WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Registration Private, Domains By Proxy, LLC / Kevin Warner
Case No. D2019-1539
1. The Parties
The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Kevin Warner, United States.
2. The Domain Names and Registrar
The disputed domain names <getosram.com> and <goosram.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 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 July 12, 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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 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 is a multinational lighting manufacturer, part of the OSRAM Licht AG group, founded in Germany in 1919.
The Complainant is the owner of dozens of trademarks composed by the term “osram”, in particular the International Trademark registration for OSRAM under the Madrid Protocol No. 321818, of September 29, 1966.
“Osram” is also the main and distinctive element of the Complainant’s trade name.
The Complainant owns and operates numerous other domain names incorporating its OSRAM mark, including <osram.com> registered on March 25, 1999.
The disputed domain names were registered by the Respondent on May 24, 2019.
The disputed domain names used to resolve to the Complainant’s official website. However, the Panel accessed the disputed domain names on August 25, 2019, at which time the disputed domain names did not resolve to any active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has traded under the name OSRAM since its foundation, having become the most relevant of its trademarks. As a matter of fact, the Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions. Moreover, the Complainant owns over 100 international OSRAM trademarks. Due to the extensive international use of the distinctive OSRAM trademarks they have become internationally well-known. The Complainant is the owner of more than 640 domain names based on the denomination OSRAM, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). The disputed domain names are identical or at least confusingly similar to marks owned by the Complainant and the Complainant’s company name. The additional words “get” and “go” are to be regarded as insufficient to prevent Internet user confusion. The words “get” and “go” are common English words that are easily recognizable and have a praising meaning with regard to the Complainant’s mark. In any way, the disputed domain names contain the famous trademark OSRAM which stands out and leads the public to think that the disputed domain names are somehow connected to the Complainant. Lastly, by assessing the first UDRP element, the gTLD extension “.com” is to be disregarded under the confusing similarity test.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. To the best of the Complainant’s knowledge, the Respondent is not holder of an OSRAM trademark and has no rights or legitimate interests in the name OSRAM. The Respondent has not registered the disputed domain names in connection with a bona fide intent, as the Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain names. The Respondent is also not commonly known by the disputed domain names. The Respondent is no authorised dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. Additionally, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names.
(iii) The disputed domain names were registered and are being used in bad faith.
OSRAM is a famous trademark of the Complainant. Even though the Respondent does not actively use the disputed domain names, the registration of the disputed domain names consisting of the well-known trademark OSRAM and only the additional words “go” and “get” constitutes bad faith. The Respondent does not use the disputed domain names for personal non-commercial interests. Moreover, the Respondent’s choice of the disputed domain names, which are identical to the well-known Complainant’s registered OSRAM trademark, clearly indicates bad faith intent to register and use of the disputed domain names. Linking the disputed domain names to the Complainant’s website without the knowledge and/or approval of the Complainant indicates that the Respondent intends to sell, rent, or otherwise transfer the disputed domain names to the Complainant. There is no other plausible reason for registering and linking the disputed domain names to the main website of the Complainant. Apart from the above, the Respondent has not attempted to make any bona fide use of the disputed domain names. The registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the respondents, but rather constitutes bad faith under paragraph 4(c) of the Policy. This again proves that the Respondent knows the Complainant well and thus registered the disputed domain names in bad faith. Furthermore, bad faith exists where there can be no question that the Respondent knew or should have known about the Complainant's trademark rights before registering its domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 Panel has no doubt that “osram” is a term directly connected with the Complainant.
Annex 9 to the Complaint shows dozens of international registrations of the OSRAM trademark owned by the Complainant since at least 1966 (n. 321818, of September 29, 1966).
The trademark OSRAM is wholly encompassed within the disputed domain names, which also include respectively the prefixes “get” and “go”, as well as the gTLD extension “.com”.
Previous UDRP panels have consistently found that descriptive additions (such as the English terms “get” and “go”) do not avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; etc.).
It is also well established that the addition of a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
Furthermore, there is no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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; or
(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 its website or location or of a product or service on its website or location.
The disputed domain names encompass the trademark OSRAM. The addition of the terms “get” or “go” even enhances the perception that the disputed domain names relate to the Complainant, as they may suggest that OSRAM products could be found at the disputed domain names.
The term “osram” has no dictionary meaning in English.
When the disputed domain names were registered by the Respondent (in 2019) the OSRAM trademark was already widely-known worldwide in relation with the Complainant’s light bulbs. According to section 3.1.4 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Third Edition, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the registration of the disputed domain names <getosram.com> and <goosram.com> was a mere coincidence.
Currently no active website are linked to the disputed domain names, but this is not enough to avoid the Panel’s findings that the disputed domain names are also being used in bad faith.
In the Panel’s view, the circumstances that the Respondent (a) registered domain names which contain, well known and distinctive trademark; (b) is not currently using the disputed domain names; and (c) has not provided any justification for the registration of such domain names including the Complainant’s trademark, certainly cannot be used in benefit of the Respondent in the present case. Such circumstances, associated with (d) the lack of any plausible interpretation for the legitimate registration of the terms <getosram.com> or <goosram.com> by the Respondent are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainant has also satisfied the third element 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 names <getosram.com> and <goosram.com> be transferred to the Complainant.
Date: August 28, 2019