WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Joaquin Barbera (LED SMC España S.L.)
Case No. D2013-1455
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Joaquin Barbera (LED SMC España S.L.) of L’Alcudia, Spain.
2. The Domain Name and Registrar
The disputed domain name <ledosram.net> is registered with 1&1 Internet AG (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 20, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details. On August 30, 2013, the Complainant filed an amended Complaint in response to a notification by the Center that the Complaint was administratively deficient.
The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2013. In accordance with paragraph 5(a) of the Rules, 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 paragraph 7 of the Rules.
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 United States trademark registration number 0597025, which was registered on October 19, 1954. The Complainant is the owner of more than 160 domain names using the name OSRAM, covering both gTLDs and ccTLDs.
The disputed domain name was registered on January 20, 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 “led” which stands for “light emitting diodes”, a technology on which the Complainant has a strong business focus. The dominant and distinctive feature of the disputed domain name is the word OSRAM, a world-renowned trademark. The term “.net” 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 web shop, 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 he 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 has registered many other domains incorporating OSRAM in order to be in a position to sell the domains for a high price, a goal that can be deduced from the Respondent’s reply to a cease and desist letter from the Complainant’s lawyers. 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 Complainant 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 a world famous trademark, which also appears to be a made-up name with no independent meaning, the initials “led” and the gTLD “.net”. The addition of other letters to a trademark does not remove the confusing similarity between the disputed domain name and the trademark concerned, particularly where the trademark is a made-up word and the letters or initials do not give the resulting name a meaning independent of the trademark. For 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 “Osram”, “Ledosram” 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
On July 8, 2013, the Complainant’s lawyers wrote to the Respondent making the allegations that it later stated in the Complaint, requesting transfer of the disputed domain name to the Complainant by July 15, 2013. The Respondent replied through an assistant, not by refuting any of the allegations contained in the letter but in the following terms:
“I’m very concerned about your enquiry and faithfully understand your situation and reason for your behavier [sic].
Therefore I will offer you first then anyone else my offer of all domeins [sic] on my property.”
The Respondent then lists five domain names including the one in dispute in this case which presumably he owned, all of which contain the Complainant’s trademark, and gives the total cost as EUR 300,000.
In the Panel’s view, it is apparent from this letter and the domain names being offered for sale that, when he registered the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark OSRAM and had probably accumulated a few domain names, including the disputed one, which use that trademark, in order to sell them to the Complainant at a significant profit.
One of the Respondent’s domain names, <ledsmc.com>, shows that he knows of the technical meaning of “led” in the disputed domain name as a term relating to lighting technology. This evidence all suggests that the Respondent registered the disputed domain name knowing of the Complainant’s rights.
It is impossible, at least without a full Response to the Complaint, to identify the precise reason why the Respondent registered the disputed domain name. It would appear to have been one wish or a combination of wishes 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 all the above reasons, the Panel concludes that the Respondent registered and is using 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 <ledosram.net> be transferred to the Complainant.
Date: October 14, 2013