WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Repamet Bilgisayar Ltd.Sti.
Case No. D2013-0539
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Repamet Bilgisayar Ltd.Sti. of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <osrammodul.com> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 4, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On April 5, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
On April 10 and 11, 2013, the Center received two informal email communications from the Respondent in English. On April 10, 2013, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On April 12, 2013, the Center notified the suspension of the proceeding. On May 10, 2013, the Complainant requested the reinstitution of the proceeding. The Center received a related email communication from the Respondent on May 11, 2013.
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 May 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2013. The Center received two informal email from the Respondent on May 13 and 28, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 3, 2013.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on June 7, 2013. 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 joint stock company registered in Germany. It is a manufacturer of light bulbs and related products.
The Complainant is the owner of numerous registrations for the trademark OSRAM in various territories throughout the world.
The trademark OSRAM was registered long before the registration of the disputed domain name (which was registered on November 1, 2011).
5. Parties’ Contentions
The Complainant states that it is the owner of over 500 trademark registrations for the mark OSRAM in over 150 countries.
The Complainant also provides a detailed history of its business dating back to its foundation in 1919. It states that it is an international company headquartered in Munich, Germany, and that it employs over 43,000 people, manufactures its products at 46 sites in 17 countries and supplies customers in over 150 countries worldwide.
The Complainant also exhibits a lengthy list of its domain name registrations and states that it has been highly active in protecting its trademarks and domain names worldwide. It states that the mark OSRAM has been recognized as having the status of a well-known or famous mark in Germany, Japan and in other jurisdictions.
The Complainant states that the distinctive part of the disputed domain name, i.e. “osram”, directly replicates its trademark. It submits that the additional term “modul” is purely descriptive for lighting products. The generic top-level domain (“gTLD”) “.com” should also be disregarded.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has never authorised the Respondent to use its OSRAM mark. The Respondent is not a distributor or licensor of the Complainant and has no other association or affiliation with the Complainant. The Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent five informal email communications to the Center, some of them in English and others in Turkish, on April 10, 11 and May 11, 13 and 28. The Respondent briefly states that:
- The Respondent has received the Center’s formal notification of the Complaint;
- The Respondent] is producing led modules by using “osram” chips;
- It registered the disputed domain name because of availability of the domain name on the registration date;
- It is ready to transfer the disputed domain name to the Complainant, but it does not know about formalities and which procedures to follow in light of the registrar lock;
- It would like to communicate in Turkish to expedite the proceedings.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used by the Respondent in bad faith.
A. Language of the Proceeding
Although the language of the Registration Agreement is in the Turkish language, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint and to the Center’s email communication with regard to the language of the proceedings, despite communicating in Turkish and in English. Additionally, the Panel notes that the Respondent was able to communicate in English.
B. Identical or Confusingly Similar
The Complainant has registered the trademark OSRAM in several classes in more than 150 countries all over the world. The trademark OSRAM was registered long before the registration of the disputed domain name. The Complainant has also registered the trademark OSRAM as a domain name under various gTLDs and ccTLDs worldwide.
The Panel concurs with the opinion of several prior UDRP panels that when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the generic term “modul” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Respondent has not provided any evidence of the example specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met
D. Registered and Used in Bad Faith
The Panel finds that, given the former use of the disputed domain name, when the Respondent registered the disputed domain name it knew that OSRAM was the trademark of the Complainant, and that he registered the disputed domain name because it would be recognized as such.
It is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website “www.ledsis.com.tr”.
The Panel also notes that the Respondent has given its unambiguous consent on the record to transfer the disputed domain name to the Complainant and therefore its consent to transfer may be sufficient to this Panel to grant the remedy sought by the Complainant (see f.e., The Net-A-Porter Group Limited v. Domains By Proxy, LLC a/k/a DomainsByProxy.com / No Filter News, WIPO Case No. D2013-0618).
In view of the above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.
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 <osrammodul.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: June 25, 2013