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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Yuri A Ivanov

Case No. D2009-0692

1. The Parties

The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Skora, Germany.

The Respondent is Yuri A Ivanov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <osram.tel> is registered with ANO Regional Network Information Center dba RU-CENTER.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2009. On May 27, 2009, the Center transmitted by email to ANO Regional Network Information Center a request for registrar verification in connection with the disputed domain name. On May 27, 2009, ANO Regional Network Information Center transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name.

The Respondent sent an email communication to the Center on May 29, 2009 and then again on June 1, 2009 and June 2, 2009 querying the blocking of the domain name by the Registrar. The Center replied to the Respondent on June 2, 2009 informing the Respondent that a Complaint has been submitted and is currently being verified by the Center.

The Center identified a Complaint Deficiency and informed the Complainant of the fact via an email communication on June 5, 2009. The Complaint Deficiency consisted of an error in the Respondent`s name. This was corrected by an amendment from the Complainant of June 10, 2009.

On June 10, 2009, the Complainant sent an email communication to the Center requesting the proceedings to be in English. As supporting documentation in Annex 1, previous correspondence between the Complainant and the Respondent was provided, which consisted of the Respondent`s reply to the Complainant in English.

The Respondent replied to the Center on June 15, 2009, in Russian, requesting the language of the proceedings to be Russian as that is the language of the Registration Agreement.

The Complainant replied on June 17, 2009, requesting for the communications in Russian language from the Respondent to be disregarded as the language of the proceedings was English. The Respondent replied again to the Center on June 18, 2009, with a request for the proceedings to be in Russian, alongside other questions, both in Russian and with an automated English translation. This was followed by the previous email of June 15, 2009, with an automated English translation.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint both in English and Russian, and the proceedings commenced on June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was set for July 14, 2009.

The Respondent filed a Response on July 13, 2009. The Center acknowledged the receipt of the Response on July 14, 2009.

The Complainant filed supplemental remarks concerning the disputed domain name on August 5, 2009.

The Center appointed Dr. Irina V. Savelieva as the sole panelist in this matter on August 13, 2009. 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. Factual Background

The Complainant, OSRAM was founded in Germany in 1919 and since then has been known by the name "OSRAM". The Complainant is recognized as one of the two largest lighting manufacturing companies in the world. The Complainant supplies customers in about 150 countries and has 49 manufacturing sites in 19 countries around the world.

The Complainant has traded under the name "OSRAM" since its foundation and the first trademark registration for the OSRAM brand was on April 17, 1906 and was for "electrical incandescent and arc lamps". Currently the Complainant has more than 500 OSRAM trademarks registered around the world. The Complainant also owns 116 international OSRAM trademarks. The Complainant is also an owner of OSRAM trademarks in the Russian Federation.

The Complainant also owns the <osram.com> domain name, which is used as its main website for providing information to its customers.

The Respondent, Yuri A Ivanov has registered the disputed domain name <osram.tel> on March 24, 2009. The disputed domain name <osram.tel> is currently used as a holding page. There is no information on the page.

5. Parties` Contentions

A. Complainant

(a) The disputed domain name <osram.tel> is confusingly similar to and incorporates the marks owned by the Complainant:

- The Complainant is known as "OSRAM" and the Complainant owns a broad range of trademarks, which incorporate the mark OSRAM. This is reflected in more than 141 domain names that the Complainant owns that incorporate the OSRAM trademark.

- In previous UDRP cases the panels have confirmed that the trademark OSRAM is a very distinctive identifier of the Complainant and its products.

- The disputed domain name <osram.tel> incorporates the OSRAM trademark, which is central to the Complainant`s trademarks.

(b) The Respondent has no rights or legitimate interests in the domain name:

- The Respondent is not a holder of a trademark OSRAM.

- The Respondent does not use the trademarks OSRAM and the disputed domain name <osram.tel> in connection with any offering of its own goods or services.

- The Respondent is not an authorized dealer, distributor or licensor of the Complainant.

(c) The Respondent registered and is using the domain name in bad faith:

- The Complainant contacted the Respondent, informing him about Complainant`s trademark rights as well as requiring cancellation of the disputed domain name <osram.tel>. The Respondent refused to do so.

- The Respondent is not an official dealer of OSRAM products and has never contacted the Complainant on matters of cooperation. The Respondent has no interest in using the domain name for promotion of OSRAM products. The Respondent has knowledge about the Complainant.

- Bad faith can be found when disputed domain name is virtually identical to the well-known Complainant`s registered trademark OSRAM.

- The Respondent has not attempted to make any bona fide use of the disputed domain name <osram.tel>. The current used of the disputed domain name <osram.tel> constitutes of domain parking.

- The disputed domain name <osram.tel> is used in a way that can lead to confusion and Internet users could be misled in thinking the site is at least sponsored by the Complainant.

(d) The language of the proceedings should be English:

- The Respondent has previously communicated with the Complainant in English.

B. Respondent

(a) The disputed domain name <osram.tel> is confusingly similar to and incorporates the marks owned by the Complainant:

- The Respondent does not dispute the OSRAM trademarks or their validity.

(b) The Respondent has no rights or legitimate interests in the domain name:

- The Complainant has not provided sufficient evidence under this paragraph 4(a) (ii) of the Rules.

- There is no registered trademark "osram.tel", only trademark OSRAM.

(c) The Respondent registered and is using the domain name in bad faith:

- The Complainant has not provided sufficient evidence under this paragraph 4a (iii) of the Rules.

- The Respondent has registered the domain name for future noncommercial use. The registration was made during the free period of registration after the special registration period for owners of trademarks.

- The domain names with suffix ".tel" are intended to be used for storing contact information for both legal and physical entities. Provision of contact information for a physical person cannot constitute commercial use and cannot lead to infringement of any rights of legal entities.

- The Respondent is no using the disputed domain name and is prepared to provide contact information on the disputed domain name for OSRAM GmbH on a gratuitous basis in order to prove lack of "bad intentions".

(d) The language of the proceedings should be Russian:

- According with paragraph 11(a) of the Rules the language of the proceedings should be the language of the registration agreement, which is Russian.

6. Discussion and Findings

The Complainant must prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Language of Proceedings

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.3 states as follows:

Consensus view: The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise.

Relevant decisions:

Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247 <telsra.com>, Transfer Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251 among others, Denied, Transfer in part Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668, Transfer.

However: In certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.

Relevant decisions:

L`Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585, Transfer

Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, Transfer.

The Panel notes that the default language of proceedings is Russian as confirmed by the registrar. The Panel decides, however, that the language of the proceedings should be English. The Panel notes that the Center has issued its communications both in English and in Russian during these proceedings. Furthermore, the Panel finds that the Respondent has sufficient command of English to participate to these proceedings as demonstrated by previous communication by the Respondent to the Complainant in English.

A. Identical or Confusingly Similar

The Complainant has registered the trademark OSRAM around the world, including in the Russian Federation. The Complainant submits that the disputed domain name <osram.tel> is identical or confusingly similar to the trademark OSRAM as the domain name incorporates the whole of the trademark, this being a registered trademark.

The Panel finds that the Complainant has registered the original trademark OSRAM in 1906. This was followed by subsequent trademark registrations.

The Panel finds that the Complainant has proved rights in a registered trademark OSRAM.

The Panel finds that the disputed domain name is identical to the Complainant`s trademark OSRAM (except for the top-level domain ".tel" which can be disregarded in the comparison between the disputed domain name and the trademark. Previous UDRP decisions have established this rule.) The Panel agrees with the Complainant`s arguments that the disputed domain name may be directly associated in the minds of the consumers with the Complainant`s trademarks.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

The Panel infers the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds on the record that the Complainant has made a prima facie showing of the Respondent`s lack of rights or legitimate interests to the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent`s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) 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 complainant`s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. The Panel finds that in his Response the Respondent failed to demonstrate any rights or legitimate interests in the disputed domain name.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Neither does the Panel find evidence that the Respondent was preparing to use the disputed domain name for a legitimate offering of goods and services.

Thus, the Panel finds that the Respondent`s use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.

Secondly, in relation to paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

Thirdly, the Panel recalls that the Respondent registered the disputed domain name on March 24, 2009 (Annex 1 to the Complaint). The Complainant asserts that the trademark OSRAM has been in use since at least 1964. Its trademark is internationally well-known and has been the subject of numerous UDRP proceedings.

The Panel believes that the Respondent knew about the Complainant`s trademark at the time of registration of the disputed domain name.

Accordingly, regarding these facts, it is the Panel`s view that the Respondent most likely registered the disputed domain name with awareness of the Complainant`s products and trademarks as well as goodwill associated with them. The Panel does not find the Respondent`s arguments convincing on its intent to register the domain name for future noncommercial use. The Respondent submits that the domain names with suffix ".tel" are intended to be used for storing contact information for both legal and physical entities and that he is prepared to display Complainant`s information on the website at the disputed domain name to prove his lack of "bad intentions". However, the Panel notes that the Policy, paragraph 4(c)(ii), in this respect refers to actual ongoing activities by referring to "you [Respondent] are making a noncommercial or fair use of the domain name", here the disputed domain name is not used. The Panel further notes that the Respondent has not come forward with any proof of its alleged intentions. The Panel notes that the Respondent has not asserted, let alone submitted proof, that the domain name would be used for any other entity called "Osram".

Based on the above, the Panel finds that the Respondent failed to demonstrate any rights or legitimate interests to the domain name.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered for вАШholding` purposes and has not been used for bona fide offering of goods and services. The Response equally does not demonstrate any intention of the Respondent to do so in future.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainant`s products and should have been aware of the trademarks of the Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The Panel finds that the Respondent`s argument that by not using the disputed domain name he is not violating the Complainant`s trademarks is not in line with the UDRP precedents. The Panel finds in favor of the Complainant`s position that bad faith is demonstrated by the fact that the disputed domain name is not used for personal interest or for the presentation of products or activity (see Veuve Clicqout Pansardin, Maison Fondée en 1772 v. The Polygenix group Co. WIPO Case No. D2000-0163.

The fact that the Respondent`s use of the disputed domain name has created a likelihood of confusion with the Complainant`s products and trademarks under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still being used in bad faith.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <osram.tel> be transferred to the Complainant.


Irina V. Savelieva
Sole Panelist

Dated: September 4, 2009

 

»сточник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0692.html

 

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