The Complainant is OSRAM GmbH (“OSRAM”) of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Abha Verma of Lucknow, India.
The disputed domain name <osrampumps.com> (the “Disputed Domain Name”) is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2015, the Registrar 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2015.
The Center appointed Anders Janson as the sole panelist in this matter on May 14, 2015. 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.
The Complainant’s company name “OSRAM” is protected as a trademark in various countries and regions around the world. The Complainant’s company is a German limited liability company that belongs to the OSRAM group, which was founded in Germany in 1919. The Complainant is an international company, with its headquarters in Munich. OSRAM currently employs more than 43,000 people and supplies customers in about 150 countries, with 46 manufacturing sites in 17 countries. OSRAM is one of the two largest lighting manufacturing companies in the world. The Complainant has registered more than 500 “OSRAM” trademarks and service marks in more than 150 countries and regions. The Complainant also owns over 100 international OSRAM trademarks. The Complainant is the owner of more than 160 domain names based on the denomination “osram”, covering both generic Top Level Domains (“gTLDs”) and country code Top Level Domains (“ccTLDs”).
The Disputed Domain Name was registered on November 28, 2014 and is used to sell pumps branded with the word “osram”.
According to the Policy, Paragraph 4(a)(i) and the Rules, Paragraphs 3(b)(viii), (b)(ix)(1) the Disputed Domain Name is identical or at least confusingly similar to marks owned by the Complainant and the Complainant’s company name. The dominant and distinctive feature of the Disputed Domain Name is the well-known element “osram”. The additional word “pumps” used within the Disputed Domain Name is purely descriptive of the Respondent’s goods.
Due to the extensive international use of the distinctive OSRAM trademarks they have become internationally “well-known”. In several UDRP cases panels confirmed that the name “osram” is a very distinctive identifier of the Complainant and its products. In several other UDRP cases it has been emphasized that the OSRAM marks are world-wide well-known trademarks. The gTLD suffix “.com” is to be disregarded under the confusing similarity test, see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
According to the Policy, Paragraph 4(a)(ii) and the Rules, Paragraph 3(b)(ix)(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. 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 Respondent is also not commonly known by the Disputed Domain Name.
The Respondent is not an authorised 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 Name. Rather, the Respondent is using the Disputed Domain Name for the sale of pumps.
According to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3) the Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name is in use for the sale and advertisement of pumps. The Respondent uses the Disputed Domain Name not for personal noncommercial interests and is trading on the Complainant’s goodwill to attract users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location. There is no other plausible reason why the Complainant’s trademark was chosen for the creation of the Disputed Domain Name.
The Respondent has not attempted to make any bona fide use of the Disputed Domain Name. The registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the respondent, but rather constitutes bad faith under paragraph 4(c) of the Policy (see Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179; Caesars World, Inc. v. Chester Vargas/Latin American Financial Holdings Group, WIPO Case No. D2005-0362). This again proves that the Respondent knows the Complainant well and thus registered the Disputed Domain Name in bad faith (see Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964). Furthermore, 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 name, such as here. See Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051. 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 Name resolves. Here, the Respondent certainly must have knowledge about the worldwide well-known Complainant’s mark OSRAM.
The Respondent did not reply to the Complainant’s contentions.
Given the case file and the Respondent’s failure to file a Response, the Panel accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Name. On the contrary, the Complainant still must establish that it is entitled to a transfer of the Disputed Domain Name under the Policy.
According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have trademark rights to OSRAM with reference to the trademark registrations provided in the annexes to the Complaint.
The Disputed Domain Name is <osrampumps.com> and contains the entire word “osram”, which is the Complainant’s registered trademark. The fact that the Disputed Domain Name also contains the term “pumps” does not diminish the risk of confusion. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.
In this case, the Complainant has offered convincing explanations and enough evidence of its exclusive right concerning the OSRAM trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant’s contentions. The Respondent has therefore failed to rebut the Complainant’s prima facie case.
For completeness, the Panel addresses Policy paragraphs 4(c)(i) and 4(c)(ii) below.
Without the benefit of a Response in this matter, and accepting as true the Complainant’s assertion that its trademark is well-known the world over, the Panel cannot conclude that the Respondent is not simply capitalizing on the Complainant’s world-famous OSRAM mark to sell its pump products. In these circumstances, the Panel cannot conclude that the Respondent’s business is bona fide, as required under Policy paragraph 4(c)(i).
Likewise, on the available record, the Panel cannot conclude that the Respondent is “commonly known” by the Disputed Domain Name. See Policy, paragraph 4(c)(ii).
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) (ii) of the Policy.
The Panel finds that the Complainant’s trademark is well-known, and, further, that it is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark. This Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent uses the website for commercial interests and registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.1 There is no material in the record which displaces this presumption.
The Panel finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) of the Policy.
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, <osrampumps.com> be transferred to the Complainant.
Anders Janson
Sole Panelist
Date: May 28, 2015
1 The Panel recognizes that the use of the Disputed Domain Name to sell goods (pumps) not directly related to the Complainant’s field of business (lighting) may, to some, indicate that the Respondent has not attempted to attract business via confusion as to the source of these goods. However, the Panel accepts that the Complainant’s OSRAM mark is well-known and in the absence of an alternative explanation from the Respondent as to its choice of “osram” for use in its domain name and on its products, the Panel finds as it does above.