WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Domain Administrator, See PrivacyGuardian.org / Ario Mardowo
Case No. D2016-0267
1. The Parties
The Complainant is OSRAM GmbH of Münich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Ario Mardow of Jawa Timur, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <osram-automotive-sby.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 17, 2016.
The Center verified that 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 Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2016.
By email dated February 22, 2016, the Complainant requested suspension of the proceeding to pursue negotiations with the Respondent. On March 21, 2016, the Complainant requested reinstitution of the proceeding. And later that same day, the Center notified the parties that the proceeding had been reinstituted.
In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on April 11, 2016. Subsequently, on April 11, 2016, the Center received an emailed communication from the Respondent, the substance of which is discussed below.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 18, 2016. 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 the operating vehicle of the Osram Lighting group of companies. The Osram Lighting group of companies traces its origins back to 1919 in Germany. It has traded under the name OSRAM since its foundation. It employs some 34,000 people with operations in some 120 countries around the world.
The Complaint includes evidence that the Complainant has registered OSRAM as a trademark in numerous countries around the world. Some registrations are in International class 11; many others are in multiple classes. Many of the registrations date from the 1990’s or even earlier.
The disputed domain name was registered in January 2016. Prior to the Complaint being filed it resolved to a website offering lighting products for sale.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Although a formal Response has not been filed, it is clear from the receipt of the email communication from the Respondent discussed below that the Respondent has been properly served with notice of the dispute and given a fair and reasonable chance under the Policy to defend his registration of the disputed domain name.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the numerous trademarks around the world for OSRAM referred to above. Sofar as the Panel is aware (there is also nothing in the record which suggests otherwise), the word OSRAM is a coined or invented term which has no significance other than as the Complainant’s trademark.
The disputed domain name differs from the Complainant’s trademark by the addition of the elements “-automotive-sby” and the generic Top-Level Domain, “.com”.
The latter element may be generally disregarded as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
“sby” is an abbreviation commonly used to refer to Surabaya in Indonesia, the district or province in which the Respondent is located. Therefore, the remaining, differences are essentially descriptive terms or simple grammatical indicators. In this connection, it is worth noting that the Complainant’s products offered by reference to its trademark include lights for use in automobiles. Thus, the additional elements of the disputed domain name could readily be taken to refer to the source of supply of the Complainant’s automotive products in Surabaya and do nothing to distinguish the disputed domain name from the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant contends that the disputed domain name is not derived from the Respondent’s name or any name by which he is commonly known. The Complainant contends further that the Respondent is not associated with it or licensed by it to use the Complainant’s trademarks.
It is also clear from the use the Respondent made of the disputed domain name that it was registered to take advantage of its significance as the Complainant’s trademark.
It appears from the correspondence leading to the initial suspension of the proceeding that the Respondent does have a role in distributing the Complainant’s products in Indonesia. The precise nature of that relationship, and whether it limits the Respondent to distributing the Complainant’s products only, is not clear from the record. It does appear, however, that the Respondent registered the disputed domain name and began using it without the knowledge of those within the Complainant’s operations who deal with the Respondent.
In any event, following receipt of the Notice of Respondent Default, the Respondent sent an email to the Center in which he stated:
“In response to the complaint, we have done several things below:
1. Delete all the contents on the website <osram-automotive-sby.com>
2. Delete the domain name <osram-automotive-sby.com>
These actions have been taken since April 6th, 2016. As an evidence, we attach the screenshots of the confirmation from our hosting provider.”
Insofar as this may have been an attempt to cancel the registration of the disputed domain name, it could not of course be effective as the disputed domain name is under “lock” pursuant to paragraph 4 of the Rules. Although the Respondent does not put it in exactly those terms, his communication is at the least consistent with an acknowledgement that the Respondent did not have rights or a legitimate interests in the disputed domain name and, significantly, reveals a clear intention to surrender the disputed domain name.
In the circumstances of this case, therefore, the Panel is prepared to treat this case consistently with the approach taken where a respondent offers to surrender a domain name. See, e.g., Fujitsu Siemens Computers GmbH v. RareNames, WebReg, WIPO Case No. D2008-0828.
Here, the Complainant:
(a) has clearly established that the disputed domain name is confusingly similar to the Complainant’s trademark; and
(b) has established at least a prima facie case under the second and third requirements of the Policy.
The Respondent’s email communication is consistent with acceptance of that position. It follows then that the Complaint has succeeded and the disputed domain name should be either transferred to the Complainant or cancelled.
The Complainant has requested transfer of the disputed domain name. The Respondent has not advanced any reasons why that course should not be followed and the disputed domain name cancelled instead. Given the Complainant’s trademark registrations, the disputed domain name would not be misleading in its hands. Transfer rather than cancellation also gives the Complainant some measure of control of the fate of the registration which is not inappropriate given its ownership of the trademarks.
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, <osram-automotive-sby.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 2, 2016