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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Bapak Benny, Oscar Tunastama

Case No. D2018-1298

1. The Parties

The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Bapak Benny, Oscar Tunastama of Jakarta Barat, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <osramindonesia.com> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2018, 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 June 20, 2018.

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 June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Center received informal email communications from the Respondent on July 1, 2018 and July 9, 2018. The Respondent did not submit any formal response. On July 14, 2018, the Center notified the Parties that the Center will proceed to Panel Appointment.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 3, 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 part of the Osram Licht group, a multi-national light manufacturer with headquarters in Munich and founded in Germany in 1919. The Complainant is the operative company of Osram Licht AG, which has currently approximately 26,000 employees and operates in over 120 countries. In 2017, the Osram group generated a revenue of around EUR 4.1 billion, with 35% of its sales made in the Asian/Pacific region.

The Complainant is the owner of more than 500 OSRAM trademarks registered worldwide, the first of which dates back to 1906.

The OSRAM trademark has been considered well known by various national Courts and Trademark Offices, and in numerous previous UDRP decisions.

The disputed domain name was registered on November 1, 2016 and is being used to promote the sale of lighting products.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or at least confusingly similar to the Complainant's OSRAM trademarks because it entirely reproduces the OSRAM trademark followed by a geographical term, which lacks distinctive character.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name because, to the best of the Complainant's knowledge, the Respondent does not own any OSRAM trademark, is not commonly known by the disputed domain name and is not an authorized dealer, distributor or licensor of, or has other relationship with, the Complainant.

Finally, the Respondent has not registered the disputed domain name in connection with a bona fide intent, and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to attract Internet users to its own website, where it sells, among others, also the Complainant's products and those of its licensee Ledvance GmbH.

Finally, the Complainant contends that the trademark OSRAM is a well-known trademark and that the Respondent knew or should have known the Complainant's trademark at the time of the registration of the disputed domain name. Furthermore, according to the Complainant, the Respondent has registered the disputed domain name primarily for the purposes of paragraph 4(b)(iii) and (iv) of the Policy, as the disputed domain name has been used for acquiring traffic to the Respondent's website.

B. Respondent

The Respondent's email communications mentioned above refer to its willingness to sell the disputed domain name to the Complainant. The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has provided sufficient evidence of ownership of OSRAM trademarks registered in several countries worldwide before the date of registration of the disputed domain name and designating goods and services in several classes, including lighting apparatus in class 11.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark since the trademark OSRAM is fully reproduced in the disputed domain name and is followed by the geographical term, "Indonesia".

Therefore, the Panel finds that the first condition under the Policy is met.

B. Rights or Legitimate Interests

The second condition to be proved in order to succeed in a UDRP proceeding, is that the Respondent lacks rights or legitimate interests in the disputed domain name.

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.

The Complainant contends that the Respondent is not an authorized dealer, distributor or licensor of the Complainant, and that there is no other relationship between the Respondent and the Complainant. Furthermore, the Respondent does not appear to own any OSRAM trademark, nor is the Respondent commonly known by the disputed domain name.

The Complainant has provided one screenshot of the Respondent's website, where it appears that the disputed domain name is being used to sell the Complainant's goods.

According to paragraph 10 of the Rules, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assess the case merits and reach a decision. In this case, the Panel has deemed appropriate to evaluate more in detail the website connected to the disputed domain name. The Panel has so found that the disputed domain name resolves to a website offering for sale only the Complainant's goods.

Previous panels have established that under certain conditions a reseller of the complainant's goods may own rights or legitimate interests in the disputed domain name. The Panel should therefore examine whether, in the instant case, all requirements outlined in the Oki Data case are present (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In particular:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and

(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark.

In the instant case, the Panel notes that the Respondent's website does not include any indication as to its connection (or lack of connection) with the Complainant. Moreover, the website "www.osramindonesia.com" contains a link to another website operated by the Respondent, which is "www.oscartunastama.com", where it appears that the Respondent sells devices related to electrical apparatus, such as switchers, inverters, sockets, alarms, dimmers, etc., manufactured by third parties, as well as lights manufactured by the Respondent. Therefore the situation is one where the Respondent, who is also the Complainant's competitor, is taking unfair advantage of the distinctive character and reputation of the Complainant's trademark for its own benefit by creating an inexistent association of the Respondent's website with, or endorsement by, the Complainant.

In view of the above, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

According to section 2.5.1 of the WIPO Overview 3.0, the registration of a domain name consisting of a trademark plus a geographic term is seen as tending to suggest sponsorship or endorsement by the trademark owner.

The Respondent had the opportunity to clarify its position by filing a Response, but failed to do so. As a consequence, the Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the second condition under the Policy is met.

C. Registered and Used in Bad Faith

The Complainant maintains that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent knew or should have known the Complainant's trademark, and because the Respondent is using the disputed domain name to attract Internet users to its online location for commercial gain.

In the Panel's view, the fact that the Respondent knew the Complainant's trademark at the time of the registration of the disputed domain name is undisputable. The trademark OSRAM is a well-known and distinctive trademark. OSRAM is also a coined term. The Respondent is active in the lighting field, which is the same field where the Complainant operates. The Respondent is using the disputed domain name to access a website offering for sale the Complainant's goods. Therefore, it is certainly not by accident that the Respondent reproduced the Complainant's trademark in the disputed domain name. Rather, the Respondent had very well in mind the Complainant's trademark and targeted the Complainant when it registered the disputed domain name.

Moreover, the Respondent registered a disputed domain name, which is very misleading as it reproduces the Complainant's well-known trademark OSRAM, followed by a geographical name. Therefore, Internet users searching for the Complainant in Indonesia will easily mistakenly believe that the disputed domain name belongs to the Complainant, or to one of its authorized dealers.

The Respondent does not clearly state in its website that it has no relationship with the Complainant. Moreover, the website contains a link to another website operated by the Respondent, which offers for sale goods in competition with those of the Complainant, manufactured by the Respondent itself.

In view of the foregoing, the Panel concludes that the Respondent has registered and is using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

Thus the Panel finds that also the third condition under the Policy is met.

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 name <osramindonesia.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: August 15, 2018

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