WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. ziinex22 zinnex, zinnex INC
Case No. DPW2019-0001
1. The Parties
Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is ziinex22 zinnex, zinnex INC of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <osarm.pw> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 January 11, 2019, 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 January 15, 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2019.
The Center appointed David Perkins as the sole panelist in this matter on February 19, 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
4.A.1 Complainant belongs to and is the operative company of OSRAM Licht AG, which was founded in Germany in 1919. It is an international joint stock company and has its headquarters in Munich. Complainant employs approximately 27,000 people and has operations in over 120 countries. Its annual revenue for the financial year 2018 was some EUR 4.1 billion of which some 35.7% was accounted for by sales in the Asian Pacific market.
4.A.2 Until mid 2016 Complainant was one of the three largest lighting manufacturing companies in the world. At that time, Complainant transferred its classic lamps, ballasts and LED lamps businesses to LEDVANCE GmbH, which as Complainant’s licensee distributes those OSRAM products. Since then Complainant has concentrated on technology and innovation led applications based on semiconductor technologies, addressing new trends of the lighting industry market, including opto semiconductors, automotive and specialty lighting, and luminaries and solutions.
Complainant’s OSRAM trademark
4.A.3 The OSRAM trademark was first registered in 1906 in Germany by Auerbach von Welsbach AG, which became part of Complainant when it was founded in 1919 by the merger of the lamp production facilities of Deutsche Gasgluhlicht, Siemens & Halske and AEG. Today the Complaint states that Complainant has more than 500 OSRAM trademarks and service marks registered in over 150 countries. Exhibited to the Complaint are a selection of such registrations including registrations in Argentina; Australia; Benelux; Canada; Switzerland; Germany; Denmark; European Union; Finland; France; United Kingdom; Georgia; Italy; the Republic of Korea; Malta; Mexico; Norway; Sweden; and the United States of America. Also exhibited is evidence of 100 International Registrations for OSRAM, including International Registration No. 676932 first registered in April 1997.
4.A.4 Additionally, the Complaint cites some 67 decisions under the Policy in which the OSRAM trademark has been variously described as being a very distinctive identifier of Complainant and its products and as well known internationally. The Complaint also exhibits evidence of the OSRAM trademark as being registered as well known (Thailand) and also cited as well known (Japan; Brazil; China; and the Republic of Korea), as well as being held to be a famous trademark in a 1937 decision of the German Supreme Court.
Complainant’s OSRAM domain names
4.A.5 The Complaint exhibits 659 domain names - generic Top-Level Domains and country code Top-Level Domains - including the denomination OSRAM.
4.B.1 In the absence of a Response, what is known of Respondent is contained in the Complaint, Annex 2 to the Complaint, and the Registrar’s verification response of January 7, 2019 referred to in paragraph 3 above. The latter discloses that Respondent has an address in Barcelona, Spain.
4.B.2 Annex 2 provides evidence of what Complainant says constitute fraudulent invoices addressed by Respondent to Complainant’s customer, Phoenix Lamps in India. Those invoices were addressed to Phoenix Lamps in an email dated 14 June 2018, using the disputed domain name - [...]@osarm.pw - but purporting to be from Complainant.
4.B.3 Other than the above, nothing is known of Respondent.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 Complainant’s case is that the disputed domain name <osarm.pw> is a deliberate typo for the domain name <osram.pw>, which is registered and used by Complainant. As such, it is confusingly similar to its OSRAM trademark, which - as demonstrated by the evidence summarised in paragraphs 4.A.3 and 4 above - is an internationally well known mark.
Rights or Legitimate Interests
5.A.2 Complainant says that it has neither licensed or otherwise authorised use by Respondent of the OSRAM trademark.
5.A.3 Complainant further states that Respondent cannot demonstrate any of the circumstances evidencing rights to or legitimate interests in the disputed domain name set out in paragraph 4(c) of the Policy. As to Respondent’s lack of bona fide use (paragraph 4(c)(i)) and lack of legitimate noncommercial or fair use (paragraph 4(c)(iii)), Complainant refers to Respondent’s use of the disputed domain name summarised in paragraph 4.B.2 above.
Registered and Used in Bad Faith
5.A.4 Given the well known status of the Complainant’s OSRAM mark internationally - as to which, see paragraphs 4.A.3 and 4 above - Complainant’s case is that Respondent’s registration of the disputed domain name was clearly made in bad faith.
5.A.5 Such bad faith registration is, Complainant says, compounded by Respondent’s fraudulent bad faith use of the disputed domain name evidenced in Annex 2 and summarised in paragraph 4.B.2 above.
As noted, no Response has been filed by Respondent.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 From the evidence summarised in paragraphs 4.A.3 and 4 above, Complainant clearly has rights in the OSRAM trademark, which is an extremely well known mark internationally.
6.6 The disputed domain name is, as Complainant describes, plainly a typo for that well known OSRAM trademark and, consequently, is confusingly similar to that mark.
6.7 Consequently, the Complaint meets the dual requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 Complainant’s case summarised in paragraphs 5.A.2 and 3 above is, in the Panel’s opinion, well made out. There is no indication that Respondent could satisfy any of the circumstances set out in paragraph 4(c) of the Policy or could otherwise demonstrate rights to or legitimate interests in the disputed domain name. The Complaint, therefore, fulfils paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 On the basis of the facts summarised in paragraphs 4.A.3 to 4.A.5 and 4.B.2 above, Complainant’s submissions summarised in paragraphs 5.A.4 and 5 above are also well made out. The evidence referred to in those paragraphs falls fairly and squarely within the circumstances set out in paragraph 4(b)(iv) of the Policy. Accordingly, the Complaint meets the requirement of paragraph 4(a)(iii) of the Policy.
Language of the Proceeding
6.10 The Complaint states that Complainant is unaware of the language of the Registration Agreement under which the disputed domain name was registered. Consequently, Complainant requested that the language of the proceedings should be English and - referring to paragraph 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0”) - submits reasons why such request should be granted.
6.11 Subsequent to the filing of the Complaint on January 7, 2019, by email dated later the same day the Registrar informed the Center that the language of the Registration Agreement is English. Accordingly, no need for a Panel finding on the request is required.
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 <osarm.pw> be transferred to Complainant.
Date: February 26, 2019