WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram AG v. Paul Mcfadyen
Case No. D2012-1222
1. The Parties
The Complainant is Osram AG of München, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanwälte, Germany.
The Respondent is Paul Mcfadyen of Bransholme, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <oosram.com> is registered with Hostopia.com Inc. d/b/a Aplus.net.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to Hostopia.com Inc. d/b/a Aplus.net a request for registrar verification in connection with the disputed domain name. On June 17, 2012, Hostopia.com Inc. d/b/a Aplus.net. 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” 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 the Respondent of the Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2012.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on July 25, 2012. 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 in these proceedings is Osram AG, a company organized under the laws of Germany. The Complainant has a worldwide reputation and is one of the largest lighting manufacturing companies in the world. It has an international presence in about 150 countries and employs more than 43,000 people according also to its uncontested allegations.
The Complainant is the owner of 500 registered trademarks containing or consisting of the name OSRAM in over 150 countries and regions. The OSRAM mark was registered for the first time on April 17, 1906 for “electrical incandescent and arc lamps”.
Further the Complainant is the owner of over 100 International OSRAM trademarks.
In addition to these trademarks, the Complainant is the owner of more than 160 domain names based on the trademark OSRAM, according to his uncontested allegations and proof submitted covering both generic top-level domains (gTLDs) and country code top-level domains (ccTLDs).
The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.
The disputed domain name <oosram.com> was created by the Respondent on February 23, 2012. The disputed domain name is used by the Respondent to advertise products in competition with those products and services offered by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights in the trademark OSRAM. The Complainant is also the owner of more than 160 domain names based on the mark OSRAM.
The mere fact that the Respondent has added to the mark OSRAM the letter “o” and the suffix “.com” does not affect the essence of the matter: the disputed domain name wholly incorporates the trademark of the Complainant and in the circumstances of this case this by itself is sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many panels have found in the past. See, e.g. Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Limited, WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <oosram.com> is confusingly similar to the Complainant’s trademark OSRAM.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights or the legitimate interests in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Further, the Respondent does not seem to have any trademark registrations for the word “osram”.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in order to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademarks, according also to the uncontested allegations of the Complainant.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be reinforced through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name, that is confusingly similar to the Complainant’s OSRAM trademark. Rather, it seems to this Panel more likely that such registration and use would be motivated by hoped-for capitalization, i.e. commercial gain from the Complainant’s reputation, as mentioned above.
As a consequence to the above, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith.
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 <oosram.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: August 8, 2012