The Complainant is Osram AG of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is James Liang of San Jose, California, United States of America.
The disputed domain names <osramar111.com>, <osramhighpower.com>, <osrammr16.com> and <osramrgbled.com> are registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 3, 2012, 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 August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2012.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 11, 2012. 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 disputed domain names were created on January 19, 2012.
The Complainant is the second largest manufacturer of lighting products in the world and has through itself and its predecessors in title used the trademark OSRAM since 1906. It manufacturers products in seventeen countries worldwide and supplies customers under the OSRAM trademark in over 150 countries. It owns more than 500 national, regional and international trademark registrations for the OSRAM trademark dating, in the case of Germany, from as early as 1906. The OSRAM trademark has been recognized as a well-known or famous trademark in several countries of the world. It has featured in several legal and technical publications and has been recognized as a well-known mark in eleven prior decisions under the Policy, see for example, Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083.
The website at the disputed domain names each advertises lighting products, including products designated as nr16 LED and ar111 and each provides, prominently, a link to the website of Aeon Lighting Tech Inc, at <aeonlighting.com>. Aeon Lighting Tech Inc is a Taiwan company which produces and markets LED based lighting products in competition with the Complainant, and on its website, lists the Respondent as the CEO of the company.
On May 24, 2012 the Complainant’s lawyers sent a letter of demand to Aeon Lighting Tech Inc demanding cessation of use and cancellation of the disputed domain names. No reply was received to that demand nor to a subsequent reminder.
The Complainant contends that:
- each of the disputed domain names comprises the Complainant’s famous OSRAM trademark with the addition, respectively, of the descriptive designations “ar111”, “highpower”, “mr16” and “rgbled”;
- the descriptive suffixes do not distinguish the disputed domain from the OSRAM trademark;
- the Complainant’s OSRAM trademark is world famous and must have been well-known to the Respondent when he registered the disputed domain names. The use of the disputed domain names by the Respondent’s company to promote products directly competitive with those of the Complainant is not a use of the disputed domain names which could be considered a bona fide offering of goods or services;
- the Respondent is not an authorized dealer, distributor or licensee of the Complainant; is not authorized or affiliated with the Complainant and is not making a legitimate noncommercial or fair use of the disputed domain names;
- the Respondent uses the disputed domain names in order to attract, for commercial gain Internet users to the website of the Respondent or his company by creating the likelihood of confusion with the Complainant’s name and trademark.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has amply demonstrated that it is the owner of the widely-known OSRAM trademark. The disputed domain names differ from that trademark only by the addition of descriptive suffixes to the trademark which do not distinguish in the opinion of the Panel the respective disputed domain names from the Complainant’s trademark.
The Panel therefore finds that each of the disputed domain names is confusingly similar to the Complainant’s OSRAM trademark.
On the evidence provided by the Complainant and the website at Aeon Lighting Tech Inc to which the disputed domain names are each linked, the Respondent’s use of the disputed domain names is not use in connection with the bona fide offering of goods or services. It is an infringing use which is not authorized by the Complainant, and there is no evidence or any other basis upon which the Respondent could claim to have a right or legitimate interest in the disputed domain names. The Respondent had an opportunity to rebut the Complainant’s allegations and prima facie case but it did not do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
As noted above, the Complainant’s trademark is widely-known. It is well-known not only to persons in the lighting industry but also to consumers. The Respondent, an officer of a competitor of the Complainant must have known at the time of creation of the disputed domain names that they would be likely to be confused with the Complainant’s well-known mark. The Respondent or his company has subsequently used each of the disputed domain names to promote the sale of the company’s products and to link to the company’s website offering lighting products in direct competition with the Complainant. Such conduct clearly falls within the ambit of paragraph 4(b)(iv) of the Policy and constitutes registration and use of each of the disputed domain names in bad faith.
The Panel therefore finds that each of the disputed domain names has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <osramar111.com>, <osramhighpower.com>, <osrammr16.com> and <osramrgbled.com> be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: September 18, 2012