The Complainant is Osram GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is bei jing tong xin shun kai shang mao you xian gong si of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 35 Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 31, 2013, the Center transmitted an email to the Parties in both Chinese and English languages regarding the language of the proceeding. On February 1, 2013, 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 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 the Respondent of the Complaint, and the proceedings commenced on February 7, 2013. The Center also advised that the Complaint as filed in English was accepted and that a Response in either English or Chinese would be accepted. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2013. On February 8 and 9, 2013, the Respondent sent email communications to the Center indicating its preference that Chinese be used (without clarifying whether this was in response to the Complainant’s request for English to be the language of the proceeding or whether the Respondent intended to submit a Response in Chinese). The Respondent also requested an extension of the Response due date on the basis that the Respondent has been in discussions with the Complainant. On February 18, 2013, the Complainant sent an email communication to the Center informing that the Complainant does not agree to the Respondent’s proposal to extend the Response due date or to suspend the proceedings. On February 20, 2013, the Respondent again requested an extension of the Response due date but without giving any reasons. The Respondent did not submit any formal response by the specified due date. Accordingly, the Center updated the progress of the proceedings on February 28, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 11, 2013. 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 headquartered in Munich and is part of the Osram Group which was founded in Germany in 1919. The Complainant has over 43,000 employees with 46 manufacturing sites in 17 countries supporting customers in about 150 countries. The Complainant is one of the largest lighting manufacturers in the world.
The Complainant has been trading under the name Osram since its foundation. OSRAM was registered as a trademark for “electrical incandescent and arc lamps” since 1906. The Complainant has since registered over 500 trademarks in over 150 countries incorporating the word “osram”. These include:
Jurisdiction Trademark No. Registration Date
United Kingdom of Great Britain and Northern Ireland
330829
June 8, 1911
United States of America
1,552,573
August 22, 1989
Madrid System
567593
February 15, 1991
In 1937, the German Supreme Court (Reichsgericht) made a finding that OSRAM is “a trademark with international standing”. The Complainant also submits that the trademark OSRAM has also been acknowledged on the website of the customs webpage of the government in Shanghai, China as follows:
“Such famous trademark Infringement cases as ‘Benz’, ‘Kodak’, ‘Philips’, ‘Osram’, ‘Galaxy’ and ‘Diamond’ have been seized in succession”.
The Complainant is also the registrant of over 160 domain names incorporating the word “osram”. These include , , and .
The Disputed Domain Name was registered on August 24, 2012. The Disputed Domain Name resolved to a website containing information about the Respondent and the lighting products distributed by the Respondent. The website is substantially in Chinese (with English translations of main section headings) and claimed that the Respondent specializes in internationally famous lighting product brands including Osram. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the trademark OSRAM in which the Complainant has rights. The dominant and distinctive feature of the Disputed Domain Name is the word “osram”. The only difference is the addition of “ch” at the end which will be understood as an abbreviation for products in China or affiliates in China. An Internet user who searches for “osramch” may also be at risk of being led to the website resolved from the Disputed Domain Name. The addition of “ch” is not sufficient to outweigh the similarity between the Disputed Domain Name and the trademark OSRAM;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not hold a trademark OSRAM or any similar trademark. The Respondent does not use the trademark OSRAM in connection with a bona fide offering of goods or services. The Respondent is not an authorized dealer, distributor or licensee of the Complainant. The Respondent is not associated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The trademark OSRAM is a famous trademark of the Complainant. The Respondent’s website resolved from the Disputed Domain Name promoted products which compete with the Complainant’s products under the trademark OSRAM. The Respondent must have known about the well-known stats of the Complainant. The Respondent is using the Disputed Domain Name to mislead consumers searching for Osram products to a website with mainly competing products. The Respondent is using the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant and the trademark OSRAM. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The registration agreement is in Chinese. The default language of the proceeding is therefore also Chinese. The Complainant has requested that English be the language of the proceeding. The Panel is empowered to determine the language of the proceeding to be other than the default language pursuant to paragraph 10 of the Rules. Having reviewed the circumstances, the Panel grants the Complainant’s request for English to be the language of the proceeding. In making this determination, the Panel has taken the following factors into consideration:
1) The Complainant does not speak or write Chinese. Requiring the proceedings to be in Chinese will lead to delay and substantial translation costs on the Complainant;
2) It is not clear from the evidence that the Respondent has objected to the Complainant’s request for English to be the language of the proceeding although it would seem that the Respondent may prefer to use Chinese in the Response. In any event, no formal Response was filed;
3) The Respondent was in discussions with the Complainant, presumably in relation to the Disputed Domain Name. It is not clear from the evidence whether such discussions were conducted in English, Chinese or both. However, it is evident that the Respondent was capable of communicating with the Complainant which does not speak or write Chinese;
4) The Panel is conversant in both English and Chinese and, had the Respondent filed a response in Chinese as highlighted as an option to the Respondent by the Center, the Panel would be able to review and consider the same. However, the Respondent did not respond to the Complainant’s contentions; and
5) Insisting that Chinese remain the language of the proceeding at this stage of the proceeding would provide no foreseeable administrative benefit to the parties and the proceeding but instead cause delay and potentially increase the burden on the Complainant. 6.2 Discussion
The Complainant has to establish the three limbs of paragraph 4(a) of the Policy in order to succeed in this proceeding. A. Identical or Confusingly Similar
The Complainant owns rights in the trademark OSRAM by virtue of its trademark registrations for the same. The Disputed Domain Name incorporates the trademark OSRAM in its entirety. The only difference between the Disputed Domain Name and the trademark OSRAM is the suffix “ch”. The Panel accepts that the suffix “ch” is likely to be associated with an abbreviation for China or Switzerland and is insufficient to distinguish the Disputed Domain Name and the trademark OSRAM. As such, the Complainant has established that Disputed Domain Name is confusingly similar to the trademark OSRAM. B. Rights or Legitimate Interests
The Complainant has shown that it owns trademark rights in the trademark OSRAM and confirmed that the Respondent is not authorized by or associated with the Complainant. The Panel is satisfied that any right or legitimate interest which the Respondent could lay claim to does not stem from the Complainant. There is no evidence before the Panel to suggest that the Respondent owns any rights in the trademark OSRAM.
There is no evidence indicating that the Respondent is known by the Disputed Domain Name. The website resolved from the Disputed Domain Name indicates that the Respondent is not using the Disputed Domain Name in a noncommercial manner. The Respondent has chosen to remain silent in this proceeding and has not provided any explanation which could account for the selection of the Disputed Domain Name to serve a legitimate interest.
Accordingly, the Complainant has successfully made out a prima facie case that the Respondent does not have any right or legitimate interest in the Disputed Domain Name. In the absence of a Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel accepts that the trademark OSRAM is a well-known trademark and that the Respondent’s website resolved from the Disputed Domain Name promoted products under the trademark OSRAM and competing products from other sources. The Panel has no doubts that the Respondent must have been aware of the trademark OSRAM when the Disputed Domain Name was registered barely a year ago.
Paragraph 4(b)(iv) of the Policy identifies the following situation as one of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
Having established the prior knowledge of the trademark OSRAM by the Respondent and the commercial promotion of products under the trademark OSRAM and other brands on the website resolved from the Disputed Domain Name, it can only be reasonably concluded that the Respondent must have been using the Disputed Domain Name to attract Internet users to the Respondent’s website with commercial gain in mind. The Respondent’s choice of the Disputed Domain Name points inexorably to the conclusion that the Respondent must have intended to ride on the trademark OSRAM by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website or the goods on the website with the trademark OSRAM.
The Panel finds the circumstances congruent with the situation outlined in paragraph 4(b)(iv) of the Policy. Without any explanation and justification by the Respondent to contradict this finding, the Panel holds that bad faith registration and use of the Disputed Domain Name as such has been established. 7. Decision
For 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.
Kar Liang Soh
Sole Panelist
Date: April 23, 2013
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