WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram GmbH v. Ferry Gunawan

Case No. D2021-4001

1. The Parties

The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Ferry Gunawan, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <agenosram.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2021, 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 December 3, 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 December 7, 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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 4, 2022. 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 Osram Licht Group which was founded in Germany in 1919. The Group is specialized in manufacturing light bulbs and other lighting products and solutions. Over the years, it expanded its operations internationally. The Complainant uses the trademark OSRAM and has registered it first time in 1906. Currently, more than 500 trademark and service marks are registered for OSRAM. The trademark OSRAM has been held by prior UDRP panels as being a well-known trademark.

The Complainant owns many trademark registrations for OSRAM such as:

- International trademark registration No. 321818, registered on September 26, 1966;
- Indonesian trademark registration No. IDM000608353, registered on September 25, 2017;
- Norwegian trademark registration No. 178032, registered on November 14, 1996; and
- United States trademark registration No. 1,552,573, registered on August 22, 1989.

The disputed domain name was registered on July 29, 2021. The disputed domain name resolves to a website which purportedly offers the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant’s company name also incorporates its trademark that is registered worldwide. The Complainant’s trademark is recognizable in the disputed domain name and hence the addition of the other term does not prevent a finding of confusing similarity. The term “agen” means “agent” in Indonesian, which implies that the Respondent is the distributor of the Complainant. The generic Top-Level-Domain (“gTLD”) “.com” should be ignored.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not authorized by the Complainant to use its trademark nor is it affiliated with the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The trademark OSRAM is a famous trademark. The Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant as the disputed domain name resolves to a website purportedly selling the Complainant’s products under the brand Osram. Thus, the Respondent seeks to take unfair advantage of the Complainant’s trademark. The Respondent knew of the Complainant very well.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark OSRAM. The Panel is satisfied that the Complainant has established its ownership of the trademark OSRAM. The disputed domain name incorporates the Complainant’s trademark OSRAM in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). Therefore, the addition of the term “agen” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Complainant further asserts that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. However, according to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves purportedly offers products of the Complainant for sale. There may be an argument that the disputed domain name is being used in connection with a bona fide offering of products. In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra):

(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 owner; and
(iv) the Respondent must not try to corner the market in domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Panel analyzes each of these requirements below:

(a) Requirement No. 1: this requirement appears to have been met in the instant case as the disputed domain name resolves to a website which purportedly offers the Complainant’s products for sale.
(b) Requirement No. 2: based on the evidence provided by the Complainant, the website appears to sell only the Osram products.
(c) Requirement No. 3: This requirement has not been met as the website does not accurately and prominently include a statement demonstrating that the Respondent does not have any relationship with the Complainant.
(d) Requirement No. 4: This requirement has been met as based on the case file, there are no numerous domain name registrations by the Respondent containing the trademark of the Complainant.

As such, at least the Requirement No. 3 has not been met in this case. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent clearly knew of the Complainant’s business and trademark as the disputed domain name resolves to a website purportedly offering products of the Complainant for sale. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full with the additional term “agen” (“agent” in Indonesian).

The disputed domain name resolves to a website, which purportedly offers products of the Complainant for sale. The Oki Data test requirements have not been met in this case, and the disputed domain name has been registered and used to take commercial advantage due to its confusing similarity with the Complainant’s trademark. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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 <agenosram.com> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: February 17, 2022