WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Alissa Kaake
Case No. D2017-2418
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Alissa Kaake of Minneapolis, Minnesota, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <osram-de.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2018.
The Center appointed Cherise Valles as the sole panelist in this matter on January 17, 2018. 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 operative company of OSRAM Licht AG, an international joint stock company, with its headquarters in Munich, Germany. OSRAM Licht AG currently employs more than 34,000 people and has operations in over 120 countries. It had a revenue of approximately EUR 5.7 billion in the 2016 financial year.
The Complainant has traded under the name OSRAM since its creation. It has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, including the following:
- International trademark registration No. 676932 for OSRAM, registered on April 16, 1997, in classes 1, 4, 6, 7, 9, 10, 11, 14, 17, 21, 28 and 42;
- International trademark registration No. 567593 for OSRAM, registered on February 15, 1991, in classes 6, 7, 8, 9, 10, 11, 17 and 21; and
- United States trademark registration No. 1552573 for OSRAM, registered on August 22, 1989, in classes 9, 10 and 11.
The Complainant is the owner of more than 640 domain names containing the name “OSRAM”, including <osram.de>, <myosram.de>, <osram-licht.de> and <osram.com.de>.
The disputed domain name <osram-de.com> was registered on December 5, 2017. The Complainant alleges that the disputed domain name is used for illegal phishing activities. The disputed domain name currently resolves to an inactive website.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant asserts that the disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, OSRAM, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that includes its trademarks.
The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the OSRAM trademark, and is the owner of many trademarks and domain names worldwide for and containing the name OSRAM, as indicated in Section 4 above.
The disputed domain name <osram-de.com> wholly incorporates the Complainant’s registered OSRAM trademark. Previous panels have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675.
The addition of the term “de” is insufficient to distinguish the disputed domain name from the Complainant’s OSRAM trademark or to prevent the confusing similarity.
Previous panels have held that the top-level suffix <.com> is to be disregarded when determining confusing similarity (see, Arthur Guinness Son & Co v. Dejan Macesic, WIPO Case No. D2000-1698 relating to <guiness.com>).
In the light of the foregoing, the Panel finds that the disputed domain name <osram-de.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, and is not the owner of any OSRAM trademarks. The Complainant has never authorized the Respondent to use its trademarks or to register a domain name comprising its trademarks. There is no commercial relationship between the Complainant and the Respondent that would entitle the Respondent to use or register the disputed domain name.
The Respondent is using the disputed domain name with the intent to make commercial gain and to tarnish the Complainant’s OSRAM trademarks. By making use of the disputed domain name for illegal phishing activities, the Respondent is making neither a bona fide offering of goods or services nor a legitimate, Non-commercial fair use of the disputed domain name.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
As a result of the Complainant’s extensive use of its distinctive OSRAM trademarks, the trademarks have become internationally well-known. This has been confirmed by previous UDRP panels (see, e.g., OSRAM GmbH v. Transure Enterprise Ltd., WIPO Case No. D2008-1032 (<osramonline.com>) and OSRAM GmbH v. shidankj, WIPO Case No. D2016-1250 (<osram.vip>)).
Previous panels have confirmed that the name “OSRAM” is a distinctive identifier of the Complainant and its products (see, e.g., OSRAM GmbH v. Ocean Grenier, WIPO Case No. D2008-0083 (<osram-led.com>) and OSRAM GmbH v. LeAnh Tuan, Le Tung - OBS, WIPO Case No. D2016-1971 (<longosram.com>)).
The addition of the term “de” increases the likelihood of confusion regarding the Complainant’s association with the disputed domain name, as the Complainant is based in Germany: “de” is a commonly accepted shorthand for Germany, and <.de> is the country code Ttop-Llevel Ddomain for Germany.
As indicated in Section 4 above, the Complainant’s OSRAM trademarks were registered long before the disputed domain name. The Respondent must have been aware of the existence of the Complainant’s rights in the trademarks when registering the disputed domain name. Indeed, the Respondent’s use of the disputed domain name in a phishing scheme demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as a legal entity related to the Complainant.
The consensus view of previous UDRP panels is that the use of a domain name for per se illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent, and that such behavior is manifest evidence of bad faith use (see, e.g., Banca Intesa S.p.A. v Moshe Tal, WIPO Case No. D2006-0228).
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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-de.com> be transferred to the Complainant.
Date: January 29, 2018