The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondents are Chendu Jiaxing and chengdujiaxingwujinjiaodianyouxiangongsi of Chengdu, Sichuan, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On July 16, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 18, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondents 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 Respondents of the Complaint, and the proceedings commenced on July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 14, 2013.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on August 27, 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. It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below. 4. Factual Background
4.1 The Complainant’s company name is “Osram” and it belongs to the OSRAM group which was founded in Germany in 1919. The Complainant has presented evidence that OSRAM employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures at 46 sites in 17 countries. OSRAM is one of the two largest lighting manufacturing companies in and well-known round the world.
4.2 The Complainant’s original predecessor parent company was the owner of the OSRAM trademark and had been manufacturing light bulbs since 1918. When OSRAM was founded in 1920, the name of the brand became the name of the company.
4.3 The Complainant has provided evidence to show that it has traded under the name “Osram” since its foundation and that the OSRAM brand was registered as a trademark for “electrical incandescent and arc lamps on April 17, 1906. The Complainant has established offices in European countries, Rio de Janeiro and Shanghai.
4.4 The Complainant has asserted that it has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions.
4.5 The Complainant became aware of the registration and use of the disputed domain names and and established that the disputed domain names resolve to a webshop named “jiaxing” via which lighting products are advertised and offered. The bottom of the webpages reveals the email address and the phone numbers of the Respondents. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed domain names are confusingly similar to its OSRAM trademark in which it holds rights for the following reasons:
(i) The Complainant’s company name “Osram” is protected as a trademark in various countries and regions around the world. The disputed domain names are identical with the OSRAM trademarks on which the Complainant has the said rights and they are identical with the company name of the Complainant, too.
(a) The Complainant’s company name is “Osram” and it belongs to the OSRAM group which was founded in Germany in 1919;
(b) The Complainant has provided evidence to support its claim that it has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions.
(ii) The Complainant has provided evidence to support its claim that various national courts and offices have acknowledged the OSRAM marks as being well known.
(iii) The Complainant has regularly prosecuted violations of its OSRAM mark in China and this has also made it famous. The customs webpage of the government in Shanghai has exhibited OSRAM as famous where it has stated:
“Such famous trademark Infringement cases as “BENZ”, “Kodak”, “Philips”, “Osram”, “Galaxy” and “Diamond” have been seized in succession.”
(iv) Finally, the Complainant is the owner of more than 160 domain names based on the denomination “osram”, covering both generic Top-Level-Domains (gTLDs) and country code Top-Level-Domains (ccTLDs). The disputed domain names are in its relevant distinguishing parts identical to marks owned by the Complainant and the Complainant’s company name. The dominant and distinctive feature of the disputed domain names is the word “osram”. The only difference between the disputed domain names and the Complainant’s trademark resides in the adjunction of the letters “sc” or “sc-” placed at the beginning of the disputed domain names. The “sc” and “sc-” elements however do not outweigh the strong similarity between the disputed domain names and the Complainant’s mark and its company name. The term “.com” is a gTLD. The top-level suffix is to be disregarded under the identity or confusing similarity test as set out in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
5.2 The Complainant contends that the Respondents have no rights and legitimate interests in the disputed domain names for the following reasons:
(i) The Respondents are not authorised dealers, distributors or licensors of the Complainant, nor are the Respondents in any way associated with the Complainant. Additionally, the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names.
(ii) To the best of the Complainant’s knowledge, the Respondents are not holder of a trademark OSRAM; have no rights in a personal name “osram” and have not registered the disputed domain names in connection with a bona fide intent.
5.3 The Complainant, lastly, contends that the disputed domain names were registered and are being used in bad faith for the following reasons:
(i) The Complainant submits that the disputed domain names are in use for a webshop via which lighting products of its competitors are sold and advertised.
(ii) The Respondents use the disputed domain names not for personal noncommercial interests. The Respondents’ selection of the disputed domain names and that are virtually identical to the Complainant’s well-known registered trademark OSRAM clearly indicates a bad faith intent as there is no plausible reason why the trademark was chosen for the disputed domain names.
(iii) The Complainant contends that the Respondents have not attempted to make any bona fide use of the disputed domain names. The registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the Respondents, but rather constitutes bad faith under paragraph 4(c) of the Policy.
(iv) The Respondents’ use the well-known trademark and company name of the Complainant to address Internet users to its own websites and this is a further and strong factor for a use in bad faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the paragraph 4(b)(iv) of the Policy.
The Complainant requests a decision that both of the disputed domain names be transferred. B. Respondent
5.4 The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Respondent Consolidation
6.1 The Panel is satisfied that both of the disputed domain names and websites to which they resolve in this case are subject to common control and that it is equitable and fair to all Parties to render the present decision against both of the Respondents in this case. B. Language of Proceedings
6.2 The Complaint was filed in the English language. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
6.3 The Center has been informed by the Registrar that the language of the registration agreements of and is Chinese. The default language of the proceedings is therefore Chinese, being the language of the registration agreements, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the Parties.
6.4 According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.5 The Complainant has provided three separate reasons as to why the language of the proceedings should be English.
(i) The disputed domain names were registered in ASCII characters using the Roman alphabet. Additionally, the generic Top-Level Domain (gTLD) “.com” was chosen. The addressees of “.com” domain names are everywhere around the world and they usually speak and understand English.
(ii) The Complainant does not understand nor speak Chinese. Therefore the proceedings would be cost extensive and the translation of all documents would necessarily lead to a delay of the proceedings.
(iii) Also, in accordance with prior UDRP proceedings where the counterparty did not participate, the language of the proceedings shall be English, in particular for financial and time reasons.
6.6 The Panel will deal with each of these submissions in the order in which they have been presented.
6.7 The fact that the disputed domain names were registered in ASCII characters using the Roman alphabet does not and cannot change the default language of the proceedings. Many other languages in the World adopt the Roman alphabet and as such, it is inconclusive that the mere usage of the Roman alphabet can somehow mean that the language of the proceedings is automatically the English language.
6.8 The second submission is that the Complainant does not understand nor speak Chinese and that therefore the proceedings would be cost extensive and the translation of all documents would necessarily lead to a delay of the proceedings. The Panel finds that is not a logical argument let alone a properly constructed legal submission.
6.9 The Complainant is a company and not a living individual and certainly cannot speak at all. The Complainant has not made it clear if it is trying to say that its directors or legal representatives are unable to understand Chinese. However, the Panel finds that it cannot be the case that the language of the proceedings were to be dependent on the choice of a party’s lawyers rather than the language of registration agreement, since there can be total chaos if a party decided to engage a lawyer who can only speak a very rare or dying language. As there is no valid reasoning backed by any jurisprudence, the Panel is unable to accept the Complainant’s submission. (See L’Oreal v. Zhongshengpengfei, zhaohui wu,WIPO Case No. D2012-0520)
6.10 Finally, the Complainant then submitted that if it were to proceed in the Chinese language, the Complainant would have lost time and would have to incur financial costs. It was not made clear but this is presumably from needing to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Previous UDPR panels have ruled against this very disingenuous line of submission. (See L’Oreal v. Zhongshengpengfei, zhaohui wu, supra).
6.11 What in fact the Complainant is suggesting is that because of its directors’ or lawyers’ lack of knowledge in the Chinese language, it is unable to deal with the dispute resolution process as it does not want to spend any costs on translation. This Panel cannot accept such a contradictory submission and would remind future complainants not to raise such an extraordinary submission in their request of persuading panels from ignoring paragraph 11(a) of the Rules.
6.12 In the Panel’s view, the fact that the Complainant has to retain specialised translation services at a cost that is likely to be higher than the overall cost for the present proceedings is not a legal reason at all that can be accepted by any panel. At the end of the day, it is up to any complainant to secure the services of counsel that can communicate in the language in which the language of the registration agreement is to be based. The Panel has however reviewed the Chinese language documents in the course of these proceedings and has satisfied itself at each of the three limbs that the Complainant has to satisfy.
6.13 Although the inability of the Complainant’s representative to communicate in the Chinese language is not and cannot solely be a proper legal basis for not adopting the default language of the proceedings, the Panel views that it is significant that there has not been an objection made by the Respondents on the issue of language. (See Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi, WIPO Case No. D2007-1918)
6.14 The Panel considered this issue carefully bearing in mind its broad powers given to him by paragraph 11(a) of the Rules. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceedings in this case. However, based on the Panel’s discretion, Chinese language documents have been reviewed by the Panel. C. Overall Review of Formalities
6.15 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondents to lodge a Response.
6.16 The Respondents have been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that it accepts the claims of the complainant, or even that it does not wish to respond or defend its perceived interest in the domain name. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the Policy and the Rules. The burden of proof falls upon and remains on the Complainant.
6.17 In such case of silence by the Respondents, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”)). Notwithstanding the default of the Respondents, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. D. Identical or Confusingly Similar
6.18 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.19 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark rights; and that the disputed domain names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming,WIPO Case No. D2006-1107).
6.20 The Complainant has appended to the Complaint a list of registered trademarks for the mark OSRAM. It is quite clear that the Complainant is the owner of a number of trademarks that simply comprise OSRAM. The disputed domain names consisting of the Complainant’s OSRAM trademark in its entirety with the exception of the adjunction of the letters “sc” or “sc-” placed at the beginning of the disputed domain names do not prevent the disputed domain names from being confusingly similar to the Complainant’s registered mark.
6.21 Given this, the Panel has little difficulty in concluding that the disputed domain names are confusingly similar to a number of trademarks in which the Complainant has rights.
6.22 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. E. Rights or Legitimate Interests
6.23 The Panel accepts the Complainant’s contention that the Respondents do not use the disputed domain names in connection with a bona fide offering of goods or services. At the heart of the Complaint is the Complainant’s contention that the Respondents have taken the trademark of the Complainant with a view to attracting Internet users to websites offering to sell lighting products of the Complainant’s competitors, and that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites. The Panel accepts that such activity clearly does not provide the Respondents with rights or legitimate interests in the disputed domain names.
6.24 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondents have no rights or legitimate interests in the disputed domain names. However, it is the prevailing view among UDRP panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the disputed domain name.
6.25 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001).
6.26 As this Panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.27 The Respondents have not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain names. There is no evidence on the record of this proceeding to suggest that the Respondents have been commonly known by the disputed domain names, or that the Respondents have made a noncommercial or fair use of the disputed domain names. The Respondents have also not used the disputed domain names in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondents have no rights or legitimate interests in the disputed domain names which are confusingly similar to the Complainant’s mark.
6.28 Under these circumstances, the Panel takes the view that the Respondents have no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. F. Registered and Used in Bad Faith
6.29 The Panel has not been provided with any supporting submission to link up and support the Complainant’s submission that it seems obvious to the Complainant that the Respondents knew or must have known the Complainant’s trademarks at the time of the registration of the disputed domain names. However, having gone through the materials that have been provided, the Panel does accept that the Complainant’s trademark is very well-known throughout the world.
6.30 The Panel does not accept the Complainant’s assertion that findings of fact by other UDRP panels in previous UDRP decisions should be automatically accepted as conclusive in this case. The Complainant bears the burden of proving whatever allegations it chooses to make in any new case.
6.31 The Panel however accepts that the Respondents registered the disputed domain names with the likely knowledge of the Complainant’s business and its use of the trademark OSRAM does show that the Respondents are using the disputed domain names to intentionally gain commercially by attracting Internet users to the Respondents’ websites, by creating a likelihood of confusion with the Complainant’s mark.
6.32 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of the website.
6.33 Given that the Respondents have failed to demonstrate that they are using the disputed domain names genuinely for their own goods or services and that they have also failed to disclose on the site the true relationship between them and the Complainant, and furthermore use the disputed domain names to offer lighting products of the Complainant’s competitors, the Panel concludes that the Respondents in this case did intentionally attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondents, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.34 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. The Panel has been able to conclude that the Respondents registered and are using the disputed domain names in bad faith. 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 names and be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Sole Panelist
Dated: October 1, 2013
Full & Egal Universal Law Academy