WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Azat Seitmuhamedov
Case No. D2015-1192
1. The Parties
The Complainant is Osram GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Azat Seitmuhamedov, Ahal, Turkmenistan.
2. The Domain Names and Registrar
The disputed domain names <osram-tm.com> and <osramtm.com> are registered with GoDaddy. com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2015. On July 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2015, 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 July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2015.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 14, 2015. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a German company that belongs to the OSRAM group, which was founded in Germany in 1919. The Complainant is an international company with its headquarters in Munich. The Complainant currently employs more than 34,000 people and has operations in about 120 countries and it is one of the three largest lighting manufacturing companies in the world. The Complainant holds more than 500 trademark registrations for OSRAM in more than 150 countries and regions around the world registered since 1908 particularly for goods in class 11.
Also, the Complainant is the owner of more than 650 domain names including the denomination “osram”, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The disputed domain name <osram-tm. com> was registered on November 8, 2014 and the disputed domain name <osramtm. com> was registered on November 9, 2014. At the time of filing of the Complaint, both disputed domain names were used to advertise lighting and interior design products.
5. Parties’ Contentions
The disputed domain names are identical or at least confusingly similar to the Complainant’s company name and trademark OSRAM. The addition of the letters “tm” can be perceived either as the acronym for “Turkmenistan”, or for the descriptive term “trademark”.
The Respondent has no rights or legitimate interest in the disputed domain names.
The disputed domain names have been registered and are being used in bad faith according to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3). The disputed domain names are used for the advertisement of lighting goods and interior design products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in 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 Complainant holds worldwide trademark registrations for the OSRAM trademark. The disputed domain names include the Complainant’s trademark and the letters “tm” that can be perceived as the acronym for Turkmenistan or for the generic term “trademark”.
Adding such indicator is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain names as being connected to the Complainant’s trademark. See paragraphs 1.5 and 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level domains (e.g., “.com”, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark OSRAM, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or a bona fide offering of goods and services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, according to the evidence provided in the Complaint, the disputed domain names are used for promoting various goods, including lighting goods for which the Complainant’s trademark OSRAM is well known worldwide.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for OSRAM worldwide including in Turkmenistan, where the Respondent is apparently located. See for example the International Trademark registration No. 774581 of November 13, 2001 and note paragraph 4.5 of the WIPO Overview 2.0 regarding individual searches made by the panel.
Further, the Complainant’s trademark OSRAM is distinctive and internationally well known, as stated in various decisions issued by local authorities and filed as Annexes 11-18 to the Complaint and by previous UDRP panels, see for example, OSRAM GmbH v. Abha Verma, WIPO Case No. D2015-0620; OSRAM GmbH v. Boss Premium Group Co. , Ltd. / Khun Amorn Sritangratanakul, WIPO Case No. D2014-2104; and OSRAM GmbH v. wangjin, WIPO Case No. D2013-1570.
The disputed domain names were created in 2014 and incorporate the OSRAM trademark and the acronym “tm” which can derive from the descriptive term “trademark” or from the geographical indicator “Turkmenistan”.
Further, at the time of filing of the Complaint, the disputed domain names resolve to a website that promotes, inter alia, lighting goods whereas the Complainant is one of the three largest lighting manufacturing companies in the world. Thus, the Respondent is diverting Internet users searching for the Complainant’s goods to other manufacturers. This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to the Complaint. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain names.
For the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 names <osram-tm. com> and <osramtm. com> be transferred to the Complainant.
Date: August 15, 2015