The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Pan Weimin, Lumilux Co., Limited of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2015. On January 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2015, 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. In response to a notification by the Center regarding the Respondent’s information, the Complainant filed an amended Complaint on January 15, 2015.
On January 14, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On January 15, 2015, the Complainant submitted a request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
The Center verified that the Complaint together with the amended 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 in both Chinese and English, and the proceedings commenced on January 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2015.
On January 22, 2015, the Center received an email communication from the Respondent. On January 23, 2015, the Center acknowledged receipt of this email communication. On February 10, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 20, 2015. 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 A. Complainant
The Complainant is a company incorporated in Germany and the owner of registrations in 90 countries for the trade mark LUMILUX (the “Trade Mark”), including several registrations in China, where the Respondent is based. B. Respondent
The Respondents are apparently an individual based in China and a company registered in Hong Kong, China (henceforth, the “Respondent”). C. The Disputed Domain Name
The disputed domain name was registered on January 21, 2013. D. The Website at the Disputed Domain Name
The disputed domain name is used in respect of an English language website (the “Website”) promoting and offering for sale a wide range of lighting products under the Trade Mark (depicted in the form “LumiLux”). 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant belongs to the OSRAM group which was founded in Germany in 1919 (“OSRAM”). OSRAM is a well-known international conglomerate, with its headquarters in Munich, Germany. OSRAM employs 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 groups in the world.
The Complainant has used the Trade Mark continuously since 1979 in respect of lighting products, including in China.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the non-distinctive word “light”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been authorised by the Complainant to use the Trade Mark and is not in any way associated with the Complainant. The Respondent is not making a bona fide commercial use of the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered and used in bad faith in respect of the Website, which promotes and offers for sale lighting products in competition with those of the Complainant, under the Trade Mark. B. Respondent
In its email of January 22, 2015, the Respondent made the following submissions.
The Respondent Lumilux Co., Limited is a company incorporated in Hong Kong, China. The Respondent initially used the domain name and has, since January 2013, been using the disputed domain name.
The Complainant’s registration for the Trade Mark is in upper case, so there is no risk of confusion between the Respondent and the Complainant.
The Respondent chose “Lumilux” based upon the English words “luminous” and “lux”, so there is no confusion between the disputed domain name and the Complainant’s domain name.
The Respondent promises not to use the Trade Mark in future, although, as the Respondent has achieved certain market penetration through its use of the disputed domain name over the past 2 years, it is unable to agree to change its domain name, as this will cause great loss. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the 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 the 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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings.
The Complainant has requested that English be the language of the proceedings, on the following grounds:
(1) The disputed domain name was registered in ASCII characters using the Roman alphabet;
(2) The Website is an English language website;
(3) The Respondent never responded to the Complainant’s warning letter;
(4) Requiring the Complainant to translate the Complaint into Chinese would be expensive and would cause unnecessary delay.
The Respondent did not file any submissions with respect to the language of the proceedings. The Respondent did however file its informal email submission in both Chinese and English. .
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English. 6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by well over 30 years.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
The Panel finds the addition of the generic word “light”, which is directly descriptive of the goods manufactured and offered for sale by both of the parties, does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is evidence that the Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 30 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence shows that the disputed domain name has been used in respect of the Website, which uses prominently the Trade Mark, and which offers for sale a wide range of lighting products in direct competition with those of the Complainant.
The mere fact of registration in Hong Kong, China of the company name “Lumilux Co., Limited” does not confer on the Respondent any relevant trade mark (or other) rights.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel has no hesitation in concluding this is a clear-cut case of bad faith registration and use under paragraph 4(b)(iv) of the Policy. The disputed domain name has clearly been registered and used in order to take advantage of the likelihood of confusion between the disputed domain name and the Trade Mark, in order to attract Internet users to the Website for commercial gain.
These proceedings provide yet another example of persons taking advantage of the liberal company registration policy in Hong Kong, China (whereby the Registrar of Companies in Hong Kong, China takes no steps to prevent registration of company names which incorporate third party trade marks) in an attempt to legitimise infringing conduct elsewhere – in the present case, the operation of the Website in China, which clearly infringes the Complainant’s rights in the Trade Mark in China and elsewhere.
Furthermore, notwithstanding the Respondent’s offer in its email submission to cease using the Trade Mark, the Panel notes that, as at the date of this decision, the Respondent is continuing to operate the Website which features prominently the Trade Mark.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: March 6, 2015
Full & Egal Universal Law Academy