WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Gokhan Goksel
Case No. D2018-2916
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Gokhan Goksel of Samsun, Turkey.
2. The Domain Name and Registrar
The disputed domain name <osramarabia.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 10, 2019.
The Center verified that the Complaint together with the amendment to 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 January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 14, 2019. 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 belongs to the international joint stock company Osram Licht group, founded in Germany in 1919 with headquarters in Munich. Osram currently employs around 26,000 people worldwide and has operations in over 120 countries.
Osram is one of the three largest lighting companies around the world. Since July 2016, the company Ledvance is responsible as Licensee of the Complainant for the distribution of Osram products in many countries, while the Complainant is concentrating on technology and innovation-led applications related to the lighting industry market.
The Complainant owns several registrations in multiple jurisdictions for more than 500 OSRAM trademarks in over 150 countries and regions, including the United States of America registration No. 1,552,573 registered on August 22, 1989.
The Complainant also owns more than 640 domain names consisting of the mark OSRAM, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The disputed domain name was registered on November 28, 2018.
5. Parties’ Contentions
The Complainant argues that the Respondent registered the disputed domain name on November 28, 2018 and that it is identical or at least confusingly similar to marks owned by the Complainant, and that “arabia”, as a geographical term, is to be regarded as insufficient to prevent Internet user confusion.
The Complainant alleges that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, and that it does not hold a trademark, trade name or other rights in the name Osram.
In addition, the Complainant says that the Respondent has not made a bona fide offering of goods or services and/or a legitimate non-commercial or fair use of the disputed domain name. Instead, the disputed domain name was used as a web shop operated by a company named UBM Universal Building Materials Merchants Co. Ltd., where lighting products of the Complainant were offered and advertised, without any explanation that the website was not related with the Complainant.
According to the Complainant, the Respondent is not authorized to register and use the disputed domain name, and the disputed domain name was registered with full knowledge of the Complainant’s rights in the trademark OSRAM to create a likelihood of confusion among Internet users for commercial gain.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove 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.
A. Identical or Confusingly Similar
The evidence presented in the Complaint demonstrates that the Complainant is the owner of numerous trademark registrations for OSRAM around the world, as well as several different domain names comprising OSRAM.
The disputed domain name comprises the Complainant’s trademark OSRAM in its entirety. The addition of the geographical term “arabia” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical terms to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark OSRAM.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was used in bad faith.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark OSRAM is registered by the Complainant in several jurisdictions and has been used since a long time. Also, the Complainant registered many different domain names consisting of the mark OSRAM.
The disputed domain name reproduces the Complainant’s trademark OSRAM in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s OSRAM mark is distinctive, widely known and has a strong worldwide visibility. Thus, a domain name that reproduces such a well-known mark is suggestive of the registrant’s bad faith. It is not conceivable that the Respondent would not have been aware of the Complainant's trademark rights at the time of the registration of the disputed domain name in 2018.
In addition to the above, the Complainant showed evidence in Annexes 2a and 2b of the Complaint that the disputed domain name was used by the Respondent to mislead Internet users into believing that the corresponding website was related to or authorized by the Complainant, by advertising and offering lighting products under the mark OSRAM, without any explanation that the website was not related with the Complainant.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark OSRAM as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being 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 <osramarabia.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: February 28, 2019