WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. PrivacyDotLink Customer 1429225 and PrivacyDotLink Customer 1429185 / Pijar Aji Pratama
Case No. D2016-2487
1. The Parties
The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is PrivacyDotLink Customer 1429225 and PrivacyDotLink Customer 1429185 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Pijar Aji Pratama of Kabupaten Kebumen, Indonesia.
2. The Domain Names and Registrars
The disputed domain names <osramled.xyz> and <osramnightbreaker.xyz> are registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2016. On December 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 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 amendment to the Complaint on December 15, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. The Respondent transmitted to the Center an email communication on December 23, 2016, and subsequently the Center sent a possible settlement email to the Parties on December 28, 2016. The Complainant requested suspension of the proceeding on December 30, 2016. The notification of suspension was notified to the Parties by the Center on January 4, 2017. On February 3, 2017, the Complainant requested to reinstitute the proceeding and the Center notified the Parties of the reinstitution of proceeding on the same day. The Center notified the Parties of commencement of panel appointment process on February 10, 2017. On February 11, 2017, the Center received a second email communication from the Respondent.
The Center appointed George R. F. Souter as the sole panelist in this matter on February 24, 2017. 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 German manufacturer of lighting equipment, which employs over 30,000 people, trades in over 120 countries, and, in 2015 had a turnover of some EUR 5.6 billion. The Complainant has registered its OSRAM trademark widely throughout the world, and details of these registrations have been supplied to the Panel. For instance, the Complainant is the owner of the International Trademark No. 676932 OSRAM (word mark), registered on April 16, 1997 in classes 1, 4, 6 7, 9, 10, 11, 14, 17, 21, 28 and 42. The Complainant has drawn the attention of the Panel to a considerable number of cases under the Policy in which it has featured as Complainant, and in which its trademark rights have been recognised by prior panels as giving rise to well-known status.
Both the disputed domain names were registered on June 2, 2016. The Respondent operates a web shop under both of the disputed domain names selling goods apparently unrelated to the Complainant.
5. Parties' Contentions
The Complainant alleges that the disputed domain names are confusingly similar to its well-known OSRAM trademark, containing its OSRAM trademark in its entirety, with the mere addition of a descriptive or non−distinctive element.
The Complainant alleges that the Respondent lacks rights or legitimate Interests in the disputed domain names, and states that no licence or permission to use the disputed domain names has been granted to the Respondent, and contends that the disputed domain names were coined with foreknowledge of the Complainant's ownership of and reputation in its OSRAM trademark. The Respondent further contends that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not file a Response to the Complaint. However, the Respondent sent two communications to the Center on December 23, 2016 and February 11, 2017. Whereas the first communication stated "For this case, what must I do? I dont use that domain anymore", the second included the following message:
I'm so sorry for my very late response, I really bad in english, I am hard to understand with all of email I received.
I live in place with bad internet connection too. I just want all of this mistake done.
I dont use any domains in my uniregistry account anymore... No problem if uniregistry transfered all of my domains inside to another account or close and delete my account. I just want my case closed.
I really sorry for my mistake and very late response".
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".xyz" to be irrelevant in the present case.
The Complainant has satisfied the Panel that its OSRAM trademark is well-known. It is well-established in prior decisions under the UDRP that the addition of a descriptive or non-distinctive element to a well-known trademark is not sufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel regards the elements "led" and "nightbreaker" as being such descriptive or non-distinctive elements, and the Panel consequently finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of both disputed domain names.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant, including that it did not authorize the Respondent to use its marks, that it does not have rights in the OSRAM trademarks, and does not make a legitimate non-commercial or fair use of the disputed domain names, as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain names to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with both disputed domain names.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant's well-known trademark and the disputed domain names is the addition of a descriptive or non-distinctive element, as sufficient to justify a finding that the disputed domain names have been registered in bad faith, and the Panel, accordingly, finds that both the disputed domain names were registered in bad faith.
It is well-established in prior decisions under the UDRP that use of a domain name found to have been registered in bad faith, in connection with a website likely to lead potential consumers to believe that the website was operated or approved by the complainant, constitutes use of a disputed domain name in bad faith. The Panel considers, in the circumstances of the present case, that potential consumers are likely to believe, by accessing the websites operated under both disputed domain names, that they were accessing a website operated or approved by the Complainant, to the possible detriment of the Complainant. In the Panel's opinion, this is a clear case of use of both disputed domain names in bad faith, and, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) in connection with both disputed domain names.
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, <osramled.xyz> and <osramnightbreaker.xyz> be transferred to the Complainant.
George R. F. Souter
Date: March 10, 2017