WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Mehdi (امجدی)

Case No. D2021-3931

1. The Parties

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

The Respondent is Mehdi (امجدی), Hungary.

2. The Domain Name and Registrar

The disputed domain name <osramiran.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2021, 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 29, 2021 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 December 1, 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. The Respondent sent an email communication on November 30, 2021 but did not reply to the Complainant’s contentions. Accordingly, the Center notified the Respondent’s default on December 28, 2021.

The Center appointed Peter Burgstaller as the sole panelist in this matter on January 13, 2022. 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 part of the OSRAM Licht Group founded in 1919 and its main business is innovation-led applications based on semiconductor technologies (Annex 4 – 6 to the Complaint).

As the operative company of OSRAM Licht AG (an international joint stock company), which currently employs more than 21,400 people with a revenue of approximately EUR 3 billion in the 2020 financial year, the Complainant owns and has rights in the trademark and service mark OSRAM (Annex 7 and 8 to the Complaint) in many jurisdictions around the world. The Complainant owns Iran Trademark 7754 for the word mark OSRAM, filed on July 2, 1950 and last renewed on July 2, 2020.

The Complainant is also the owner of several domain names containing the mark OSRAM, e.g. <osram.com>, <osram.de>, <osram.eu>, <osram.org> or <osram.hr> (Annex 18 to the Complaint).

The disputed domain name was registered on October 19, 2021 (Annex 1 to the Complaint). The Complainant alleges that the disputed domain name is in use for potentially illegal activities (Annex 2 to the Complaint). The disputed domain name currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant belongs to the OSRAM Licht group which was founded in Germany in 1919. The Complainant is the operative company of OSRAM Licht AG, an international joint stock company, with its headquarters in Munich. The Complainant meanwhile concentrating its business on technology and innovation-led applications based on semiconductor technologies, addressing new trends of the lighting industry market.

The Complainant’s company name OSRAM is protected as a trademark in various countries and regions around the world. The disputed domain name is identical or at least confusingly similar to the OSRAM trademarks in which the Complainant has rights. Furthermore, the disputed domain name is also identical or at least confusingly similar to the Complainant’s company name.

The Complainant has traded under the name OSRAM since its foundation, having become the most relevant of its trademarks. On April 17, 1906 the OSRAM brand was registered as a trademark for “electrical incandescent and arc lamps”.

The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, inter alia the Iranian trademark registration.

Due to the extensive international use of the distinctive OSRAM trademarks, they have become internationally well-known.

Moreover, the Complainant is the owner of more than 640 domain names based on the denomination OSRAM, covering both generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”).

The Respondent is not holder of a trademark OSRAM and has no rights or legitimate interests in the name OSRAM. The Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name. The Respondent is also not commonly known by the disputed domain name. The Respondent is no authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent has moreover registered and used the disputed domain name in bad faith. The Respondent knew or must have known of the Complainant’s famous trademark OSRAM when it registered the disputed domain name and it used the disputed domain name for redirecting Internet users to a competing website.

The disputed domain name is in use for potentially illegal activities; it is not used for personal non-commercial interests, but seeks to take unfair advantage of the complainant’s famous trademark. The choice of the disputed domain name, which is identical to the well-known Complainant’s registered trademark OSRAM, clearly indicates bad faith intent to register and use of the disputed domain name.

Moreover, it is obvious that the Complainant’s famous trademark is being used in order to attract potential buyers to the website to which the disputed domain name resolves. In view of the website content, the Respondent clearly knows about the worldwide well-known Complainant’s trademarks OSRAM.

B. Respondent

The Respondent did not reply to the Complainant’s contentions but sent an email communication on November 30, 2021 asking for the context of the Complaint.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Following the Registrar’s confirmation as to the language of the registration agreement, which is in both German and English, the language of this proceeding is English (paragraph 11 of the Rules).

A. Identical or Confusingly Similar

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark OSRAM.

The disputed domain name is confusingly similar to the Complainant’s registered trademark OSRAM since it entirely contains this distinctive mark and only adds the country name “Iran”.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview 3.0).

Finally, it has also long been held that gTLDs are generally disregarded when evaluating the confusing similarity of a disputed domain name.

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

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s famous and distinctive mark in its entirety together with the term “Iran”, cannot be considered fair as these falsely suggest an affiliation with the Complainant that does not exist (see section 2.5.1 of the WIPO Overview 3.0).

Noting the above, and in the absence of any formal Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and

- the disputed domain name is being used by the Respondent in bad faith.

(i) The Complainant has rights and is the owner of the well known and highly distinctive registered trademark OSRAM, which is registered and used in many jurisdictions, long before the registration of the disputed domain name. Moreover, the Complainant registered and is using various domain names containing the trademark OSRAM e.g. <osram.de>, <osram.eu> and <osram.com> among others.

It is inconceivable for this Panel that the Respondent registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark and company name OSRAM entirely together with the geographic term “Iran”.

In fact, the use of the term “Iran” in connection with the mark OSRAM rather strengthen the impression that the disputed domain name is in some way connected to the Complainant or the Complainant’s services, and at least the Respondent may be seen to free ride on the reputation of the Complainant and its name and trademark OSRAM.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.

(ii) Although there is no evidence that the disputed domain name is being actively used, previous UDRP panels have found that bad faith use under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent – inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

This Panel also concludes that the present passive holding of the disputed domain name, constitutes a bad faith use, putting emphasis on the following:

- the Complainant’s trademark OSRAM is famous with a high distinctiveness and is well-known globally;

- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;

- the disputed domain name incorporates the Complainant’s trademark in its entirety, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); and

- there is no conceivable plausible reason for good faith use with regard to the disputed domain name.

Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and used in bad faith under 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 <osramiran.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: January 27, 2022