The Complainant is Osram GmbH of München, Germany, represented by Hofstetter, Schurack & Skora Patent und Rechtsanwälte, Germany.
The Respondent is Hui Cong of Beijing, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2011. On February 16, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On February 17, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details. On February 21, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On February 23, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint satisfies 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, and the proceeding commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 20, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on March 21, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 29, 2011. 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 A. The Complainant
The Complainant is a lighting manufacturing company incorporated in Germany and the owner of more than 500 registrations covering over 150 countries and regions worldwide for the trade mark OSRAM (the “Trade Mark”), including in China, where the Respondent is based. B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on September 7, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is an international company, with its headquarters in Munich, Germany. The Complainant belongs to the Osram group which was founded in Germany in 1919. The Osram group employs currently more than 38,000 people and supplies customers in about 150 countries. It manufactures at 49 sites in 19 countries. The Complainant is one of the two largest lighting manufacturing companies in the world and is well-known around the world.
The Complainant has traded under the Trade Mark since it was founded. The first registration for the Trade Mark dates back to 1906.
The Complainant is the owner of more than 160 domain names comprising the Trade Mark, including gTLDs and ccTLDs.
Due to its extensive international use, the Trade Mark has become internationally well-known and there have been several prior UDRP decisions in which the Trade Mark has been recognised as a distinctive identifier of the Complainant and its products.
The dominant and distinctive feature of the disputed domain name is the word “Osram”. The only difference between the disputed domain name and the Trade Mark is the adjunction of the term “geo”. The suffix “geo” is taken from the Greek word “γη” or “γαια” meaning "earth". The term “geo” which means “the whole world, worldwide” is solely descriptive. This additional element is not therefore sufficient to avoid the confusing similarity.
The Respondent is not:
(1) The holder of any trade mark registrations in respect of the Trade Mark or any similar trade mark;
(2) Using the disputed domain name in connection with a bona fide offering of goods or services;
(3) An authorised dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant;
(4) Making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith.
The Respondent uses the disputed domain name to present lighting products under the company name “Beijing Shi Guang Ya Lighting Equipment Co., Ltd”, via the website to which the disputed domain name is resolved (the “Website”). Such use amounts to use of the disputed domain name to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complaint has been submitted in the global language English;
(2) The disputed domain name was registered in ASCII characters using the Roman alphabet instead of Chinese characters. The generic top level domain “.com” was chosen by the Respondent instead of a country code top level domain such as “.cn”. Users of “.com” top level domains usually speak and understand English;
(3) All of the Complainant’s efforts to contact the Respondent failed;
(4) It would be difficult and cost-intensive for the Complainant to translate all of its submissions into English and take part in the proceeding in Chinese;
(5) In accordance with prior UDRP decisions where the Respondent did not file a Response, the language of the proceeding should be English, in particular for financial and time reasons.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
Although the Website appears to be entirely in Chinese language, the Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). Had the Respondent filed cogent submissions to the contrary, the Panel might have been willing to order that the proceeding be conducted in Chinese, or alternatively in both Chinese and English.
The Panel is however particularly mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner, especially given the Respondent’s failure to file a Response and failure to file any submissions with respect to the language of the proceeding.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names may be found identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The Panel finds that the addition of the generic suffix “geo”, meaning “the earth”, does not serve to distinguish the disputed domain name from the Trade Mark.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint has fulfilled the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many decades. The Complainant has therefore shown a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, it is clear that the disputed domain name has been used to attract Internet users to the Website, which appears to be operated by a competitor of the Complainant based in China and manufacturing and offering for sale lighting products in direct competition with the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website and the products offered by the Respondent on the Website.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel also considers that, in the circumstances of this case, the failure of the Respondent to file a Response further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. 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 be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: April 7, 2011
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