WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Ronan Lee, Phylux Pte Ltd
Case No. D2017-0986
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Ronan Lee, Phylux Pte Ltd of Singapore, self-represented.
2. The Domain Name and Registrar
The disputed domain name <osramlightings.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2017. On May 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 May 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2017. An informal Response was filed with the Center on June 7, 2017. On June 12, 2017, the Complainant submitted a request for suspension of the proceedings. On June 13, 2017, the Center notified the Parties that the proceedings were suspended until July 13, 2017. On July 13, 2017, the Complainant submitted a request for extension of the suspension. On the same day, the Center notified the Parties that the proceedings were further suspended until August 12, 2017. On August 14, 2017, the Complainant submitted a request to reinstitute the proceedings. The contents of the Complainant’s request are considered further below. On August 14, 2017, the Center informed the Parties of the reinstitution of the proceedings.
The Center appointed Antony Gold as the sole panelist in this matter on August 17, 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 company within the Osram Licht group, which was founded in Germany in 1919. It is the operative company of Osram Licht AG, an international joint stock company. The Osram Licht group is a large corporate group whose principal activity is the design, manufacture and sale of electrical lighting. Since a group reorganization in 2016, the Complainant focuses on technology and innovation-led aspects of the lighting industry market.
The Osram Licht group has traded under the Osram name since its foundation. The first OSRAM trade mark was registered many decades ago and the Complainant or other entities in the Osram Licht group now own over 100 international OSRAM trade marks and over 500 national OSRAM trade marks and service marks, registered in over 150 countries and regions. These include (by way of example only) European Union (“EU”) trade mark, registration number 000027490, for the word mark OSRAM, registered on April 17, 1998 in multiple classes. The Complainant, or other entities in the Osram Licht group, also owns more than 640 domain names incorporating its OSRAM trade marks. These include, by way of example only, the domain name <osram.com>.
The disputed domain name was registered on March 9, 2017. A screen print of the home page of the website to which the disputed domain name pointed, as at May 17, 2017, promotes a business known as Creator Labs which provides services in website design and e-commerce as well as online and web hosting solutions. There is no content on the home page which points to any connection between Creator Labs and the Complainant and its products.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to its OSRAM trade marks. It submits that, for the purpose of assessing similarity, the generic Top-Level-Domain (“gTLD”) suffix “.com”, is ignored. It asserts that the addition to its OSRAM trade mark of the word “lightings” is insufficient to prevent confusion arising on the part of Internet users. Indeed, it says that, because “lightings” is a purely descriptive term which is closely associated with the Complainant’s products, the public are likely to think that the disputed domain name is somehow connected with the Complainant and its products.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that, to the best of its knowledge, the Respondent is not the holder of a trade mark for OSRAM and has no rights or legitimate interests in the name Osram. It adds that the Respondent has not registered the disputed domain name with bona fide intent, as it is not a licensee of the Complainant’s OSRAM trade mark, nor does it have any other rights to register the disputed domain name, nor is the Respondent commonly known by the disputed domain name. Moreover, it says that the Respondent is not in any way associated with the Complainant and it is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant says that the Respondent has not attempted to make any bona fide use of the disputed domain name and the registration by it of a domain name incorporating the Complainant’s famous OSRAM trade mark does not confer any rights or legitimate interests in the disputed domain name on the Respondent.
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. It says that OSRAM is a very well-known and widely used trade mark and that the registration of the disputed domain name, which is very similar to the Complainant’s trade mark, points to a bad faith intention on the part of the Respondent to register and use the disputed domain name. Moreover, at the website to which the disputed domain name resolves, the Respondent is offering services in the field of e-commerce, online solutions and web hosting solutions; the Complainant says that this establishes that the Respondent is not using the disputed domain name for personal noncommercial interests but to try and exploit the goodwill associated with the Complainant’s trade mark in order to attract potential clients.
The Complainant says that the Respondent’s bad faith intention to register and use the disputed domain name is evident from the fact that the sole purpose of registration has been to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant says that there is no other plausible explanation for the Respondent’s registration of the disputed domain name. It says that in this respect the circumstances are similar to those in Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051, where the panel found that “there is no plausible explanation for the respondent’s registration of the disputed domain names other than to benefit from the goodwill of Yahoo! and its famous YAHOO! Mark” and that the domain names in dispute had accordingly been registered in bad faith.
On June 7, 2017, the Respondent sent an email to the Center in response to the Complaint which the Panel accepts as an informal Response. It asserted that the Respondent was the authorized distributor for the Complainant in Singapore and said that the Respondent had purchased the disputed domain name with the intention of selling and marketing Osram lighting products. The Respondent asserted a belief that it had the right to purchase “available domains to support our company upcoming marketing and sales”.
6. Discussion and Findings
The Panel will proceed on the basis that the Respondent’s claim that it is an authorized distributor of the Complainant is correct. However, it is also necessary for the Panel to consider whether to take into account the assertion made by the Complainant in its letter to the Center dated August 14, 2017, requesting that the proceedings be reinstated, in which it explained that “Complainant, as a matter of principle, does not assign any rights to register domain names containing the famous OSRAM Trademark to its subsidiaries and distributors by way of contract. This policy was implemented years ago and should be well-known to the Respondent”.
Paragraph 10 of the Rules includes the following provisions:
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
Having regard to these provisions, the Panel considers it appropriate to accept the factual submissions of both Parties, that is to determine the Complaint on the basis that the Respondent is, as it has claimed, an authorized dealer for the Complainant and also to accept the Complainant’s assertion that it has not given the Respondent any express or implied authorization to register domain names incorporating its OSRAM trade mark.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to 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 has established, by virtue of its many registered trade marks for OSRAM, including EU trade mark, registration number 000027490, for the word mark OSRAM, details of which are given above, that it has rights in the trade mark OSRAM.
The disputed domain name is not identical to the Complainant’s OSRAM trade mark. For the purpose of considering whether it is confusingly similar, it is, as the Complainant asserts, appropriate to disregard the gTLD suffix “.com”.
Having regard to the fact that the Complainant’s OSRAM trade mark is used wholly or entirely in relation to electrical lighting products, the addition of the word “lightings” to the Complainant’s trade mark does not serve to obviate the likelihood of any confusion between the disputed domain name and the Complainant and its products. It is more likely that the addition of a word which is clearly descriptive of the Complainant’s products will exacerbate the likelihood of Internet users assuming that the disputed domain name is closely connected with the Complainant and the products sold under its OSRAM trade mark.
For this reason, the Panel finds that the disputed domain name is confusingly similar to a domain name in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Circumstances (ii) and (iii) above are, on the facts as outlined above, inapplicable. The issue which requires consideration is whether the Respondent can show (or whether the facts establish) that it has been using the disputed domain name in connection with a bona fide offering of goods and services. The panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, considered the circumstances in which it might be permissible for a reseller or distributor to register a domain name which incorporated the trade mark of the manufacturer. The panel found that, in order for such a registration to be considered bona fide, the following conditions, as a minimum, would need to be met;
- the registrant must actually be offering the goods and services at issue;
- the registrant must use the website only to sell the trademarked goods;
- the website must accurately disclose the registrant’s relationship with the trade mark owner; and
- the registrant must not try to corner the market in all domain names, thereby depriving the trade mark owner of the opportunity of reflecting its own mark in a domain name.
As is explained in in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trade mark.
Applying the Oki Data test to the facts of this case, the Respondent’s website does not comply, at least, with the first three conditions. First, the Respondent is not at present offering the Complainant’s goods; an unspecific claim by the Respondent in response to the Complaint that it intends use the disputed domain name to sell Osram lighting products at some indeterminate future point is entirely insufficient for these purposes. Second, the Respondent is not using its website to sell only the trade marked goods of the Complainant; rather, it is using the website to promote the services of an unconnected business. Third, the screen print of the Respondent’s website provided by the Complainant establishes that the website does not provide any explanation as to the alleged relationship between the Respondent and the Complainant. Indeed, the only business mentioned on the website is that of Creator Labs.
Accordingly, the Respondent does not establish a legitimate interest by bringing itself within the conditions set out in the Oki Data test. There is no other basis by which it could be said that the Respondent has a legitimate interest in the disputed domain name. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances at paragraph 4(b)(iv) provide that bad faith registration and use will be found if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website.
Irrespective of any commercial relationship which might subsist between the Complainant and the Respondent, the use to which the Respondent has put the disputed domain name, which commenced within a short time following registration, falls within the circumstances outlined at paragraph 4(b)(iv) of the Policy. Specifically, the registration and use of the disputed domain name by the Respondent has been as bait to increase traffic to its website from Internet users who are seeking the Complainant or its products and who are confused by the seeming connection between the disputed domain name and the Complainant’s products into visiting the Respondent’s website. The Panel accordingly finds that the disputed domain name was registered and used 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 <osramlightings.com> be transferred to the Complainant.
Date: August 31, 2017