WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. yue tang, tangyue
Case No. D2018-1846
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is yue tang, tangyue of Hengyang, Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <osramd.com> is registered with Snapnames 94, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2018, 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 August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2018.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on September 20, 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 facts relevant to the decision in this case are that:
(1) the Complainant has been well-known as a manufacturer of incandescent light bulbs sold by reference to the trade mark OSRAM (the “Trade Mark”) but has in recent times moved into new technologies;
(2) the Trade Mark is the subject, inter alia, of European Union Intellectual Property Office (“EUIPO”) Reg. No. 000027490, registered on April 17, 1998;
(3) the disputed domain name was registered on July 23, 2018 and resolves to a website which offers GPS related goods and services; and
(4) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in OSRAM and submits that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent did not submit a Response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its EUIPO registration of the Trade Mark and so the Panel finds that the Complainant has trade mark rights.
The generic Top-Level Domain (“gTLD”) “.com” can be disregarded for the purposes of comparing the disputed domain name with the Trade Mark.2 Thereafter, the disputed domain name adds the letter “d” to the end of the Trade Mark. The visual and aural differences between the compared terms are minor and the Panel finds that the disputed domain name is confusingly similar to the Trade Mark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant needs only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.3
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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 publicly available WhoIs data lists the disputed domain name registrant as “yue tang, tangyue” and therefore there is nothing to suggest that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name. The Panel accepts the Complainant’s submission that there is no connection between the Parties.
The evidence accompanying the Complaint is that the disputed domain name resolves to a website which offers GPS related goods and services. Whilst there is no contention that those goods and services are directly competitive with the business provided by the Complainant under the Trade Mark, the Panel finds that the near identity of the disputed domain name with the Trade Mark and the technical nature of the offered goods and services raises an inference that Internet users may perceive some affiliation between the parties which does not exist. The Panel finds that this use of the disputed domain name is not in connection with a bona fide offering of goods or services. Finally, there is no legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that the Respondent’s conduct falls squarely within paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the Trade Mark. The resolving website exists for commercial gain and the fact that the website offers goods and services of a technical nature raises the inference that the Respondent targeted the Complainant’s Trade Mark and intended to benefit from the likely confusion. In terms of the Policy the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of that website.
Accordingly, the Complainant has satisfied the third and final limb 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 <osramd.com> be transferred to the Complainant.
Debrett G. Lyons
Date: October 1, 2018
1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).