ADMINISTRATIVE PANEL DECISION
OSRAM GmbH, v. web4COMM SRL Romania
Case No. DRO2005-0004
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,
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
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,
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
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
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
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
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 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.
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
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
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
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.
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
Dated: October 5, 2005