WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Tom Zhu
Case No. DAE2014-0002
1. The Parties
The Complainant is OSRAM GmbH, of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Tom Zhu, of Huzhou, China.
2. The Domain Name and Registrar
The disputed domain name <osram.ae> is registered with AE Domain Administration (.aeDA).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2014. On the same day, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On April 8, 2014, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 22, 2014 in response to a notification by the Center that the Complaint was administratively deficient.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the "Policy"), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules").
In accordance with the paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 13, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 16, 2014.
The Center appointed Andrew J. Park as the sole panelist in this matter on May 28, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant´s company name OSRAM is a German joint stock company and belongs to the OSRAM group which was founded in Germany in 1919. The Complainant is an international company, with its headquarters in Munich, Germany, and employs currently more than 43, 000 people and supplies customers in about 150 countries. OSRAM is one of the two largest lighting manufacturing companies in the world, and is well-known round the world.
The Complainant has registered more than 500 trademarks and service marks containing "OSRAM" in over 150 countries and regions. The Complainant owns 13 active trademarks containing "OSRAM" in the United Arab Emirates. For example, the trademark OSRAM, was registered on September 18, 1989 in Argentina, Reg. No. 2236783; on April 10, 1964 in Australia, Reg. No. A5900; on July 14, 1986 in Canada, Reg. No. 336801; internationally Madrid registration on April 16, 1987, Reg. No. 676932.
The disputed domain name <osram.ae> is registered to the Respondent, Tom Zhu, of Huzhou, China.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name <osram.ae> is identical to the "OSRAM" trademarks owned by the Complainant and the Complainant's company name. The Complainant contends that due to the extensive international use of its "OSRAM" trademarks, they have become internationally "well-known." The Complainant contends that the dominant and distinctive feature of the disputed domain name is the well-known element "osram." The term ".ae" is a country code Top-Level Domain ("ccTLD") suffix and is to be disregarded under the confusing similarity test.
As to the rights or legitimate interests in respect of the disputed domain name <osram.ae>, the Complainant contends that to the best of its knowledge, the Respondent is not holder of a trademark OSRAM and has no rights in a personal name "osram." Moreover, the Respondent has not registered the disputed domain name 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 name. The Complainant further contends that the Respondent is using the "OSRAM" trademark to attract visitors to websites linked to the disputed domain name, and financially profit from the visitors to the linked websites.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith as it is being used for affiliate marketing, i.e., financial profit. The Complainant contends that the disputed domain name was registered in order to prevent the Complainant from registering its domain name in the United Arab Emirates. The Complainant also contends that the fact that the Respondent tried to sell the disputed domain name shows bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the Respondent's 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 domain name; and (iii) the Respondent's domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the disputed domain name <osram.ae> is in its relevant distinguishing part identical to the trademark OSRAM owned by the Complainant and the Complainant's company name. First, it is uncontroverted that the Complainant has established rights in the OSRAM trademark based on both longstanding use as well as its more than 500 trademarks and service marks containing "OSRAM" in over 150 countries and regions, including in the United Arab Emirates. Second, the disputed domain name <osram.ae> consists of the OSRAM trademark in its entirety. "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-09031). Third, the addition of the ccTLD suffix, such as ".ae" after a domain name, is technically required. It is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name <osram.ae> is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed 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 of WIPO Panel Views on Selected UDRP Questions Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Moreover, the Respondent has not registered the disputed domain name 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 name. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use its trademark "OSRAM" within the disputed domain name and therefore the Respondent is not able to establish rights or legitimate interests in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensor of the Complainant and is not making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in that the disputed domain name <osram.ae>.
C. Registered or is Being Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
"(ii) the Respondent has registered the disputed 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 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 his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location."
The Panel accepts the arguments of the Complainant that the disputed domain name <osram.ae> was registered and is being used in bad faith as it is used to attract Internet users to a website that contains links to other websites with affiliate marketing for related fields of business. There is no doubt that the Respondent knew or should have known about the Complainant's trademark rights before registering the disputed domain name and that the disputed domain name is in use for affiliate marketing. Such use of the disputed domain name is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's trademark is evidence of bad faith. See, e.g., Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated, WIPO Case No. D2004-0752). Similarly, the registration of a confusingly similar or identical domain name in order to misdirect Internet users or display links to third-party commercial websites, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Hanover Communications Ltd., v. Maison Tropicale, S.A., WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited, WIPO Case No. D2007-0883.
Finally, the Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letter sent by the Complainant's counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that that the disputed domain name <osram.ae> has been registered and used in bad faith by the Respondent.
7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <osram.ae> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: June 11, 2014
1 The Panel finds it appropriate to refer to previous Uniform Domain Name Dispute Resolution Policy ("UDRP") decisions where appropriate, since the UAE DRP is a variation of the UDRP.