WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Md. Ripon Islam, OsramBD
Case No. D2019-0172
1. The Parties
The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Md. Ripon Islam, OsramBD of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <osrambd.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 January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 27, 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 27,000 people worldwide and has operations in over 120 countries.
The Complainant is one of the largest lighting companies around the world. Since July 2016, the company Ledvance is the 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 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 October 1, 2018, which was in use as a webshop advertising and offering lighting products, and including products of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant argues that the Respondent registered the disputed domain name on October 1, 2018 and that it is confusingly similar to the Complainant’s company name and the Complainant’s famous OSRAM trademarks.
Also, the Complainant says that “bd” 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 trademark OSRAM.
In addition, the Complainant mentions 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 domain name was used as a webshop advertising and offering lighting products of the Complainant and its competitors, without any explanation that the website was not related with the Complainant. Furthermore, the Respondent used a trademark logo with the Complainant’s branding colour orange.
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 term 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.
However, the Respondent sent an email communication on March 13, 2019, stating that they are not a productive company but a middleman, and that they are very sorry for the inconvenience.
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 trademark.
The disputed domain name comprises the Complainant’s trademark OSRAM in its entirety. The addition of the letters “bd” 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 words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).
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 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 Respondent would not have been aware of Complainants 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 the Complaint that the disputed domain name was used by the Respondent to mislead 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, infringing the Complainant’s rights, along with products of competitors.
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 <osrambd.com> be transferred to the Complainant
Mario Soerensen Garcia
Date: March 14, 2019