WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Privacy Protected, Privacy Protected by Hostnet
Case No. D2021-1653
1. The Parties
The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Privacy Protected, Privacy Protected by Hostnet, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <osram-automotive.online>, <osram-automotive.shop>, <osram-automotive.store> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 2021, 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 May 31, 2021 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 May 31, 2021.
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 June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021.
The Complainant requested the suspension of the proceeding on July 2, 2021, and the Center notified the suspension on July 2, 2021 until August 2, 2021. The Complainant requested a further extension of the proceeding on July 28, 2021, and the Center notified the extension of suspension on July 28, 2021 until October 2, 2021. On September 29, 2021, the Complainant requested another exceptional extension and the Center granted exceptionally the extension of suspension on September 30, 2021 until October 30, 2021. The Center reinstituted the proceeding on November 8, 2021 and started the process of the Commencement of Panel Appointment.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on November 16, 2021. 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.
Preliminary remark on the identity of the Respondent
As indicated by the Registrar, the nominal Respondent is a privacy shield. However, the disputed domain names are manifestly under the control of a Dutch entity named Mobiled B.V. This company exploits the website to which the disputed domain names resolve, and it also intervened on several occasions in the proceeding, in order to give its consent to the suspension of the proceeding. The question arises, therefore, as to whether this entity should be co-Respondent in this case.
In accordance with section 4.4.5 of the of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “in all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed”.
The Panel deems appropriate to include Mobiled B.V. as co-Respondent in this case. By intervening directly in the proceeding, it acted as ultimate controller of the disputed domain names. In other words, this entity has acted willingly as de facto Respondent, and it should therefore assume this role.
4. Factual Background
The Complainant is part of the OSRAM Licht Group, which was founded in Germany in 1919. The Complainant operates in 120 countries, and in 2019 achieved annual sales of EUR 3.5 billion. The Complainant is well-known historically as a leading light bulb manufacturer. But it is also present in other sectors, in particular in the automotive lighting industry.
The Complainant has always traded under the brand OSRAM, and it holds numerous registered trade marks over this word, including in particular international trade mark registration No. 1264994 of December 19, 2014.
In support for its activities, the Complainant owns hundreds of domain names, which contain the OSRAM mark. Also, the Complainant has cited dozens of prior decisions under the UDRP in which panels have found the OSRAM mark to be distinctive and well known in many jurisdictions.
The disputed domain names were registered on April 14, 2021. They resolve to a webpage at “www.mobiled.nu” administered by the “Mobiled B.V”. Its main content can be described as follows:
- the Title of the webpage is “MobiLED”, reproduced in black and green. It is the brand used by the Respondent to identify its activities of reselling of light bars for the automotive sector;
- the webpage then contains a text, available solely in Dutch and which states the following, under the heading “OSRAM”: Osram is originally a German lamp manufacturer. They have been a household name on the for many years field of all kinds of lighting. Both quality and durability are highly regarded. Beyond these features, the lighting looks modern and the lamps have a professional finish appearance, a real addition to your vehicle or machine. Due to the unique double certification (2xR112) on a number of bars you can still comply with the legal directive by placing 1 light bar with regard to symmetry. MobiLED is OSRAM’s partner in lighting for vehicles and work lights;
- and then the website displays four products, all presented within boxes, each featuring the brand OSRAM in the upper right corner, a picture of the product in the middle, the brand MOBILED below the product in big size, and finally in the lower part of the box the designation of the product in Dutch, and the retail price.
5. Parties’ Contentions
The arguments put forward by the Complainant are the following:
Regarding the first element of the Policy, the Complainant indicates that “The disputed domain names virtually consist of the Complainant’s mark. The additional word ‘AUTOMOTIVE’ does not prevent internet user confusion. To the contrary, it enhances Internet user confusion by describing the Complainant’s business. In any way, the disputed domain names in this case 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”.
Regarding the second element of the Policy, the Complainant’s arguments are threefold. First, it states that to its knowledge the Respondent has no trade marks OSRAM, and no rights or legitimate interests in the name OSRAM. Second, it claims that the Respondent is not making a legitimate use of the disputed domain names, as it is not a licensee of the Complainant, and is not commonly known by the disputed domain names. Third, it indicates that “The Respondent is no authorized 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 noncommercial or fair use of the disputed domain names”.
Regarding the third element of the Policy, the Complainant raises a number of arguments. First, it refers to the reputation of the trade mark OSRAM. Second, it mentions that “Respondent uses the disputed domain names to intentionally attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. Respondent trades on the Complainant’s reputation and goodwill to generate traffic to his website”, and also to take unfair advantage of the Complainant’s famous trade mark. Third, the Complainant claims that the very choice of the disputed domain names indicate bad faith registration. Fourth, it adds that “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 names. It is obvious that the Complainant’s famous trademark is being used in order to attract potential buyers to the website to which the disputed domain names resolve. Here, the Respondent clearly knows about the worldwide well-known Complainant’s trademarks ‘OSRAM’, as it offers and sells lighting products”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain names are identical or confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trade mark OSRAM.
The disputed domain names <osram-automotive.online>, <osram-automotive.shop>, <osram-automotive.store> include the Complainant’s trade mark in its entirety, combined with the term “automotive”. This addition does not prevent the Complainant’s trade mark from being recognizable in the disputed domain names. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trade mark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
As the disputed domain names include the Complainant’s trade mark in its entirety combined with a term that does not prevent the Complainant’s trade mark from being recognizable in the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Therefore, the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Unfortunately, none of the parties to this proceeding has addressed the relevant issues regarding the test for rights or legitimate interests. Neither the Complainant, which limited its arguments to the standard assertions on lack of rights or fair use, nor the Respondent which could have provided relevant information regarding this case.
However, this case requires a deeper analysis, if not by the parties, then by the Panel. From the information provided for by the Complainant, it appears that the disputed domain names resolve to a website operated by the Respondent, and specifically to a page in which the brand of the Respondent is displayed prominently, and where a number of goods originating exclusively from the Complainant are offered for sale.
It is therefore necessary to address the issue of whether such use of the disputed domain names, by a reseller of authentic goods, can be qualified as legitimate.
Section 2.8.1 of WIPO Overview 3.0 indicates that “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”.
Also, section of >WIPO Overview 3.0 adds that “Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., ‘parts’, ‘repairs’, or ‘location’), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark”.
The Panel deems necessary to review all the conditions of the “Oki Data test” in this case:
- First, the Panel notes that the Respondent apparently offers genuine goods bearing the brand OSRAM of the Complainant. The Complainant has not claimed, let alone evidenced, that these goods are counterfeit. Therefore, the first condition of the test is satisfied.
- Second, based on the limited evidence provided for by the Complainant, the Respondent would appear to sell exclusively goods of the Complainant. Actually, only four products are offered on the page to which the disputed domain names resolve, all falling under the category of lighting goods and accessories.
However, the Panel has deemed necessary to investigate a little further, and has visited the website of the Respondent, hosted at “www.mobiled.nu”. Such independent research, relating particularly to the website of the Respondent, falls within the accepted general powers of the Panel, as recognized at section 4.8 of WIPO Overview 3.0: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”
The visit of the website of the Respondent reveals that its business extends to the retail of hundreds of different goods, all in the field of lighting for the automotive sector. The catalogue of the Respondent includes nearly fifteen suppliers, including the Complainant. It is worth noting that the goods of the Complainant are much more numerous than the four displayed when accessing to the page to which the disputed domain names resolve.
With this, it appears that the second element of the test is not satisfied.
- Third, the webpage of the Respondent clearly indicates the relationship between the Respondent’s brand MOBILED and the goods of the Complainant. The Respondent presents the Complainant’s brand on the top of the page, presenting it as a longstanding manufacturer of lighting goods. The Respondent also indicates in the same text that “MobiLED is OSRAM’s partner in lighting for vehicles and work lights”. This assertion is not in line with the arguments put forward by the Complainant, which states that “The Respondent is no authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant”. There is a discrepancy here between the information provided for by the Respondent in its website, and the claim made by the Complainant in the Complaint. As the Respondent chose to not respond to the Complaint, this Panel notes that the Complainant’s claim is not rebutted and is therefore deemed to be accurate. Therefore, the Respondent is deemed to be an unauthorized reseller of the Complainant’s goods, which implies that its relationship with the Complainant is not disclosed accurately on its website Therefore, the third element of the Oki Data test is not satisfied.
- Finally, the Panel notes that the Respondent does not attempt to “corner the market in domain names that reflect the trade mark” of the Complainant. Even if the Respondent has registered three disputed domain names, the case file indicates that the Complainant owns hundreds of domain names including its brand OSRAM, and the combinations of the Complainant’s trade mark with other words or expressions is endless.
To conclude, the “Oki Data Test” fails in two elements here: those of the use of the disputed domain names exclusively in connection with goods of the Complainant, and of the accurate disclosure of the registrant’s relationship with the trademark holder.
For this reason, the second element of the Policy is deemed to be satisfied.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain names were registered and are being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel tends to believe that the Respondent has primarily registered the disputed domain names, and is using them, with the intention to attract as many users as possible to its website. These disputed domain names feed users to its business, thanks to the attractiveness of the well-known brand OSRAM of the Complainant.
In order to vest this practice with apparent legitimacy, the Respondent has set-up a webpage in which the products displayed are solely those of the Complainant. However, while initial confusion is indeed avoided, in the end users are more likely than not to access to the other offers of the Respondent, which include products bearing other brands.
In the opinion of the Panel, this is confirmed by the fact that the webpage to which the disputed domain names initially resolve solely display four products of the Complainant. This is a mere token use, which does not correspond to the reality of the Respondent’s business. The Respondent offers many more products of the Complainant, and of the Complainant’s competitors.
The Panel finds therefore that the Respondent has set up an initial page in order to confer to its practice the appearance of a legitimate use. But in the end the disputed domain names were registered, and are being used, to create initial confusion with the Complainant’s trade mark, and therefore attract users to its website to generate more business.
A finding of bad faith registration and use is therefore in order.
Accordingly, the third and final element of the Policy is deemed to be satisfied.
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, <osram-automotive.online>, <osram-automotive.shop>, <osram-automotive.store> be transferred to the Complainant.
Date: November 30, 2021