WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. WhoisProtector Inc., WhoisProtector osrammiddleeast.com / WhoisProtector Inc., Dom Reg ()
Case No. D2013-0653
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is WhoisProtector Inc., WhoisProtector osrammiddleeast.com /WhoisProtector Inc., Dom Reg (), of Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <osrammiddleeast.com> (the “Domain Name”) is registered with DomainPeople, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013, naming the Respondent as WhoisProtector Inc., WhoisProtector osrammiddleeast.com. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint and identifying the registrant as WhoisProtector Inc., Dom Reg (). In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 23, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 24, 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 lightbulbs and related products.
The Complainant is the owner of numerous registrations for the trademark OSRAM in various territories throughout the world.
The Respondent is a corporation located in Illinois, United States. It appears to provide a privacy protection service to domain name owners.
The Domain Name was registered on July 30, 2001.
At the date of the Center’s formal compliance check (April 24, 2013), the Domain Name did not resolve to any active website.
5. Parties’ Contentions
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)i) of the Policy).
The Complainant states that it is the owner of over 500 trademark registration for the mark OSRAM in over 150 countries. It provides evidence of a selection of these registrations, including Community Trade Mark No. 27490 registered on April 17, 1998 for the mark OSRAM in International Classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28 and 42.
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 and in other jurisdictions.
The Complainant states that the distinctive part of the Domain Name, i.e. “osram”, directly replicates its trademark. It submits that the additional term “middleeast” is no more than a regional indicator which does not serve to distinguish the Domain Name from its trademark. 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 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 Domain Name in connection with any bona fide offering of goods or service and the Respondent is not making any legitimate non commercial or fair use of the Domain Name.
The Complainant submits that the Domain Name was registered and is being used in bad faith (paragraph 4(a)iii) of the Policy).
The Complainant states the Respondent has used the Domain Name to advertise lighting products including those originating from the Complainant’s competitors. The Complainant exhibits a print-out of a Web page at “www.osrammiddleeast.com”, dated March 18, 2013, which contains links both in German and in English to suppliers of what appear to be lighting-related products. The Complainant asserts that the Respondent is obviously aware of the Complainant’s trademark and is using the Domain Name in bad faith to profit from Internet users who are looking for the Complainant’s trusted products. The Respondent will be rewarded for each customer for the goods being so advertised. The Respondent is therefore using the Domain Name confusingly to attract customers for commercial gain as contemplated by paragraph 4(b)iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements.
A. Identical or Confusingly Similar
The Complainant has established that is it the owner of registered trade mark rights in the mark OSRAM in numerous jurisdictions throughout the world. The Panel also accepts, on the basis of the Complainant’s undisputed submissions, that it has significant unregistered rights in the name and mark OSRAM by virtue of its activities in commerce for many decades.
The Domain Name comprises the terms “osram” and “middleeast” together with the gTLD “.com”. The Panel accepts the Complainant’s submissions that the term “middleeast” is a regional indicator which does not serve to distinguish the Domain Name from the Complainant’s trademark and that the gTLD should be ignored for the purposes of these proceedings.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent is not connected with the Complainant in any manner and that the Complainant did not authorize it to use the OSRAM mark. The Complainant also asserts that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services and that it is not making any legitimate non commercial or fair use of the Domain Name.
The Complainant’s submissions to this effect give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the Domain Name. However, the Respondent has chosen not to answer that case and the Panel is not aware of any other evidence that the Respondent has any relevant rights or interests in the Domain Name.
In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name
C. Registered and Used in Bad Faith
The Complainant has submitted evidence that the Respondent has used the Domain Name to a website which offers links to suppliers of lighting-related products including those that compete with the Complainant.
The Complainant relies on paragraph 4(b)iv) of the Policy which states that the following circumstances shall be evidence of bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
Again, the Respondent has made no denial of the Complainant’s submissions.
In the circumstances, the Panel infers, as submitted by the Complainant, that the Respondent chose the Domain Name in the knowledge of the Complainant’s OSRAM mark, that it has used the Domain Name to confuse Internet users in the manner suggested by the Complainant and that it has made commercial gain from the links included on the website to which the Domain Name resolved. The Panel does not consider it material that the Domain Name no longer appears to resolve to the website in question, as it is well established that the “passive” holding of a domain name does of itself not prevent a finding of bad faith where the remaining circumstances of the case would tend to that conclusion: e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the circumstances, the Panel finds that the Domain Name has been registered and is being used 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 Domain Name <osrammiddleeast.com> be transferred to the Complainant.
Steven A. Maier
Date: May 31, 2013