The Complainant is OSRAM GmbH., Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Anh Ho, Viet Nam.
The disputed domain name <osam.cloud> (the “Domain Name”) is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2020 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 August 5, 2020.
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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 11, 2020. 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 is a German limited liability company headquartered in München, Germany, a part of the
the OSRAM Licht Group, which was founded in Germany in 1919. The group currently employs approximately 23,500 people and has operations in over 120 countries. The Complainant is a leading manufacturer of light bulbs and LED lamps, which are advertised and distributed throughout the world, holding more than 100 registered OSRAM trademarks internationally, including the following:
MARK | JURISDICTION | REGISTRATION NUMBER | REGISTRATION DATE |
|
OSRAM (word) |
International Registration (including designation for Viet Nam) |
325028 |
November 7, 1966 |
|
OSRAM (Latin and Chinese characters) |
International Registration (including designation for Viet Nam) |
666039 |
November 12, 1996 |
|
OSRAM (figurative) |
European Union |
002297398 |
November 18, 2002 |
The Complainant holds numerous domain names incorporating the OSRAM mark that are used in its business or to redirect Internet visitors to its websites in various languages. These domain names include <osram.com>, <osram-group.com>, <osram.de>, <osram.co.uk>, <osram.us>, <osram.eu>, <osram-latam.com>, <osram.jp>, <osram.biz>, and <osram.org>. The Complainant also maintains OSRAM-branded social media pages on Facebook, Twitter, and YouTube.
Numerous previous WIPO UDRP panels have found that the Complainant’s OSRAM trademark is internationally well known, such as OSRAM GmbH v. shen duo wu, WIPO Case No. D2019-0684. The Complaint attaches evidence that the Hanoi Market Surveillance Department has supported a claim defending the Complainant’s OSRAM mark in Viet Nam, imposing sanctions against the importer of goods marked “Osam”, the same string used for the Domain Name in this proceeding.
The Registrar reports that the Domain Name was created on March 2, 2020 and is registered in the name of the Respondent Anh Ho of Viet Nam, with no organization listed.
The Domain Name redirects to a website at “www.osam.io” in the country code Top-Level Domain (“ccTLD”) for the British Indian Ocean Territory. The website features a figurative logo that is not similar to any of the Complainant’s logos. The website advertises the services of OSAM International Company Limited of Hanoi, Viet Nam, with offices in Hanoi and Ho Chi Minh City and also in Singapore and Japan (the “Respondent’s website”). The website consists of multiple pages, in English and Vietnamese versions, advertising the Respondent’s cloud computing services including consulting, systems optimization, migration, and managed services, featuring case studies from a list of more than 200 clients. The site includes a staff recruiting page and provides the BRC (business registration certificate) number for the company, issued by the Hanoi City Department of Planning and Investment on January 6, 2017. The website links to social media pages on Facebook, YouTube, and LinkedIn and displays logos showing that the Respondent is an AWS advanced consulting partner, a Google Cloud Platform Partner, and a Microsoft Partner. The Panel notes that the Respondent does appear in the online listing of the AWS Online Partner Network as an “advanced consulting partner” with “20+ AWS customer launches”. The Panel notes as well that the Respondent appears in numerous English-language and Vietnamese media stories and information technology industry directories in Viet Nam and Southeast Asia before the registration of the Domain Name, referring to the Respondent as founded in 2017 and as an innovator in cloud services. The Respondent’s website includes an “Events” page that shows the Respondent’s staff participating in Vietnamese industry and community events, which are also advertised in local media.
The Complainant asserts that the Domain Name is “identical or at least confusingly similar” to its OSRAM trademark and represents an instance of typosquatting. The Complainant states that the Respondent is not an authorized dealer and further that 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 […] [th]e Respondent is also not commonly known by the disputed domain name.”
The Complainant contends that the Respondent has acted in bad faith because the Complainant’s mark is famous and is used for “similar services”. The Complainant’s argument is that the Respondent advertises cloud services, while the Complainant, among other things, “provides digital infrastructure for buildings and network solutions for connected and smart street and industry lighting”. The Complainant asserts that “the Respondent trades on the Complainant’s reputation and goodwill to generate traffic to his website.” According to the Complainant, the “Respondent’s choice of the disputed domain name, which is identical to the well-known Complainant’s registered trademark ‘OSRAM’, clearly indicates bad faith intent to register and use of the disputed domain name. Apart from the above, the Respondent has not attempted to make any bona fide use of the disputed domain name. [...] 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 practically using the Complainant’s trademark color and stylization knows about the worldwide well-known Complainant’s trademarks ‘OSRAM’.”
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[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”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name is not identical to the Complainant’s OSRAM mark, as the Complainant asserts, but it differs from the Complainant’s word mark by a single letter. As such, it is sufficiently close to be considered confusingly similar for purposes of this element of the Policy. The generic Top-Level Domain (“gTLD”) “.cloud” “is viewed as a standard registration requirement” and is normally disregarded under the first element of the Policy. WIPO Overview 3.0, section 1.11.2.
The Panel concludes, therefore, that the first element of the Complaint has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated its trademark rights and a lack of permission for the Respondent to use the Complainant’s mark in the Domain Name.
The Respondent has not come forward to assert rights or legitimate interests in the Domain Name, but such interests are evident from a review of the Respondent’s website associated with the Domain Name. The Complainant asserts that the Respondent is not commonly known by the Domain Name and “has not attempted to make any bona fide use of the disputed domain name”. To the contrary, the website to which the Domain Name redirects appears to be the fully developed website of a company with a corresponding name that has been in existence since 2017, for which there is supporting evidence on several third-party media sites and directories. The Panel could set aside this evidence of prior use in connection with a bona fide offering of goods or services only if persuaded that the business itself was a sham, or its name was chosen to exploit the Complainant’s well-known trademark. The Complainant’s arguments on this point are best dealt with in the following section, on bad faith.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant suggests that this example is relevant, stating that “the Respondent trades on the Complainant’s reputation and goodwill to generate traffic to his website” and concluding, “[i]t 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.” While it is likely that the Respondent was aware of the OSRAM brand of lightbulbs and related products, the Complainant overreaches by trying to characterize its smart lighting products as competing in the Respondent’s market for cloud computing consultancy services based on AWS or Google hosting. Moreover, the Complainant suggests that the Respondent deliberately used a logo with color and style similar to the Complainant’s, but the Panel finds the comparison unpersuasive. The Complainant’s logo most often appears on its website in orange on white in this form:
The Respondent’s logo, by contrast, uses highly stylized letters in yellow on black in this form:
As noted in the factual discussion above, the Respondent’s website reflects a registered and fully functioning consultancy business operating since 2017 with a website at “www.osam.io”. The Domain Name is a relevant addition to the Respondent’s domain name portfolio, as its gTLD “.cloud” is pertinent to the cloud services business in which the Respondent is engaged. The Respondent advertises consulting to assist clients in using AWS-hosted cloud services, and the Respondent is indeed listed as a partner by AWS since 2017. The Respondent appears in multiple media articles and directories, consistent with the story told on the Respondent’s website. On the face of it, there is nothing on the Respondent’s website that mentions the Complainant or competes with its business. There is simply an unrelated business with a name that differs from the Complainant’s mark by one letter. On this record, the Panel does not find persuasive evidence to support the Complainant’s inference that the Respondent chose the name of its business and the corresponding Domain Name in an attempt to misdirect Internet users for commercial gain.
The Panel concludes, therefore, that the Complaint fails on the third element, bad faith, and, based on the same facts, concludes that the Complaint fails as well on the second element.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: September 16, 2020