WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. To Hoang Tung
Case No. D2013-1453
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is To Hoang Tung of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <osramvn.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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.
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 September 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on September 27, 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 part of a corporate group which manufactures lighting products. It is the owner of a large number of trademark registrations for the name OSRAM, some of considerably long standing, including a US trademark registration no. 0597025, which was registered on October 19, 1954. The disputed domain name was registered on March 22, 2013.
5. Parties’ Contentions
These are the Complainant’s contentions with which the Panel may or may not agree.
The disputed domain name is identical to the Complainant’s trademark except for the addition of “vn” which stands for Viet Nam. The term “.com” is a gTLD which is to be disregarded under the confusing similarity test. The Respondent has no rights in the name OSRAM, and is not a licensee of the Complainant or associated with it in any other way. The disputed domain name is being used for a webshop through which lighting products of the Complainant’s competitors are sold and advertised. The Respondent clearly had knowledge of the Complainant’s mark OSRAM when it registered the disputed domain name. This is apparent from the fact that he is using the disputed domain name to pursue a related field of business. The Respondent is not using the disputed domain name to pursue personal non-commercial interests. It is using the well-known trademark and company name of the Respondent to attract Internet users to its own websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under 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 it has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s well-known trademark, the initials “vn” and the gTLD “.com”. The initials “vn” probably denote the country, Viet Nam, where the Respondent is located. The trademark name OSRAM is not a word in common use in any language. The addition of a country indicator to such a word does not affect the confusing similarity of the domain name to the trademark name. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “OSRAMVN” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent uses the website to which the disputed domain name resolves to market lighting-related products. The first image that one sees on the website is of a city apparently lit up as if by a series of light bulbs of the type that the Complainant manufactures. The Respondent seems to have known of the Complainant’s existence before registering the domain name and in using it.
In this Panel’s view, it is impossible, at least without a full Response to the Complaint, to identify any reason why the Respondent registered the disputed domain name except that he wished to benefit in some way from the Complainant’s trademark. The Panel is convinced that the Respondent’s motive in registering the disputed domain name was either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use 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 <osramvn.com> be transferred to the Complainant.
Date: October 1, 2013