The Complainant is OSRAM GmbH of München, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is wangjin of chongqian, Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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.
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 September 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on October 8, 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.
On a preliminary issue, the Complainant submitted that the language of the proceedings should be in English on the basis that the Registrar of the disputed domain name is based in India and the Registration Agreement is in English. Further, the disputed domain name uses the letters of the Roman alphabet and the registrants of the gTLD “.com” usually speak and understand English.
The Panel agrees that the language of these administrative proceedings should be English, which is the language of the Registration Agreement (as confirmed by the Registrar). Paragraph 11(a) of the Rules. 4. Factual Background
The Complainant belongs to the OSRAM group which was founded in Germany in 1919. The Complainant is an international company with its headquarters in Munich. The Complainant currently employs more than 43,000 people worldwide and supplies customers from about 150 countries. The Complainant is one of the two largest lighting manufacturing companies in the world and is well known worldwide, with 46 manufacturing locations across 17 countries.
The Complainant's company name contains the trade mark OSRAM which is protected in various countries and regions around the world. The Complainant has more than 500 registrations for the OSRAM trademarks and service marks in over 150 territories. The Complainant owns over 100 international registrations for the OSRAM trade mark. The Complainant contends that due to the extensive international use of its distinctive OSRAM trade mark, the OSRAM mark has become internationally well known. The OSRAM mark has also been recognized as well known in many previous panel decisions under the Policy (see e.g. OSRAM GmbH v. web4COMM SRL Romania,WIPO Case No. DR02005-0004; OSRAM GmbH v. Ocean Grenier,WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Entrprise Ltd., WIPO Case No. D2008-1032; OSRAM GmbH v. Texas International Property Associates - NA, WIPO Case No. D2008-1033; OSRAM GmbH v. Sinclare Vabalon,WIPO Case No. D2008-1045; etc). Additionally, various authorities such as national courts and Intellectual Property Offices have acknowledged the OSRAM mark to be well-known (e.g. in Japan, Germany, Thailand and China).
The Complainant owns more than 160 domain name registrations containing the trade mark OSRAM.
The disputed domain name was registered on July 10, 2013. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to its OSRAM trade mark in which it has rights. The dominant and distinctive feature of the disputed domain name is the word “Osram” and the only difference between the disputed domain name and the Complainant’s OSRAM trade mark lies in the additional letters “cn”. This difference “does not outweigh” the similarity between the disputed domain name and the OSRAM trade mark. The letters “cn” is a common reference to China. As the Complainant has a strong business focus in Asia including China, the disputed domain name would appear to belong to an associated company or business partner of the Complainant, based in China.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not hold rights to the trade mark OSRAM nor is it known by the name “Osram”. The Respondent is not a licensee, authorized distributor or dealer of the Complainant and is not permitted to use the trade mark OSRAM or register the disputed domain name.
The Panel notes that the Complainant makes a bare assertion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has not elaborated nor demonstrated how the Respondent is using the disputed domain name.
(iii) The disputed domain name was registered and used in bad faith. OSRAM is a world-famous trade mark of the Complainant. Bad faith exists where there can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name. The Respondent does not use the disputed domain name for personal non-commercial interests and has not attempted to make any bona fide use of the disputed domain name. The Respondent is using the disputed domain name “to address Internet users to its own websites” and such use is neither legitimate nor in good faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided documentary evidence of its trademark rights in OSRAM. The Panel is also persuaded by the evidence submitted that OSRAM is a well-known mark.
As to whether the disputed domain name is confusingly similar to the OSRAM mark, the Panel finds that the Complainant has satisfied its burden of showing that it is. The only difference between the disputed domain name and the Complainant’s mark lies in the additional letters “cn” which appear after the letters “osram” in the disputed domain name. The Complainant’s OSRAM mark is clearly and easily identifiable in the disputed domain name and in the instant context, the letters “cn” serve a generic or descriptive function, and can be reasonably interpreted or construed to refer to a Chinese division of the Complainant. The letters “cn” therefore do not serve to eradicate the confusion with the Complainant’s OSRAM mark, but adds to it.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
It is not in dispute that the Complainant did not license or otherwise authorize the Respondent to use the trade mark OSRAM and there is no evidence that the Respondent is known by the name OSRAM which happens to be a well-known mark. There is therefore a prima facie case of a lack of rights or legitimate interests which the Respondent has not rebutted by way of a Response.
In the circumstances and in accordance with Rule 15(a), the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Consequently, the Panel finds that the second element of paragraph 4(a) the Policy is also fulfilled. C. Registered and Used in Bad Faith
The Panel is of the view that the Complainant could have done more to properly substantiate its case, by submitting evidence of how the Respondent was using the disputed domain name. There was only a bare reference to use of the disputed domain name by the Respondent by attracting Internet users to its website and a plain assertion of commercial use of the disputed domain name in a manner which was neither legitimate nor fair. The Complainant did not provide any details thereof nor a copy of a screenshot from the Respondent’s alleged website. On the other hand, the Respondent has not responded to the Complainant’s assertions nor tried to explain how it came to select the disputed domain name.
In the absence of any evidence to the contrary, the Panel finds that the disputed domain name has been registered and used in bad faith under the Policy.
Indeed, on a balance, the Panel has decided to find in favour of the Complainant, primarily on the strength of reputation of the OSRAM mark. Based on a preponderance of the specific circumstances of this case wherein the Complainant has tendered supporting evidence of the reputation of its OSRAM mark and recognition by a number of authorities that it is a well-known mark, and taking into account the fact that this mark has been incorporated in its entirety in the disputed domain name and is recognizable to be the dominant part of the disputed domain name, the Panel concludes that the Respondent must have known of the Complainant and of its OSRAM trade mark when it registered the disputed domain name in July 2013. The wholesale adoption of a well-known mark into a domain name by someone with no apparent connection with the name suggests opportunistic bad faith. (See The Gap, Inc.v. Deng Youqian,WIPO Case No. D2009-0113; SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.)
The third element of paragraph 4(a) the Policy is therefore also fulfilled. 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.
Francine Tan
Sole Panelist
Date: October 9, 2013
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