WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Elizabeth Basinger
Case No. D2017-2470
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Elizabeth Basinger of Chicago, Illinois, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <sosram.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 14, 2017. On December 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2018.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 19, 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, OSRAM GmbH, is part of the OSRAM Licht group, which was founded in Germany in 1919 and became one of the three largest lighting manufacturing companies in the world. The Complainant’s mother company, OSRAM Licht AG, currently employs more than 34,000 people and has operations in 120 countries. Since 2016, the Complainant’s core activity is concentrated on semiconductor technologies and their applications, in particular automotive and specialty lighting, opto semiconductors, luminaires, lighting systems and solutions.
The Complainant has been operating under the company name “OSRAM” since its foundation. It has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions. It owns over 100 international trademarks comprising the term “OSRAM”. Furthermore, the Complainant is the owner of more than 640 domain names based on the “OSRAM” denomination. The notoriety of the Complainant’s OSRAM trademark has been established in a great number of UDRP panel decisions, e.g., OSRAM GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004; Osram GmbH vs. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Kang Xiaoping, WIPO Case No. D2016-1441.
The disputed domain name <sosram.com> was registered on October 16, 2017. The disputed domain name is active and is used for advertising and operating an online shop for clothing, sportswear and protective gear under different brands.
5. Parties’ Contentions
The Complainant states that it has no knowledge of the language of the Registration Agreement. In any event, it requests that the language of the proceeding be English, in view of ensuring an expeditious proceeding. Furthermore, the fact that the Respondent is located in the United States and the website connected to the disputed domain name displays some content in English suggests that the Respondent understands English.
On the merits, the Complainant essentially contends that, by the registration of the disputed domain name including the OSRAM trademark and its use for an online shop, the Respondent infringes on the Complainant's trademark rights. The Respondent has no legitimate interest in using the disputed domain name and is acting in bad faith.
The Complainant provides a detailed account of the history of the OSRAM corporate group and the OSRAM brand and also makes reference to the ample UDRP decisions confirming that the OSRAM trademark is well-known all around the world.
The disputed domain name is identical or confusingly similar to the Complainant's OSRAM trademark with a single misspelling of an element of the mark: an additional “s” at the beginning. The disputed domain name is also virtually identical to the Complainant’s principal domain name <osram.com>. In the Complainant’s view, this is an example of confusing similarity brought about through easily made typing errors by an Internet user. Thus, Internet users are led to falsely believe that the disputed domain name is somehow connected to the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name, because it is not a holder of the OSRAM trademark, has no rights or legitimate interests in the name “OSRAM”, is not an authorized dealer, distributor or licensee of the Complainant, nor is it associated with the Complainant in any other way. The Respondent is not commonly known by the disputed domain name. On its website, the Respondent does not explain that the website is not related to the Complainant.
Finally, the Respondent’s choice of the disputed domain name, which is virtually identical to the Complainant’s well-known OSRAM trademark, indicates bad faith intent to register and use the disputed domain name. Complainant asserts that the Respondent can have no plausible reason for incorporating the OSRAM trademark into the disputed domain name other than trying to exploit the Complainant’s famous trademark in order to attract potential clients for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Regarding the language of the proceeding, the Panel notes that, by email of December 15, 2017, the Registrar indicated that “[t]he English language was used to inform the Registrant of both the Domain Registration Agreement as well as the Customer Master Agreement during the domain name Registration and Customer Signup process.”
Therefore, the Panel determines that the language of the proceedings shall be English.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the OSRAM trademark. It has provided sufficient documentary evidence in this regard.
The disputed domain name differs from the Complainant’s trademark only by the addition of the letter “s”. In the opinion of the Panel, this additional letter does nothing to detract from the confusing similarity between the Complainant’s distinctive trademark and the disputed domain name for purposes of the Policy. The Panel therefore finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
The requirement under paragraph 4(a)(i) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
There is no evidence before the Panel of any right or legitimate interests of the Respondent in respect of the disputed domain name. In particular, the Complainant has not authorized the Respondent to use the disputed domain name or the Complainant’s trademark. The Respondent is not in any way affiliated with the Complainant.
Furthermore, the disputed domain name seems to be derived from the Complainant’s corporate name and trademark. This is indicated by the fact that the term “OSRAM” is not a common dictionary word. According to the corresponding Wikipedia entry, “OSRAM” is a blend of the words “osmium” and “wolfram”, as both these chemical elements were used for lighting filaments at the time the company was founded. On the other hand, “SOSRAM” is not a common word in any language.
In the view of the Panel, the Respondent can neither claim a legitimate interest arising from a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the domain name within the meaning of the Policy. The Respondent is using the disputed domain name to resolve to an online shop, where it advertises and sells products of several different brands, most prominently the brand “Dainese”. The Panel has no way of determining the relation, if any, between the Respondent and the respective brand holders. In any event, it is clear that: (i) the products sold by the Respondent are unrelated to the the Complainant and its products and (ii) the Respondent does not appear to use the terms “OSRAM” or “SOSRAM” anywhere other than in the disputed domain name.
Taking into account the above considerations, the Panel is convinced by the Complainant’s prima facie case, which remains unrebutted by the Respondent, and finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirement under paragraph 4(a)(ii) of the Policy is thus also fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name comprises the Complainant’s OSRAM trademark with an additional letter “s” at the beginning. This could be designed to take advantage of any slight misspelling by Internet users of the Complainant’s web address, amounting to so-called “typosquatting”. This conclusion is supported by the fact that, as explained above, the “OSRAM” name is highly distinctive, whereas the word “SOSRAM” has no discernible meaning.
The Panel notes that the Respondent seems to operate in a different business sector than the Complainant and that it uses the disputed domain name to advertise and sell products which are unrelated to the Complainant or the Complainant’s products. Nevertheless, as previous UDRP panels have held, such use does not automatically prevent a finding of bad faith under paragraph 4(b)(iv) of the Policy (see, in this context, Carrefour v. Joseph Azuka, WIPO Case No. D2014-1276; and Two Men and a Truck / International, Inc. v. Jason Rager / Paydues Inc., WIPO Case No. D2011-1312).
Under the particular circumstance of the case, the Panel finds that paragraph 4(b)(iv) of the Policy is presently fulfilled. Especially in view of the status and worldwide fame of the OSRAM trademark, as well as the fact that its first registration predates the registration of the disputed domain name by a century, the Panel is convinced by the Complainant’s case that, by registering and using the disputed domain name, the Respondent has attempted to attract Internet users to its website for commercial gain by exploiting the notoriety of the Complainant’s trademark.
The Complainant has therefore fulfilled 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 <sosram.com> be transferred to the Complainant.
Date: February 2, 2018