The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanwälte, Germany.
The Respondent is wuguoying of Shenzhen, Guangdong Province, 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 May 13, 2011. On May 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 May 17, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 18, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 19, 2011, the Complainant submitted a 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 verified that 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 in both Chinese and English the Respondent of the Complaint, and the proceedings commenced on May 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2011.
The Center received email communications from the Respondent between May 25, 2011 and May 27, 2011, which indicated the Respondent would like to “give up” the disputed domain name. On May 30, 2011, the Complainant submitted a request of suspending the current proceeding. On the same day, the Center notified the parties of the suspension of the administrative proceeding. The suspension has been extended twice to July 29, 2011.
On July 27, 2011, the Complainant requested to reinstitute the current proceeding. On the same day, the Center confirmed the reinstitution of the proceeding. The Response due date was accordingly extended to August 10, 2011. The Respondent did not file any formal Response.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 16, 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
The Complainant is a German limited liability company that belongs to the Osram group, which was founded in Germany in 1919.
The Complainant is one of the two largest lighting manufacturing companies in the world. The Complainant markets its products under the name "Osram".
The Complainant currently employs more than 38,000 people and supplies customers in about 150 countries.
The Complainant is the owner of numerous trademark registrations, which consist of the mark OSRAM, around the world. For example: United States of America trademark registration No. 0597025– OSRAM (logo), with the registration date of October 19, 1954; International trademark registration No. 321818 – OSRAM, designated among others for Austria and France, with the registration date of September 26, 1966; International trademark registration No. 567593 – OSRAM, designated among others for China, Japan and Russian Federation, with the registration date of February 2, 1991, and many more.
The Complainant also developed its presence on the Internet and is the owner of some 160 domain names, which contain the mark OSRAM. For example: , , , , and many more.
The disputed domain name was registered on February 15, 2011.
The disputed domain name resolves to an offline website which contains an error message.
The disputed domain name used to resolve to a website displaying in Chinese lighting products. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant argues that the OSRAM mark has been widely promoted among the public and exclusively identifies the Complainant.
The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s trademark, as it wholly incorporates, as a dominant element, the Complainant’s registered trademark. The Complainant further contends that the mere addition of the letters “cn” do not eliminate the confusing similarity.
The Complainant indicates that previous UDRP panels have established the Complainant’s long lasting rights in the OSRAM trademark, and that it is widely known.
The Complainant further argues that the Complainant has not licensed or authorized the Respondent to use the disputed domain name or the Complainant’s trademark.
The Complainant further argues that the the Respondent’s selection of the disputed domain name that is virtually identical to the Complainant’s well-known registered trademark OSRAM clearly indicates a bad faith intent.
The Complainant further argues that the Respondent has registered the disputed domain name in an attempt to attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not submit a formal Response.
The Respondent's acknowledged, in his initial communications on May 25 and May 27, 2011, that he officially "gives up" the disputed domain name and is willing to transfer it to the Complainant. The Respondent mentioned that he is remorseful of the inconvenience he caused the Complainant. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Respondent did not submit an official request, objecting to the Complainant's request. However, the Respondent indicated that he does not understand the English language.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) According to evidence provided by the Complainant, the website under the disputed domain name displayed the English words "NEW CITY".
b) The Respondent communicated with the Center and with the Complainant, while using the English language.
c) The Respondent agreed to transfer the disputed domain name to the Complainant.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of the proceeding. B. Consent To Transfer
The Respondent had consented to the transfer of the disputed domain name to the Complainant.
Previous UDRP Panels stated that “[a] genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed to make an order for transfer. This is clearly the most expeditious course to resolve the complaint [having due regard to Rules 10 and 12 of the Rules]. (see Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207)”. The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132. Similarly, in this case, the Respondent's consent to transfer the disputed domain name makes it unnecessary to proceed and examine whether the Complainant had sufficiently established the elements of paragraph 4(a) of the Policy.
Although there may be some circumstances that would require considering the merits of the case (See, for example: Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211 and Messe Frankfurt GmbH v. Texas International Property Associates,WIPO Case No. D2008-0375), in the present case, the Panel does not find it necessary to address the merits of the Complaint. This finding is based on the Panel’s impression that the Respondent's consent is genuine.
The Respondent’s express of remorse for the inconvenience he caused the Complainant and cooperated with the Complainant in order to transfer to disputed domain name. It seems that the Respondent could not transfer the disputed domain name to the Complainant due to technical problems and not because he didn’t want such outcome.
The Panel approves the Respondent's actions and finds no evidence to the contrary in materials filed in this case.
Accordingly, the Panel orders the transfer of the disputed domain name to the Complainant. 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: August 30, 2011
Full & Egal Universal Law Academy