WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Shailesh Pedamkar, Osram Finance
Case No. D2020-0755
1. The Parties
Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Shailesh Pedamkar, Osram Finance, India.
2. The Domain Name and Registrar
The disputed domain name <osramfinance.com> is registered with Wix.com Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2020, 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 Complainant on April 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 8, 2020.
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 Respondent of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 12, 2020. 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
Complainant is the operating company of Osram Licht AG, a lighting manufacturer employing over 23,500 people in 120 countries. Its annual revenue in 2019 was EUR 3.5 billion. Complainant has been continually using its OSRAM trademark (“OSRAM Mark” or “Complainant’s Mark”) for more than 110 years and has more than 500 trademark registrations in 150 countries, including German registration number DE86924 (registered on April 17, 1906) and international registration number 1264994 (registered on December 19, 2014) which includes a Madrid Protocol designation for India, the country where Respondent is located. The OSRAM Mark’s worldwide notoriety has been recognized by previous UDRP panels. Complainant also owns at least 640 domain names based on the OSRAM Mark, including <osram.com.mk>, <osramindia.com>, and <osram.com>.
The disputed domain name, <osramfinance.com>, was registered on January 21, 2020 and resolves to a website apparently offering financial services from a company calling itself “Osram Finance” located in Mumbai, India.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s OSRAM mark because it reproduces identically and entirely the OSRAM Mark. Complainant argues that the addition of the term “finance” in the disputed domain name is insufficient to distinguish the disputed domain name since “finance” is a generic term.
Complainant also alleges that, to the best of its knowledge, Respondent has no rights or legitimate interests in the disputed domain name. It alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Lastly, Complainant alleges that Respondent has registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the OSRAM Mark given its worldwide notoriety and the complete incorporation of the OSRAM Mark in the disputed domain name. This, according to Complainant, makes it obvious that Respondent is using the disputed domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the OSRAM Mark through its various national and international registrations.
With Complainant’s rights in the OSRAM Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s OSRAM Mark is fully incorporated in the disputed domain name. The inclusion of the descriptive term “finance” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s OSRAM Mark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. WIPO Overview 3.0, section 2.1. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Id. Practically speaking, such prima facie case under this second element is often established where the complainant puts forward available evidence (e.g.,thecomplainant has rights to the name, the respondent has no obvious rights to the name that the complainant is aware of (such as an existing business or fair use, the complainant has not authorized the respondent to use the mark in question). Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121.
Complainant has established that it has rights to the OSRAM Mark in India since at least 2013 through its international registration. Complainant also alleged that it has not authorized Respondent to use the mark in question, and Respondent is not commonly known by the disputed domain name. However, Complainant offered no specific evidence to support its assertion that Respondent is not commonly known by the disputed domain name even though the record shows that Respondent’s purported business is called “Osram Finance”. Complainant also did not offer any specific evidence to suggest that Respondent’s business is illegitimate.
However that may be, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Here, the disputed domain name is not identical to the OSRAM Mark, but adds the term “finance” to it. In such case, even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Id. Therefore, this Panel considers it relevant that Complainant’s OSRAM Mark is well known as evidenced by dozens of UDRP cases and the fact that the OSRAM Mark has been in use for over 100 years; as such, the dispute domain name which fully incorporates the OSRAM Mark carries a risk of implied affiliation. The Panel also notes that a quick search online shows that Complainant, as many large corporations, offers finance services for its products; in other words, an actual or implied association of the disputed domain name with Complainant and its goods and services is not an unnatural one. Given that the disputed domain name’s website alleges that Respondent’s business has been operating since 2016, three years after Complainant established rights in India, the Panel may infer that Respondent knew or should have known that, at the very least, the disputed domain name carried a risk of an implied affiliation with Complainant. Therefore, the Panel believes that Complainant has satisfied its burden in establishing a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the OSRAM Mark in any way and so the Panel takes this as proven. Respondent also has not provided any other evidence confirming that it is actually commonly known by the disputed domain name (as opposed to merely adopting the name and using it for purposes of registering the disputed domain name to give a false veneer of authenticity) and that it did not adopt Complainant’s Mark for illegitimate purposes. Respondent also has not replied nor provided any evidence of any bona fide offering of goods or services. See WIPO Overview 3.0, section 2.2; Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Moreover, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is misleadingly diverting consumers to a website apparently offering financial services for commercial gain.
Therefore, the Panel concludes that Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence showing the widespread use and numerous registrations of the OSRAM Mark that long predate Respondent’s registration of the disputed domain name, including at least one international registration for the OSRAM Mark designating rights in India, the country where Respondent is located. Therefore, Respondent was likely aware of the OSRAM Mark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No.D2016-1973. Moreover, UDRP 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. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the OSRAM Mark and merely adds the descriptive term “finance”, meaning that bad faith registration and use of the disputed domain name can be inferred.
Based on the unrebutted evidence of record, Respondent is intentionally using Complainant’s OSRAM Mark to attract, for Respondent’s commercial gain, Internet users to Respondent’s ostensible financial services website, by creating a likelihood of confusion with Complainant’s OSRAM Mark. Although Respondent’s ostensible financial services are nominally distinct from Complainant’s lighting-focused goods and related services, Respondent’s use of the well-known OSRAM Mark appears calculated to gain some kind of reputational advantage or otherwise trade on the goodwill associated with this mark to increase web traffic to Respondent’s website. In this way, Respondent’s use of Complainant’s OSRAM Mark is effectively dilutive, given the global notoriety of the mark, in lieu of any evidence from Respondent to support a claim that it was not seeking to gain an unfair advantage from an implied association with Complainant’s OSRAM Mark. The Panel also notes that the website at the disputed domain name is quite generic and looks like a stock webpage without substantial independent content.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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 <osramfinance.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: May 26, 2020