O FOR AN OSRAM. ZERO FOR THE RESULT
OSRAM GmbH. v. Anh Ho WIPO Case No. D2020-1998 September 16, 2020
When a UDRP Respondent does not make any submissions, it might look as if the scales tip in favour of the Complainant. Some people would ask: how can a Complaint fails if the Respondent does not even defend it? Just watch.
The Panel must still consider whether the Complainant’s allegations are proved on the balance of probabilities. Sometimes, even although the case is undefended, the Respondent loses, because the panelist decides that the Complainant has not proved its case. Take this example.
In OSRAM GmbH. v. Anh Ho the Panel was able to reach the conclusion that Anh Ho had legitimate rights or interests in the <osam.cloud> domain name by looking at his website. This was despite the fact that the domain name looked perilously close to being a deliberate copy of Osram’s OSRAM trademark. Anh did not make any submissions to the panel but came out on top because the contents of his website evidenced a genuine commercial use of the domain name – in this case, offering cloud computing services. So, without lifting a finger, Anh won.
Looking at this as a standalone case, you may think that developing a sufficiently convincing website is all that a respondent need to do in order to get away with using a domain name in whatever way it likes, even in an abusive way. But fortunately, Panels are free to take a holistic view of circumstances and reject that sort of evidence of an offering of services if persuaded that the business itself was a sham, or if the domain name name was chosen to exploit the Complainant’s well-known trademark. Just look at Osrom. It had internationally recognised trademarks for OSRAM, which the Panel concluded would have been known to Anh Ho. But on balance, the panelist still held that there was no sham at play and that OSRAM’s allegation that Anh was trading on their goodwill to redirect traffic was probably not correct.
This was also in part because OSRAM and Anh Ho did not compete in the same industry. OSRAM provided ‘smart lighting’ for streets including a digital infrastructure and network solutions. It is notable that merely because both parties make some use of cloud networks, they are not necessarily competing in the cloud computing industry. There is not a bright line around what it means to compete in business or even to be in the same industry. It is on questions like these that Panels will turn to the balance of probabilities.
For Respondents, it seems that if you are making a genuine commercial use of your domain name and you are not competing with the Complainant in any way, you might be saved by your own website. But that might be a bit risky. Of course, it is best not to leave these things to chance. Anh Ho may not have been so lucky if his website was not fully developed or if the parties did in fact have competing service offerings unbeknown to Anh.
So, you should either know very well who you are competing with,or reply to allegations against you – however far-fetched they seem.
A QUESTION FOR YOU. If you acted for Osram and you guessed, correctly, that Anh would probably use the defence that he was conducting a legitimate business with the domain name, what sort of evidence would you try to gather to counteract that argument? And how would you go about collecting it?