WIPO Domain Name Decision: D2008-1033

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Texas International Property Associates - NA NA

Case No. D2008-1033

1. The Parties

The Complainant is OSRAM GmbH, Munich, Germany, represented by Patent und Rechtsanwälte Hofstetter, Schurack & Skora, Germany.

The Respondent is Texas International Property Associates - NA NA, Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <osram-opto.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 9, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 10, 2008, Compana LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Response was filed with the Center on August 10, 2008.

The Center appointed Lone Prehn as the sole panelist in this matter on August 15, 2008. 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 is a German company registered under the name Osram GmbH. It is the owner of more than 500 trademarks consisting of or containing the mark OSRAM in over 150 countries and regions, including:

IR 321818, registered on September 26, 1966;

IR 501480, registered on January 1, 1986;

IR 567593, registered on February 15, 1991;

IR 614357, registered on February 23, 1994;

IR 676932, registered on April 16, 1997;

IR 774581, registered on November 13, 2001;

Reg. Nos. 597025, 1552573, 2981387, 2299183, 1745674, 1552573, and 0597025 in the United States of America.

The Complainant belongs to the OSRAM group of companies which was founded in Germany in 1919. The OSRAM group today employs more than 38,000 people and supplies customers in about 150 countries with opto-electronic components and modules. It develops and produces LED systems for a wide range of applications.

The Complainant is the owner of more than 141 domain names with the denomination “Osram”. The notoriety of the trademark OSRAM has been established in e.g., Osram GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004 and Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083.

The Respondent registered the domain name on December 6, 2005. The domain name is active and resolves to a website showing a portal page with various links.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name at issue is confusingly similar to the Complainant’s company name Osram (GmbH) and trademark OSRAM and that the element “opto” is a constituent part of the company name of the Complainant’s wholly owned subsidary Osram Opto Semiconductors GmbH as well as a commonly used term in the electronics business used as an abbreviation of optoelectronics.

Further, the Respondent has not been authorized in any way to use the Complainant’s mark and has no rights or legitimate interests in respect of the domain name at issue. The Respondent is using the domain name as a parking site to generate pay-per-click revenue, and the user is confused as to the sponsorship of the site. Further, the Respondent registered and is using the domain name at issue in bad faith, and several adverse UDRP decisions have been issued against the Respondent. Finally, the Complainant alleges that the Respondent uses the site to link directly to competitors of the Complainant and that the Respondent had to have knowledge of the Complainant’s mark.

B. Respondent

Without admitting to any of the elements of bad faith under the policy, the Respondent filed a Response in which it consented to transfer the domain name to the Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

Preliminary Comment

Given that the Respondent filed no substantive response and relied instead on its offer to transfer the domain name, the Panel is required to first decide whether to consider the merits and, if so, to assess the evidence and submissions filed by the parties. In the absence of any dispute as to the accuracy and correctness of that information, the Panel must decide this proceeding largely on the basis of the Complainant’s undisputed representations and draw such inferences as it considers appropriate.

Offer to Transfer

The Respondent’s Response suggests that the Respondent has no interest in the domain name, and it has consented to its immediate transfer.

The Panel may find that, in a circumstance such as this, where a respondent has unequivocally consented to the transfer of the disputed domain name, it should forego the traditional UDRP analysis and order the immediate transfer of the domain name. See Boehringer Ingelheim International GmbH v. Modern Limited – Cayman Web Development, NAF Case No. 133625 (January 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer).

The Panel may alternately find that, the efficacy of such consent notwithstanding, there may nevertheless be circumstances in which it is appropriate to proceed to and record its consideration of the case on its merits under the three elements. See e.g., Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190; and also Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which the Panel discusses further below.

Having said this, the Panel is faced with the Complainant’s assertion that the alleged “consent to transfer” was never offered by the Respondent and that the Respondent was never willing to transfer the domain name until now, and the Panel should look at the wider merits of the situation. For the reasons set out more fully below, principally under the “Bad Faith” ground, the Panel is of the view that the wider merits do need to be considered in this particular case.

The elements of Paragraph 4(a) of the Policy are now considered:

A. Identical or Confusingly Similar

Having confirmed the notoriety and status of the OSRAM mark and the Complainant’s use of the element “opto” in the company name Osram Opto Semiconductors GmbH as well as use of the term “opto” in its business, the Panel finds that the disputed domain name <osram-opto.com> is confusingly similar to the Complainant’s trademark OSRAM.

The Panel believes that the Respondent has intentionally used the combination of the Complainant’s trademark and company name in order to attract the flow of Internet users enabling the Respondent accordingly to increase the traffic to its website at “www.osram-opto.com” and derive more revenues as a result – a practice known as “typosquatting” which has been clearly condemned in various panelists’ decisions.

B. Rights or Legitimate Interests

The Complainant contends that the domain name resolves to a website that provides a search service categorized as “Osram”, “Osram Opto”, “Led Bulb” etc. Use of the search service results in the display of various “sponsored links” to third party websites.

The Panel concludes that the domain name is being used as a means of diverting Internet customers with an interest in the Complainant and its business. In those circumstances it is difficult to see how the Respondent’s conduct could be characterized as legitimate. The business model of registering widely-known trademarks and names as domain names and deriving revenue from “click through” business is well-known and needs no elaboration. This seems to be what the Respondent is doing and, in the absence of any explanation or denial, it is found that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

As noted above, it is submitted that the Respondent’s conduct should be interpreted as an intention to keep diverted customers on its website, pretending in bad faith to be the Complainant’s website or that of its German subsidiary.

The Complainant contends that the Respondent has previously been the subject of or otherwise involved in adverse decisions for the transfer of disputed domain names. Likewise, it appears that a pattern of involvement in registering widely-known trademarks or names as domain names exists. It is well established that both conduct leading to a likelihood of consumers being misled and a pattern of dubious (i.e., illegitimate) domain name registrations may be indicative of bad faith.

More specifically, the Complainant alleges that the Respondent is a known cyber-squatter and that UDRP decisions involving the Respondent have specifically discussed the Respondent’s bad faith registration of domain names. Reliance is placed on the decision in United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987, where the Panel lists dozens of cases in which the Respondent has been ordered to transfer its registrations.

This raises a material issue. By consenting to a transfer of the domain name, as it now has, the Respondent might be able to avoid possible adverse findings and comments.

In Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the Panelist, in dealing with the same respondent, stated

“Finally, Respondent’s actions during the pendency of this case further indicate bad faith. On September 20, 2007, Respondent filed a Response stating that it was willing to transfer the Domain Name. The WIPO proceedings were then suspended so that the parties could pursue settlement. However, for reasons that are not clear from the record, a settlement was not reached. Thus, Respondent’s alleged offer to transfer the Domain Name resulted in a delay in the proceedings, during which time Respondent’s website continued to be active and hence to generate revenues for the Respondent”.

The factual situation in the Brownells case has a familiar ring to it. In Brownells, the Panelist then went on to note that

“If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent’s failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants”.

The Panel agrees with these comments and observes that, in cases of this type, it would be contrary to the spirit of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and, thereby, minimize the risk of adverse findings/comments. That is particularly true where that party appears to have done the same previously and where the purpose of the step appears to be to attempt to circumvent the Policy. In the instant case, the Panel infers that the purpose of this strategy is not only to delay the inevitable (as found in Brownells) but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct.

The Panel thus has no difficulty in concluding that the third element of the Policy has been met.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <osram-opto.com> be transferred to the Complainant.

Lone Prehn
Sole Panelist

Dated: August 21, 2008