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WIPO Arbitration and Mediation Center

 

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 Kцnig 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.

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Albert Agustinoy Guilayn
Sole Panelist

Dated: October 5, 2005