The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Zheng Haixin of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Shanghai Yovole Networks, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2013. On April 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 April 9, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On April 11, 2013, the Complainant requested that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 April 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on May 17, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of numerous trademark registrations, which consist of the mark OSRAM, inter alia, International Trademark Registration No. 567593, registered on February 15, 1991, designating China among other jurisdictions.
(ii) The Complainant has used the trademark OSRAM on which the Complaint is based, on its lighting products. The Complainant is the owner of more than 160 domain names, which contain the mark OSRAM, inter alia, , , .
(iii) The Disputed Domain Name was registered on September 16, 2012.
(iv) The Disputed Domain Name resolves to a website that offers for sale of lighting products that include reference to the Complainant’s trademark OSRAM. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “osram” element in its entirety, which is identical to the Complainant’s OSRAM trademark. The incorporation of the suffix “ge” is non-distinctive and does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark. The generic top-level domain “.com” is irrelevant for the purpose of determining whether the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s trademark OSRAM or any other trademark, and yet the Respondent has been offering lighting products by reference to the OSRAM mark for sale via the website to which the Disputed Domain Name resolves.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by offering lighting products originating from the Complainant’s competitors for sale. The mere registration of the Disputed Domain Name incorporating the Complainant’s trademark does not confer any rights or legitimate interests in the Disputed Domain Name to the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Language of 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, in its email dated April 11, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Respondent is capable of communicating in English, which the Complainant claims to be established with the fact that the Disputed Domain Name resolves to a website that contains English language content; and also with the fact that the Respondent used Roman alphabet and chose “.com” as generic top level domain when registering the Disputed Domain Name. Second, the Complainant would be prejudiced and the proceeding would be delayed due to the extra expense and time in having the Complaint translated into Chinese.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings 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 proceedings. 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The Respondent’s website at the Disputed Domain Name appears to contain text in the English language (as evidenced by the screen shots provided by the Complainant in Annex 3 to the Complaint). The Panel is therefore satisfied that the Respondent is familiar with the Complainant’s requested language.
(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given the opportunity to object to the Complainant’s request that English be the language of proceedings. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceedings. The Panel finds that the Respondent has been given fair opportunity to object, and has not done so.
(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of Germany, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondent has shown no interest in responding and requiring the Complainant to translate the Complaint into Chinese will cause unnecessary delay to the proceedings.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it is the proprietor of the OSRAM trademark, which has been registered, inter alia, as an International Trademark Registration since February 15, 1991, designating China.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the inclusion of a third party’s trademark in a disputed domain name does not alter the visual impression that the disputed domain name is associated with the complainant’s trademark. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896; ACCOR , SoLuxury HMC v. Whois privacy services Domain protect LLC / Alex Gusev,WIPO Case No. D2012-0389 , also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the generic top-level domain (for example, “.com” and “.net”) should generally be disregarded. (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS)WIPO Case No. D2009-1194).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark OSRAM in its entirety, while including the third party’s trademark GE as a suffix in the Disputed Domain Name . The addition of a third party’s trademark is insufficient to effectively differentiate the Disputed Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Complainant has established that it is the owner of the OSRAM trademark that enjoys a worldwide reputation, and that the Complainant has used its trademarks on the Internet through its websites, inter alia, “www.”, “www.”, “www.” from which the Complainant displays its various lighting products. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name.
The Panel notes that the registrant of the Disputed Domain Name is “Zheng Haixin”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
Furthermore, the fact that the Respondent uses the Disputed Domain Name to offer lighting products by reference not only to the Complainant’s OSRAM trademark but also to a third party’s GE trademark for sale without accurate disclosure of the relationship between the Respondent and the owners of the said trademarks but with the false suggestion that the Respondent is an agent of the Complainant and a third party GE is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to provide allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.
Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s OSRAM trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the website at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its OSRAM trademark has been registered, inter alia, as International Trademark Registration since February 15, 1991, designating China, and has acquired an international reputation prior to the date the Disputed Domain Name was registered.1 The Respondent’s choice to incorporate the identical “osram” element as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith and the subsequent use of the Complainant’s OSRAM trademark in connection with products offered on the website to which the Disputed Domain Name resolves further shows that the Complainant’s OSRAM trademark was chosen for the Disputed Domain Name in bad faith. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the evidence of the content available on the website to which the Disputed Domain Name resolves (as shown on the screen shot provided by the Complainant in Annex 3 to the Complaint), clearly shows that the website offers for sale of purported OSRAM and GE lighting products and the Respondent claims to be the agent of the Complainant and a third party “GE”. Based on these facts in the record, the Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. Thus, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: May 31, 2013
1 The Disputed Domain Name was registered on September 16, 2012.
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