Osram.ro Decizie - WIPO Arbitration and Mediation Center

 

1. The Parties

The complainant is OSRAM GmbH, Munich, Germany, represented by König

Szynka von Renesse, Germany (hereinafter, the “Complainant”).

The Respondent is web4COMM SRL Romania, Bucharest, Romania, represented by

Lia Pardau’s Lawyers Cabinet, Romania (hereinafter, the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name is <osram.ro> (hereinafter, the “Domain Name”)

and it was registered with Romanian National R&D Center (hereinafter,

“RNC.ro”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center

(hereinafter, the “Center”) on July 7, 2005. On the same date, the Center

transmitted by email to RNC.ro a request for registrar verification in

connection with the Domain Name at issue. On August 8, 2005, RNC.ro

transmitted by email to the Center its verification response confirming

that the Respondent was listed as the registrant and providing the contact

details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the

“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy

(hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (hereinafter, the “Supplemental

Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center

formally notified the Respondent of the Complaint, and the proceedings

commenced on August 11, 2005. In accordance with the Rules, paragraph

5(a), the due date for Response was August 31, 2005. The Response was

filed with the Center on August 12, 2005.

On August 19, 2005, the Complainant filed electronically a supplemental

filing (hereinafter, the “Supplemental Filing”) before the Center. The

paper version of such filing was received by the Center on August 22,

2005.

The Center appointed Mr. Albert Agustinoy Guilayn (hereinafter, the

“Panel”) as the sole panelist in this matter on September 21, 2005. 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. Language of the Proceeding

The Complainant filed the Complaint in English, indicating that this is

one of the languages used by NSR.ro for providing the registration

agreement applying to “.RO” domain names. The Respondent has not opposed

to the use of such language in this proceeding and it has filed the

Response in English as well.

Taking into account the above-mentioned facts, and in accordance with

paragraph 11 of the Rules, the Panel has decided to use English as the

language for this proceeding.

 

5. Factual Background

The Complainant is the parent company of the OSRAM corporate group and a

wholly owned subsidiary of Siemens AG. It was founded in Germany in 1919

and currently owns and manages 57 companies and numerous manufacture and

distribution facilities located in 18 countries. The Complainant supplies

its products in more than 140 countries around the world and globally

employs more than 35,000 people.

The Complainant has traded under the name “OSRAM” since its foundation,

having become the most relevant of its trademarks. As a matter of fact,

the Complainant has registered more than 500 “OSRAM” trademarks and

service marks in over 140 countries. Moreover, Complainant owns 77

international “OSRAM” trademarks which are effective in Romania. Among

others, the following ones may be identified:

- International trademark no. 325 028, filed on November 7, 1966;

- International trademark no. 501 480, filed on January 1, 1986;

- International trademark no. 567 593, filed on February 15, 1991;

- International trademark no. 676 932, filed on April 16, 1997;

- International trademark no. 774 581, filed on November 13, 2001.

The said international trademarks are registered under classes 1, 4, 6, 7,

9, 10, 11, 12, 14, 17, 21, 25, 28, 35, 37 and 42 of the International

Nomenclator, covering a wide variety of products (electric, photographical

and optical apparatus and instruments, lamps, lighters, laser diodes,

etc.) and services (building, repair and installation services,

construction of lighting installations, computer programming, etc.).

Due to the extensive international use of its “OSRAM” trademarks they have

become internationally “well-known”, having provided the Complainant

numerous evidences of such a notoriety.

The Complainant is also the owner of more than 40 domain names based on

the denomination “OSRAM”, covering both generic (gTLDs) and country-code

top level domain names (ccTLDs).

The Respondent is a Romanian company which main activity seems to be the

development of software applications as well as the design of websites. No

additional information on the Respondent, neither on the registration of

the Domain Name, has been provided by it.

Nonetheless, the Complainant has filed evidences showing that the

Respondent is the registrant of other domain names corresponding to

third-parties’ trademarks (specially to German companies). At this regard,

the Panel has been able to verify that the Respondent has registered and

owns, inter alia, the following domain names: <wrigley.ro>, <chrysler.ro>,

<thebodyshop.ro>, <rexona.ro>, <gerling.ro>, <hypovereinsbank.ro> or

<salamander.ro>.

All these domain names are directed to the same website of the Domain Name

which displays an “under construction” message –written in Romanian -

combined with a banner from a company named Netfirms which apparently

provides the Respondent with free hosting services.

In addition, the Panel has been able to find out that the Respondent has

been previously involved in four proceedings under the Policy. Indeed, the

Respondent was involved in Praktiker AG v. Web4COMM SRL Romania, WIPO Case

No. DRO2003-0001 (being the disputed related to the domain name

<prakitker.ro>); Auchan v. Web4COMM SRL Romania, WIPO Case No.

DRO2005-0001 (being the disputed domain name <auchan.ro>) and Beiersdorf

AG v. Web4COMM SRL Romania, WIPO Case No. DRO2005-0002 (being the disputed

domain names <beiersdorf.ro> and <nivea.ro>) and Accord v. Catalin

Alexandra Tibulca/ Web4COMM SRL Romania, WIPO Case No. DRO2005-0003 (being

the disputed domain name <novotel.ro>). In all those cases, the appointed

Panels ordered the transfer of the disputed domain names from Web4COMM SRL

Romania to the corresponding complainants.

The Domain Name was registered on February 12, 2000, and, since its

registration, it has not been used in any way apart from the described

above.

On February 7, 2003, the Complainant contacted the Respondent, informing

it about its trademark rights as well as requiring the transmission of the

Domain Name. According to the Complaint, the Respondent informally replied

it by offering the transfer of the Domain Name jointly with the provision

of several technical services. In consideration for the said transfer and

services, the Respondent requested € 5,000 from the Complainant, which did

not accept such an offer. Given this result, and pursuant to the rules

issued by RNC.ro in connection with “.RO” domain names, Complainant did

file a complaint before RNC.ro in order to hold a mediation meeting for

solving the dispute. RNC.ro called the parties to attend such meeting on

November 28, 2003 and on December 8, 2003. In both cases, Respondent

refused to attend. In consequence, the Complainant filed the Complaint

before the Center, starting the present proceeding.

 

6. Parties’ Contentions

A. Complainant

The Complainant contends in the Complaint that:

- The Domain Name is identical with the “OSRAM” trademarks on which it has

rights, as the only difference between them and the Domain Name is that

the latest includes the suffix “.RO”. According to the Complainant, such a

difference is not relevant since it is derived from a technical need

derived from the specific configuration of the Domain Name System;

- The Respondent has no rights or legitimate interests on respect of the

Domain Name. At this regard, the Complainant states that the Respondent is

not known under the name “OSRAM” or any similar term. Moreover, a fair and

legitimate non-commercial use is not made since the Domain Name is

inactive and its registration only seeks to create the false and

misleading impression that Respondent is somehow endorsed or authorized by

the Complainant;

- The Respondent was aware of the Complainant’s trademarks, as they are

well-known due to the extensive international use, including Romania, made

by the Complainant and specially to the activities the Complainant

develops in the Romanian territory (where the Respondent seems to be

seated). The recurrent registration of domain names corresponding to

third-parties’ trademarks (particularly from German companies) is another

element that leads the Complainant to believe that the Respondent was

aware of the existence of the “OSRAM” trademark;

- The Respondent registered and uses the Domain Name in bad faith as the

Respondent offered it for sale jointly with the provision of technical

services for an aggregate price of € 5,000. Additionally, the Respondent

has been engaged in a pattern of conduct that clearly reflects its bad

faith as it has registered numerous domain names corresponding to third

parties’ trademarks on which it has no rights. Such an impression is

reinforced by the fact that the Respondent is a recurring offender of the

Policy, as it has been forced to transfer domain names in four proceedings

developed under the Policy.

As indicated in the Factual Background, the Complainant filed a

Supplemental Filing, rebating some of the arguments included in the

Response. According to the criteria set out in the Rules as well as in

previous decisions adopted under the Policy (see, for example, The Channel

Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; World

Wrestling Federation Entertainment, Inc. (WWFE) v. M. de Rooij, WIPO Case

No. D2000-0290; or National Australia Bank Limited v. Quality Systems

Consulting – QSC Pty. Ltd., WIPO Case No. D2000-0765), the eventual

evaluation of unsolicited supplemental filings exclusively depends on the

discretion of the Panel.

It is the Panel’s view that such materials should only be taken into

account in case they introduce new elements which may have a potential

impact in the decision to be adopted. In this case, the Panel does not

consider that the arguments included in the Supplemental Filing are

relevant enough to be considered in this proceeding and, therefore, shall

not analyze them.

B. Respondent

The Respondent contends in the Response that this proceeding constitutes a

clear breach of its rights, as it has never accepted a “compromisory”

clause as foreseen by Article 1 of WIPO’s Center’s Mediation Rules (sic).

In this sense, the Respondent indicates that it has never accepted a set

of rules which it should obey in connection with the registration and use

of “.RO” domain names. On the other hand, it considers that no

“compromisory” convention can be enforced against it as the Respondent has

had no contractual relationship at all with the Complainant.

 

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must

prove to the Panel that the following three circumstances in order to

obtain the transfer of the Domain Name:

(A) that the Domain Name is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights; and

(B) that the Respondent does not hold rights or legitimate interests in

respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the

Respondent in bad faith.

Consequently, the Panel shall further analyze the concurrence or not of

the above-mentioned circumstances in the present case. Nonetheless, before

entering in the said analysis, the Panel deems necessary to analyze a

previous issue raised by the Respondent in connection with the

applicability of the Policy to this dispute.

Applicability of the Policy to the present Dispute

Before analyzing the eventual fulfillment in this case of the conditions

foreseen by the Policy, it is necessary to examine the argument filed by

the Respondent against the application of such policy to this kind of

disputes. The Respondent’s representative considers that the Panel should

not be competent for deciding on this dispute as the decisions from the

Center “defies (sic) international arbitration practices” and constitute

“a flagrant violation of my client’s rights”.

In order to sustain its allegations, the Respondent indicates that

“between us and the Complainant there is no “Compromisory Clause” [as]

stipulated on Art. 1 of the WIPO Center’s Mediation Rules”. At this

respect, the Panel assumes that the Respondent is actually referring to

WIPO’s Arbitration Rules since Article 1 of WIPO’s Mediation Rules does

not contain any provision relating to arbitration.

Under the Panel’s view, the Respondent is clearly wrong when filing the

above-mentioned argument. In this sense, paragraph 6 of the “.RO” domain

names registration agreement (available at

http://www.rnc.ro/new/agreement.html) clearly states as follows: “DOMAIN

NAME DISPUTES. You agree that, if the registration or reservation of your

domain name is challenged by a third party, you will be subject to the

Dispute Policy in effect at the time of the dispute”. At this respect, the

dispute policy for the “.RO” ccTLD Registry (available at

http://www.rnc.ro/new/Dispute-Resolution-Policy.html) clearly states:

“When a mutual resolution is not successful, the complaint is the subject

of the Uniform Domain Name Dispute Resolution Policy endorsed and approved

by ICANN (Internet Corporation for Assigned Names and Numbers)”.

Acceptance of these legal tests is required in order to register this type

of domain names. In case they are not accepted, the registration procedure

cannot be completed and, consequently, the domain name cannot be

effectively registered.

Taking into account the above, there are no doubts that the Respondent

accepted the Policy when it registered the Domain Name. At this respect,

the Panel aims at indicating additionally that, in disputes relating to

“.RO” domain names, the WIPO Center’s Mediation Rules alleged by the

Respondent should not apply, since they have been adopted for other

controversies not specifically relating to domain names.

Having said this, the Panel considers that the argument filed at this

respect by the Respondent responds to a strategy aimed at confusing the

Panel when deciding on the dispute. Such a conclusion was already reached

in previous decisions where the Respondent was involved as such (see

decisions Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No.

DRO2005-0002 or Accor v. Catalin Alexandra Tibulca/Web4Comm SRL Romania,

WIPO Case No. DRO2005-0003).

In particular, the Panel considers that the following statement made in

decision of WIPO Case No. DRO2005-0002, Beiersdorf AG v. Web4comm Srl

Romania is fully applicable to the present case: “It is the Complainant’s

discretion to select the administrative dispute resolution provider from

among those approved by ICANN (paragraph 4(d) of the Policy). The Center

is one of those providers. Further, the Respondent is obviously familiar

with the Policy and the proceedings (see Praktiker AG v. web4COMM SRL

Romania, WIPO Case No. DRO2003-0001) and the Panel therefore concludes

that the jurisdiction objection is merely filed in bad faith in an attempt

top confuse the Panel and avoid filing a substantial reply to the

allegations made by the Complainant”.

Having exposed these arguments, the Panel finds that the Policy is indeed

applicable to this dispute and that the Panel was properly constituted.

Consequently, there are no legal obstacles to analyze the above-described

elements required by the Policy and issue a decision regarding the Domain

Name.

A. Identical or Confusingly Similar

The first element required by the Policy is that the Domain Name and the

“OSRAM” trademarks are identical or confusingly similar.

In the present case, the only difference between them is the inclusion of

the “.RO” suffix in the Domain Name.

Nevertheless, said difference is derived from the current technical

structure of the Domain Names System (DNS) and, consequently, it should

not be considered as a relevant difference between the Domain Name and the

Complainant’s trademarks. Many decisions adopted under the Policy have

adopted such an approach (see, in general, New York Insurance Company v.

Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark,

Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v.

Party Night, WIPO Case No. D2003-0172; and specifically in connection with

“.RO” domain names, Auchan v. Web4comm Srl Romania, WIPO Case No.

DRO2005-0001; Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No.

DRO2005-0002; or Accor v. Catalin Alexandra Tibulca/Web4Comm SRL Romania,

WIPO Case No. DRO2005-0003).

Therefore, the Panel considers that the Domain Name is identical to the

Complainant’s “OSRAM” trademarks and, consequently, that the Complainant

has met the first requirement foreseen by the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Respondent does not

hold rights or legitimate interests on the disputed domain names. At this

regard, paragraph 4(c) of the Policy foresees a set of circumstances where

the Respondent may be considered as holding said rights or interests.

Those circumstances are:

- To have used the disputed domain name or to have made demonstrable

preparations for its use before any notice of the dispute in connection

with a bona fide offering of goods and services; or

- To have been commonly known by the disputed domain name, even when no

trademark or service mark right has been acquired; or

- To make a legitimate non-commercial or fair use of the disputed domain

name, without intent for commercial gain to misleadingly divert consumers

or to tarnish the trademark or service mark at issue.

In the present case, none of the above-mentioned circumstances applies.

Actually, in appearance, neither the Respondent has been commonly known by

the name “OSRAM” nor it is developing a “legitimate non-commercial”

activity by means of the Domain Name. In the same sense, it has certainly

not been authorized by the Complainant to register the Domain Name nor to

use it anyhow.

Thus, it is quite unlikely that a “coincidence” has been given in the

present case. On the contrary, it seems that the Respondent was clearly

aware of the existence of the Complainant’s trademarks when registering

the Domain Name and did not register it for other purposes than to hold

the Complainant’s trademark in said domain name without being entitled to

do so by the Complainant.

As stated above, the Panel considers implausible that the Respondent holds

legitimate rights or aims at developing fair activities by means of the

Domain Name when there is no active website linked to it but a simple

webpage indicating that the website is still under construction.

Unfortunately, the Respondent has not provided with any argument at this

respect. As a matter of fact, the Respondent has not shown any interest in

opposing the allegations made by the Complainant against it. Therefore,

the Panel considers that the Respondent does not hold rights or legitimate

interests on the disputed domain names and that the second condition set

out by the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by paragraph 4(a) of the Policy is that

the Complainant proves that the Respondent has registered and uses the

disputed domain name in bad faith.

In regards of this issue, it is important to remind that both conditions

are cumulative, as stated in many decisions adopted under the Policy

(World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO

Case No. D1999-0001 or Robert Given Bogen, WIPO Case No. D2000-0001, for

example).

As it has been previously stated, the Respondent is neither linked nor

associated at all with the Complainant’s “OSRAM” trademarks. At this

regard, it is important to remind the fact that the Complainant has

provided evidences showing that the Respondent owned or still owns

numerous domain names corresponding to third-parties’ trademarks without

being entitled to do so. Hence, the Respondent has behaved in accordance

to a “pattern of conduct” which may prove as registration and use in bad

faith in accordance with paragraph 4 (b)(ii) of the Policy (See, for

example, NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No.

D2000-0128, Julian Barnes v. Old Barn Studios Limited, WIPO Case No.

D2001-0121 or Revlon Consumer Products Corporation v. Domain Manager,

PageUp Communications, WIPO Case No. D2003-0602).

The likely explanation for the registration of the disputed domain name by

the Respondent is that it was aiming at benefiting from the Complainant’s

trademarks in order to unfairly benefit from the reputation of the said

trademarks. Since the Respondent has not denied these facts in the

Response, it seems clear that the Respondent registered and used the

Domain Name in bad faith. The fact of having been condemned four times

under the Policy for identical reasons reinforces this approach.

Additionally, the lack of activity of the website linked to the Domain

Name should not change this impression, since inaction may fall within the

concept of bad faith foreseen by paragraph 4(b) of the Policy. In this

case, like in the other proceeding where the Respondent has been involved,

the lack of use of the Domain Name constitutes a clue of the Respondent’s

bad faith if it is analyzed with the circumstances applying to the present

case previously described in this decision. Many decisions adopted under

the Policy confirm this approach (see, for example, Telstra Corporation

Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and more

particularly in connection with the Respondent Praktiker AG v. web4COMM

SRL Romania, WIPO Case No. DRO2003-0001; Auchan v. Web4COMM SRL Romania,

WIPO Case No. DRO2005-0001; Beiersdorf AG v. Web4COMM SRL Romania, WIPO

Case No. DRO2005-0002; or Accor v. Catalin Alexandra Tibulca/Web4comm SRL

Romania, WIPO Case No. DRO2005-0003).

Consequently, the Panel finds that it has been proved that the Respondent

registered and has used the Domain Name in bad faith and does not consider

necessary to analyze any other argument filed by the Complainant in

connection with the Respondent’s bad faith.

8. Decision

For all 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.ro> be transferred to the Complainant.

Albert Agustinoy Guilayn
Sole Panelist

Dated: October 5, 2005