WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Privacydotlink Customer 3069957, 3069958, 3069959, 3069960 / Paul David Song
Case No. D2017-2307
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Privacydotlink Customer 3069957, 3069958, 3069959, 3069960 of Seven Mile Beach Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Paul David Song of Seoul, Republic of Korea.
2. The Domain Names and Registrars
The disputed domain names <bosram.com>, <eosram.com>, <gosram.com> and <iosram.com> (the “Disputed Domain Names”) are registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 14, 2017. The Complainant filed a second amendment to the Complaint on December 21, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2018. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on January 16, 2018.
The Center received several email communications sent by the Respondent on January 16, 17, 18, 19, and 29, 2018 and February 1, 2018.
After the commencement of the proceedings, the Complainant filed several amendments to the Complaint, successively on January 11, 22, and 30, 2018, requesting the addition of domain names to the proceedings, as discussed in more detail below.
In order to explore a possible settlement, the Complainant requested a 30 day suspension of the proceedings on January 23, 2018. The Center suspended the proceedings on January 23, 2018. The Complainant notified the Center that settlement negotiations between the Parties had failed and requested immediate reinstitution of the proceedings on January 30, 2018. The Center notified the reinstitution of the proceedings and that it will proceed to panel appointment on January 31, 2018.
The Center appointed John Swinson as the sole panelist in this matter on February 1, 2018. 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 OSRAM GmbH, the German operative company of OSRAM Licht AG, an international lighting manufacturer headquartered in Munich, Germany. According to the Complaint, until recently, OSRAM Licht AG was one of the three largest lighting manufacturing companies in the world. In 2016, the Complainant’s expansion into the Asia Pacific market has resulted in its contribution to 32 per cent of the Complainant’s sales worldwide.
According to the Complaint, the Complainant owns more than 500 trade marks incorporating the term “osram” in over 150 jurisdictions, including German trade mark number 86924 for OSRAM (the “Trade Mark”) which was registered on April 17, 1906. The Complainant also owns international trade mark number 774581 for the following device mark which was registered on November 13, 2001 and designates numerous countries including the Republic of Korea:
According to the Complaint, the Complainant also owns over 640 domain names incorporating the Trade Mark including <osram.com> and <osram.kr> which were registered on March 25, 1999 and May 1, 2008 respectively.
The Respondent is Paul David Song, an individual of the Republic of Korea and registered owner of the Disputed Domain Names. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Disputed Domain Names were registered on August 29, 2017. At the time the Complaint was filed, the Disputed Domain Names each pointed to almost identical websites offering the respective Disputed Domain Name for sale and what appeared to be an online shop selling a variety of goods including electronic products and toys. At each of the websites, services relating to website hosting and design, domain name consulting and “WIPO Consulting” were also advertised in association with other domain names such as <coo10.com>, <1domain.com> and <atpo.com>.
At the time of this decision, the Disputed Domain Names point to identical websites which feature the heading “CMOS RAM” and information, Facebook posts and news articles seemingly related to the technical terms “Complementary Metal-Oxide-Semiconductor” (“CMOS”) and/or “Random Access Memory” (“RAM”).
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Names are identical or at least confusingly similar to the Trade Mark and the Complainant’s company name.
The letters “b”, “e”, “g” and “i” in the respective Disputed Domain Names are to be regarded as insufficient to prevent Internet user confusion. These additional letters in the Disputed Domain Names are meaningless and can be seen as typing errors.
The Disputed Domain Names contain the Trade Mark which stands out and leads the public to think that the Disputed Domain Names are somehow connected to the Complainant as the owner of the Trade Mark.
The Top-Level Domain “.com” is to be disregarded under the confusing similarity test.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Respondent is not the holder of any relevant trade marks and has no rights or legitimate interests in the name “OSRAM”. The Respondent is also not commonly known by the Disputed Domain Names.
The Respondent has not registered the Disputed Domain Names in connection with a bona fide intent as the Respondent is not a licensee of the Complainant with regard to rights in the Trade Mark or rights to register the Disputed Domain Names. The Respondent is also not commonly known by the Disputed Domain Names. The Respondent is not an authorised dealer, distributor or licensor of the Complainant, and is not otherwise associated with the Complainant.
Further, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
Finally, the Respondent does not explain on the websites associated with the Disputed Domain Names that it is not related to the Complainant.
Registration and Use in Bad Faith
The Trade Mark is a famous trade mark of the Complainant. The Respondent’s choice in registering the Disputed Domain Names, which are virtually identical to the Trade Mark, clearly indicates bad faith intent.
The registration of a domain name incorporating another’s famous trade mark does not confer any rights or legitimate interests in the Disputed Domain Names, but rather constitutes bad faith. The Respondent knows the Complainant well and therefore registered the Disputed Domain Names in bad faith.
The Respondent has not attempted to make any bona fide use of the Disputed Domain Names. The Respondent does not use the Disputed Domain Names for personal noncommercial interests. The Disputed Domain Names are used in relation to an online shop.
The Respondent’s sole purpose is to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of its websites and products on its website. There is no other plausible reason why the Trade Mark was chosen for the creation of the Disputed Domain Names.
Further, bad faith exists where there can be no question that the Respondent knew or should have known about the Complainant’s rights in the Trade Mark before registering the Disputed Domain Names. The Respondent certainly had knowledge about the worldwide and well-known Trade Mark.
It is obvious that the Trade Mark is being used by the Respondent to attract potential buyers to the websites to which the Disputed Domain Names resolve.
B. Respondent
The Respondent did not formally reply to the Complainant’s contentions but sent informal communications as discussed below under section 6.A.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
Requests to Add Additional Domain Names to the Proceedings
After the commencement of the proceedings, the Complainant filed several amendments to the Complaint, successively on January 11, 22, and 30, 2018, to add five additional domain names to the proceedings. The additional domain names are <kosram.com>, <cosram.com>, <nanosram.com>, <cmosram.com> and <mosram.com> (the “Additional Domain Names”).
It is up to the Panel to determine whether or not to accept requests to add domain names to the Complaint after the Respondent has been notified and the proceedings have formally commenced (see section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Previous panels have been reluctant to accept such requests unless there is clear evidence of the respondent gaming or attempts to frustrate the proceedings. The Panel finds that the Complainant has failed to provide such evidence and in fact, the Complainant in all but the last of its unsolicited amendments to the Complaint, made a request to add the Additional Domain Names without providing any justification for why the request should be granted.
Although the Panel acknowledges that the Complainant has relevant trade mark rights corresponding to the Additional Domain Names, the Panel rejects the Complainant’s requests to add the Additional Domain Names to the proceedings on the basis that granting the requests would be unfair to the Respondent given that all requests were on or after the due date for the Response and inconsistent with the Panel’s duty to ensure the Parties are treated with equality (see paragraph 10 of the Rules and discussion on the same procedural issue in Confédération nationale du Crédit Mutuel v. iPage, WIPO Case No. D2013-1574, Apple Inc. v. Private Whois Service, WIPO Case No. D2011-0929 and Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547).
The unfairness to the Respondent in granting the Complainant’s requests would only be remedied by giving the Respondent a fair opportunity to present his case in respect of the Additional Domain Names. However, this would have the undesirable effect of further delaying the proceedings and the Panel’s decision.
In declining the Complainant’s request, the Panel notes that Complainant is not prevented from filing a separate complaint where the Additional Domain Names may be addressed (see section 4.12.2 of WIPO Overview 3.0).
Informal Response
On January 16, 2018, following receipt of notification of the Respondent’s default, the Respondent sent informal email communications to the Center. The Respondent sent further email communications to the Center on January 17, 18, 19, and 29, 2018 and February 1, 2018.
In these email communications, among other things, the Respondent requested for the language of the proceedings to be Korean, stated that the Center incorrectly calculated due dates and claimed not to understand “this system environment of WIPO”. These communications do not constitute a formal Response under the Policy as these communications were sent after the due date for Response and were not appropriately signed. In any case, these communications do not address the elements of the Policy.
The Panel has not taken these communications into account in reaching its decision. Even if it did, these communications would not change the Panel’s decision.
Consideration of Statements in Settlement Discussions
The proceedings were suspended on January 23, 2018 to allow the Parties to explore a possible settlement and were reinstituted on January 31, 2018.
During the suspension period, the Respondent sent a number of email communications to the Complainant which copied in the Center on January 29 and 30, 2018.
In these communications, the Respondent states that the Respondent did not know anything about the Complainant until the Complaint was filed, and that the Respondent is interested in market research and recruitment and argues that the Disputed Domain Names refer to common acronyms for terms such as “Random Access Memory” (“RAM”) and “Synchronous Random Access Memory” (“SRAM”).
These communications from the Respondent also include an email signature which indicates the Respondent’s connection to the domain name <wipoconsulting.com>. The website at this domain name demonstrates that the Respondent is not only capable of understanding and responding in the language of the proceedings, English, but is familiar with the UDRP framework, the Policy and the Rules.
The Panel views these email communications as part of the settlement discussions between the Parties to be “admissible” insofar as they are relevant to assessing the Parties’ respective motivations (see section 3.10 of WIPO Overview 3.0).
The Panel notes that these email communications to the Complainant also failed to address the elements of the Policy.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
The Disputed Domain Names wholly incorporate the Trade Mark. The addition of the letters “b”, “e”, “g” and “i” to the respective Disputed Domain Name and the generic Top-Level Domain “.com” do not prevent a finding of confusing similarity, as the Trade Mark is recognisable within the Disputed Domain Names (see sections 1.7 and 1.8 of WIPO Overview 3.0).
The Panel finds that the Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or the Trade Mark, or has registered or common law trade mark rights in a name or trade mark which is similar to the Trade Mark.
- As discussed below in relation to the third element of the Policy, the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The online shop and various advertisements available at each of the websites associated with the Disputed Domain Names at the time the Complaint was filed appeared to be for commercial gain.
Even if the Panel were to accept that the Respondent registered the Disputed Domain Names because of its correspondence to particular acronyms, this does not by itself automatically confer rights or legitimate interests on the Respondent. In order to find rights or legitimate interests in each Disputed Domain Name comprising of an acronym, the Respondent is required to provide evidence supporting its explanation for its registration and use of the Disputed Domain Names which should indicate a credible and legitimate intent which does not capitalise on the reputation and goodwill inherent in the Trade Mark (see section 2.10.2 of WIPO Overview 3.0). The Respondent had the opportunity to provide such evidence, but did not do so.
In any case, the Panel finds that the Respondent’s proffered acronyms which apparently correspond to the Disputed Domain Names are either uncommon or incorrect. For example, the Respondent claims that <bosram.com> corresponds with “Bio Optical Synchronous Random Access Memory”. However, Internet searches of this term and similar search terms such as “Bio Optical SRAM” reveal that this is not a commonly used technical term and in fact, SRAM refers to “Static Random Access Memory”, not “Synchronous Random Access Memory”.
It is clear from the Respondent’s email communications to the Center and the Complainant that he was aware of the Complainant and is familiar with the UDRP process, however he still did not file a Response. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Names in bad faith.
The Complainant has held registered rights in the Trade Mark since April 17, 1906. The Trade Mark is a well-known and established brand in the Complainant’s industry.
The Disputed Domain Names were registered on August 29, 2017.
Previous panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein).
The Panel finds that, on balance, the Respondent likely knew of the Complainant’s rights in the Trade Mark, sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Names because of this reputation.
The Panel also finds that the Respondent’s use of the Disputed Domain Names was previously and is currently a form of passive holding. While passive holding of domain names does not always result in a finding of bad faith use, the Panel considers that in the circumstances, such a finding is appropriate for the following reasons:
- It is more likely than not that the Respondent was aware of the Complainant at the time he registered the Disputed Domain Names. The Panel has found that the Disputed Domain Names were registered in bad faith.
- The Respondent was previously offering the Disputed Domain Names for sale.
- The Respondent has failed to file a Response or provide substantial evidence of good faith use of the Disputed Domain Names.
- At the time the Complaint was filed, the websites associated with the Disputed Domain Names were the same but with different domain names. The website was an online shop that was not connected with the respective Disputed Domain Name. The website also offered the respective Disputed Domain Name for sale and featured advertisements for the Respondent’s website hosting and design services as well as consulting services in relation to domain names and domain name disputes administered by the Center. In these circumstances, the Panel finds that the Respondent’s use of the Disputed Domain Names was not bona fide.
- The Respondent changed the websites associated with the Disputed Domain Names following notification of the Complaint without providing evidence to support his claims in relation to registration and use of domain names comprising acronyms. The Panel considers that the Respondent’s familiarity and knowledge of the Policy and Rules is such that he would be aware of the potential rights or legitimate interests in a domain name comprising a common acronym. The Panel reasonably considers that the Respondent changed the websites to which the Disputed Domain Names resolve in an effort to establish legitimacy in his use of the Disputed Domain Names by giving the impression that the respective acronym is the basis for his registration and use of the Disputed Domain Names.
In these circumstances, the Respondent’s registration of the Disputed Domain Names using a privacy service and failure to file a Response also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay in Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).
Further, the Panel considers that by registering a series of domain names, the Respondent has engaged in a pattern of conduct of registering domain names to prevent owners of trade marks from reflecting their trade marks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
In light of the above, and the Respondent’s failure to provide evidence to the contrary, the Panel finds that the Complainant has succeeded on the third element of the Policy.
7. Decision
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 Names <bosram.com>, <eosram.com>, <gosram.com> and <iosram.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: February 15, 2018