The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is WhoisGuard, Inc., Panama, / Osram Co. Ltd, Osram Co., Ltd., Japan.
The disputed domain name <osram.移动> [osram.xn--6frz82g] (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 November 30, 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 December 21, 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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on February 4, 2021. 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 the operating company of Osram Licht AG, a lighting manufacturer employing over 23,500 people in 120 countries. Its annual revenue in 2019 was EUR 3.5 billion. The Complainant has been continually using its OSRAM trade mark (“OSRAM Mark” or “the Trade Mark”) for more than 110 years and has more than 500 trade mark registrations in 150 countries, including German registration number DE86924 (registered on April 17, 1906) and Japanese registration number 488742 (registered on January 30, 1997), the country where the Respondent is located. The OSRAM Mark’s worldwide notoriety has been recognised by previous UDRP panels. In Japan, the OSRAM Mark is cited as a well-known trade mark in a legal textbook titled “Famous Trademarks in Japan”. The Complainant also owns at least 640 domain names based on the OSRAM Mark, including <osram.com> and <osram.jp>.
The Domain Name was registered on September 23, 2020, and resolves to a copycat website of the Complainant’s International home page.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
- the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Name comprises the Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case are the Chinese characters “.移动” which means mobile or moving. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that 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 appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
None of the above apply in these circumstances. The Complainant has not authorised, licensed or permitted the Respondent to either register or use the Domain Name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark, a world famous mark, which precede the Respondent’s registration of the Domain Name.
The Complainant is not aware of any evidence, which demonstrates that the Respondent is commonly known by a name corresponding to the Domain Name nor has it applied to register or owns any registrations of the Domain Name as a trade mark, trade name or company name. The Trade Mark being an invented word has no other significance other than being obviously connected to the Complainant. The Respondent has not made any 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, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the worldwide fame and notoriety of the Trade Mark and the fact that the Domain Name comprises the Complainant’s Trade Mark in its entirety. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website resolves to a copy of the Complainant’s International homepage with no explanation as to how it is connected to the Complainant. The Complainant does not even allow its authorised licensees to register domain names containing the OSRAM Mark. The domain names of the Complainant are all hosted with the same service provider and controlled by the Complainant. The registration and use of the Domain Name by the Respondent gives rise to a perceived authorisation, endorsement or some other connection with the Complainant when none exists. The fact that the Complainant and the Trade Mark are well-known is further evidence that it is highly likely that web users when typing the Domain Name into their browsers or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark in its entirety in the Domain Name. The Respondent employs the fame of the Trade Mark to mislead users into visiting its website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <osram.移动> [osram.xn--6frz82g] be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: February 25, 2021