iv) of the Policy,” citing Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Incorporated, WIPO Case No. D2004-0752.
On the basis of these allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center notified Respondent of these proceedings by using a courier service, directed to the address listed in the WhoIs record for the domain name. The courier package was not deliverable at Respondent’s listed address. The Center also notified Respondent by using email addresses provided by the Registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the Registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name <osram.mobi> is identical to the OSRAM mark in which Complainant has rights.
Panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the “.mobi” suffix, the Panel finds that the disputed domain name is identical to the OSRAM marks.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Policy, paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, is not an authorized dealer, distributor or licensee and that Respondent has no trademark registration for the OSRAM mark. In the absence of a response, the Panel accepts these undisputed facts as true.
Complainant also alleges that Respondent does not use the disputed domain name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use. Again, the Panel agrees.
First, as noted above, the Panel has viewed online the website as it presently appears. The website, through redirecting Internet users, makes commercial offerings. By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; and Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079. Clearly the disputed domain name is being used commercially, therefore, the Panel finds, there is no noncommercial or fair use.
Second, the Panel also agrees that there is no bona fide offering by Respondent, since there is no indication that Respondent has any relationship to Complainant or is offering products or services related to the OSRAM marks. See e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com," WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods and services”).
Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including whether a complainant’s trademarks are well known, and whether a respondent conceals its identity or fails to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant’s trademarks were already registered internationally and widely used in various countries for many decades when the disputed domain name was registered in 2009. The Panel infers that Respondent must have registered the disputed domain name with awareness of Complainant’s business, intending to employ the OSRAM trademark for Respondent’s own commercial interests. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar, WIPO Case No. DME2009-0009.
It remains for the Panel to determine whether, in addition to registering in bad faith, Respondent is also using the disputed domain name in bad faith. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615. The Panel concludes that Respondent is also using the disputed domain name in bad faith, as elaborated below.
The Complaint annexes copies of emails requesting transfer of the disputed domain name, allegedly sent by Complainant’s counsel to an email address for Respondent in the WhoIs record. Complainant also represents that no reply was received.
Despite errors in two of the three annexed email demand letters as to deadline dates provided for response to the letters by Respondent, the Panel considers the evidence of Complainant having sent the letters, and the lack of any response by Respondent, to be credible. In the absence of a response to the Complaint by Respondent, the Panel finds that the emails were sent and went unanswered.
Thus, in the Panel’s view, several circumstances support a finding of bad faith use: (1) Respondent failed to respond to cease and desist letters sent by Complainant’s representatives; (2) Respondent appeared to have failed to maintain accurate contact information as required by its registration agreement for the disputed domain name; (3) finally, Respondent refrained from replying to the Complaint. Taken together with the well-known status of the OSRAM trademark and the fact that Respondent is using Complainant’s mark without license to attract Internet users to Respondent’s website for commercial gain, the Panel concludes that the disputed domain name is being used in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy, paragraph 4(a) are fulfilled.
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.mobi> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: April 8, 2011
1 The website to which users are redirected is at “www.mobidomain.superwap.mobi .” The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complaint attaches screen prints of the website to which the disputed domain name allegedly routed in January 2011; those screens are slightly different than at present, displaying links to commercial and other websites mostly in Japanese and German. In any case, the commercial links element is consistent whether those links appeared directly on the website to which the disputed domain name allegedly routed in January 2011, or through the present redirection to the website at “www.mobidomain.superwap.mobi.” The significance of those links is discussed below.