OSRAM GmbH v. Toma Ovidiu Florin
Claim Number: FA1308001515177
Complainant is OSRAM GmbH (“Complainant”), represented by Nina Wittich of Hofstetter, Schurack & Partner, Germany. Respondent is Toma Ovidiu Florin (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <osram.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2013; the National Arbitration Forum a hard copy September 9, 2013.
On September 3, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <osram.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 17, 2013, Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”)..
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant uses the OSRAM mark with lighting products. Complainant has memorialized its mark through the Madrid System and has also obtained United States Patent and Trademark Office ("USPTO") trademark registrations for the OSRAM mark (Reg. No. 597,025; registration date not provided in Exhibit 4).
· Respondent has registered the <osram.us> domain name, which merely adds the country-code top-level domain (“ccTLD”) “.us” to the distinctive OSRAM mark.
· Respondent does not hold a trademark to OSRAM.
· Respondent is not known as OSRAM. Complainant is not licensing or authorizing Respondent’s use of the OSRAM mark.
· Respondent has not registered the domain name with a bona fide offering of goods in mind. Respondent’s holding of the domain name is not a legitimate non-commercial or fair use.
· Respondent registered this domain name to make a profit through its resale. Respondent refused to cancel this domain name, and instead requested Complainant to pay €5,000.00.
· Respondent certainly had knowledge about this worldwide well-known OSRAM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the OSRAM mark. Respondent’s domain names are confusingly similar to Complainant’s OSRAM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <osram.us> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant states that it uses the OSRAM mark with lighting products. Complainant states that it has memorialized its mark through the Madrid System and has also obtained USPTO trademark registrations for the OSRAM mark (Reg. No. 597,025; registered October 19, 1954). The Panel agrees that Complainant has Policy ¶ 4(a)(i) rights. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant next states that the <osram.us> domain name merely adds the ccTLD “.us” to the OSRAM mark. The Panel agrees that the addition of “.us” is not relevant to this analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The Panel finds that the <osram.us> domain name is identical to the OSRAM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant states that Respondent is not known as OSRAM. Complainant also claims it is not licensing or authorizing Respondent’s use of the OSRAM mark. The registrant of record for the <osram.us> domain name is “Toma Ovidiu Florin.” The Panel agrees that there is no evidence to find that Respondent is known by this domain name within the meaning of Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent has not engaged in a bona fide offering of goods or legitimate non-commercial or fair use. The evidence in the record indicates that the domain name has been held inactively or as a video game platform. Such uses are neither bona fide under Policy ¶ 4(c)(ii), nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007),
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered this <osram.us> domain name to make a profit through its resale. According to Complainant, Respondent refused to transfer the domain name, and instead requested Complainant to pay €5,000.00. This evidence supports Complainant’s contention that Respondent registered and used the domain name in bad faith. Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003).
Complainant asserts that Respondent had actual knowledge of the well-known OSRAM mark. Due to the unmistakable similarity between the domain name and Complainant’s mark, the Panel agrees that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the UDRP."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <osram.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 10, 2013
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