WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Sun Hong
Case No. D2017-0277
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Sun Hong of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <osfam.org> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017.
On March 14 and 15, 2017, the Center received emails from a third party who was seemingly the technical contact of the Respondent. This third party forwarded an email from the Respondent to the Center showing the Respondent’s willingness to transfer the disputed domain name to the Complainant. Upon receipt of a suspension request from the Complainant, the administrative proceeding was suspended on March 21 to enable the Parties to settle the dispute. On April 21, 2017, the Complainant informed the Center of the settlement not being successful and requested to re-institute the proceeding. The proceeding was accordingly re-instituted on April 21, 2017 and the updated Response due date was April 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2017.
The Center appointed Gregory N. Albright as the sole panelist in this matter on May 12, 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 part of the OSRAM Licht group, founded in Germany in 1919. OSRAM Licht AG is a multinational lighting manufacturer based in Munich, Germany, and one of the largest lighting companies in the world. The Complainant, the operating entity of OSRAM Licht AG, has traded under the name “OSRAM” since its foundation. The Complainant has also registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, among others, German trademark no. DE86924, registered on April 17, 1906. OSRAM Licht AG employs more than 33,000 people and has operations in over 120 countries. The Complainant has several production sites in China, where the Respondent is located.
The disputed domain name was registered on November 4, 2016. Based on the record, the disputed domain name previously resolved to a website with pornographic content; currently, the disputed domain name resolves to an inactive page.
5. Parties’ Contentions
The Complainant has adduced abundant evidence that it owns trademark rights in the OSRAM mark, and that it owned those rights long before the Respondent registered the disputed domain name.
The Complainant asserts that the disputed domain name is identical or at least confusingly similar to marks owned by the Complaint and the Complainant’s company name. Specifically, the Complainant contends that the Respondent’s substitution of the letter “f” in <osfam.org> for the letter “r” in the Complainant’s OSRAM mark is not sufficient to prevent a risk of confusion, and it is likely that persons who search for <osram.org> erroneously visit <osfam.org> due to a typing error.
The Complainant also asserts that the Respondent: (1) is not the owner of trademark rights in OSRAM and has no rights or legitimate interest in the name “OSRAM”; (2) is not a licensee, authorized dealer, or distributor of the Complainant, and therefore did not register the disputed domain name with bona fide intent; and (3) is not commonly known by the disputed domain name.
Finally, the Complainant contends that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant asserts that: (1) OSRAM is the Complainant’s famous trademark in connection with lighting products and services; (2) the Respondent uses the disputed domain name in connection with pornographic content; (3) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark; (3) the Respondent has not attempted to make any bona fide use of the disputed domain name; (4) the registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the disputed domain name to the Respondent, but rather constitutes bad faith; and (5) there can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name.
The Complainant has requested that the disputed domain name be cancelled.
The Respondent did not submit a formal response to the Complaint. However, as noted above in Section 3, an individual seemingly the technical contact of the disputed domain name forwarded the following email message, ostensibly from its “customer” who owns the disputed domain name: “You can transfer the domain to them.” The Complainant and the Respondent did not, however, reach any agreement about transfer of the disputed domain name. The Complainant timely reinstated this proceeding with a request that the disputed domain name be cancelled.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove as to the disputed domain name that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has shown that it owns rights in the OSRAM trademark and that it acquired those rights before the Respondent registered the disputed domain name.
The Panel also finds that the Complainant has established confusing similarity, even though the disputed domain name substitutes the letter “f” in the disputed domain name for the letter “r” in the OSRAM mark. In this regard, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a/ PrivacyProtect.org, WIPO Case No. D2015-1149 is persuasive:
“[T]he disputed domain name is confusingly similar to the Complainant’s OSRAM mark for purposes of the Policy. The disputed domain name would be identical to the Complainant’s OSRAM mark but for the Respondent’s substitution of the letter “j” for the letter “s” therein. The foregoing is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. In a typical typosquatting case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.”
Here, the letter “r” is just above the letter “f” on a Qwerty keyboard, and it is therefore reasonable to conclude that a person in the position of the Respondent would anticipate that “osfam” in the disputed domain name would be a common misspelling of OSRAM.
In addition, a generic Top-Level Domain (“gTLD”) is disregarded when evaluating the identity or confusing similarity between a complainant’s mark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), Section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”). Here, the addition of “.org” to the disputed domain name does not dispel the confusing similarity.
The first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not come forward to offer any evidence to the contrary.
Instead, as discussed above in Sections 3 and 5.B, a third party forwarded what appears to be an email from the Respondent consenting to transfer of the disputed domain name to the Complainant. The parties did not resolve the dispute by agreement, however, and the Complainant reinstated this proceeding with a request for cancellation of the disputed domain name.
The Panel has considered what appears to be the Respondent’s informal offer to transfer the disputed domain name, but gives it little weight under the circumstances. For purposes of the second element of paragraph 4(a) of the Policy, the Panel finds it sufficient that the Respondent did not see fit to submit a formal response to the Complaint, and apparently concedes that no substantial rights or legitimate interests of the Respondent are at stake.1
The second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds it likely that when the Respondent registered the disputed domain name the Respondent was aware of the Complainant’s OSRAM trademark, given the fame of the mark and the Complainant’s worldwide presence, including in China where the Respondent is located. In addition, although the “osfam” component of the disputed domain name is not identical to the OSRAM mark – given the substitution of “f” for “r” – the Panel finds it likely that the Respondent registered with disputed domain name with the intent of trading on the Complainant’s OSRAM mark, by adopting a domain name confusingly similar to the OSRAM mark for the purpose of diverting Internet users looking for the Complainant to the Respondent’s website. The Respondent has not submitted any evidence to the contrary.
The Complainant has also shown that the Respondent is using the disputed domain name in bad faith. The website to which the disputed domain name previously resolved contained pornographic content, which the Complainant might reasonably view as tarnishing its reputation. In addition, the Respondent’s website appeared to include a number of links to other websites, and it may be presumed that the Respondent derived pay-per-click revenue therefrom. See Opportunity Financial, LLC v. Zhichao Yang, WIPO Case No. D2016-1524. See also Owens Corning v. NA, WIPO Case No. D2007-1143 (“It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain ‘click through revenue’ when Internet users click on the ‘sponsored links’ on the displayed page. Many of these services will then provide the domain name registrant with part of that ‘click through’ revenue.”). The fact that the disputed domain name no longer resolves to an active page does not prevent a finding of bad faith. The Respondent has not come forward with any evidence of the Respondent’s use of the disputed domain name for legitimate noncommercial purposes that do not create a likelihood of confusion with the Complainant’s OSRAM mark.
The third element of paragraph 4(a) of the Policy is satisfied.
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 <osfam.org> be cancelled.
Gregory N. Albright
Date: May 26, 2017
1 Since the Complainant has requested that the disputed domain name be cancelled, not transferred, it unnecessary for the Panel to consider, and the Panel expresses no opinion, whether any third party might have any rights or legitimate interests in a domain name incorporating “osfam” – with the letter “f” in place of the letter “r” in OSRAM – that might be affected by a transfer of the disputed domain name to the Complainant.