The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is mingshu li, limingshu of Zhongshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology 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 advising that the name of the Respondent included in paragraph 6 of the Complaint was not correct, 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 English and Chinese, and the proceedings commenced on January 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2015.
On February 3, 2015, the Center received two email communications from the Respondent with attachments in cloud format (the "Respondent's Emails"). On February 4, 2015, the Center acknowledged receipt of the Respondent's Emails.
On February 12, 2015, the Center informed the parties that it would proceed with appointment of the Panel.
On February 12, 2015, the Center sent an email communication to the Respondent requesting the Respondent to submit the attachments to the Respondent's Emails as soon as possible by email in accordance with the Rules and the Supplemental Rules.
On February 16, 2015, the Center sent a reminder email to the Respondent.
On February 18, 2015, the Center informed the parties that, due to the official holiday in China for the Chinese New Year from February 18 to 24, 2015, and the tight timelines the Center is subject to under the Rules as a dispute resolution service provider, the Center had exceptionally downloaded the documents sent by the Respondent as attachments to the Respondent's Emails in cloud format (the "Respondent's Documents"). The Center advised the parties that it would be in the sole discretion of the Panel upon appointment to determine whether to consider and/or admit the Respondent's Documents in rendering its Decision, and whether to order further procedural steps, if any.
On February 18, 2015, the Center sent copies of the Respondent's Documents to the parties, in four separate emails.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 18, 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.
On February 19, 2015, the Complainant sent unsolicited supplemental submissions to the Center.
On February 25, 2015, the Panel issued a Panel Order in both Chinese and English:
(1) Advising the parties that the Panel had decided to admit the Respondent's Documents, and to decline the unsolicited supplemental submissions from the Complainant (with Reasons to be given in the Decision);
(2) Requesting the Respondent to confirm to the Center by email, copying the Complainant, by February 28, 2015, that the Respondent's Documents are complete;
(3) Noting that the Respondent's Documents appear to refer to ongoing court proceedings in China where the Complainant has been listed as a third party, and inviting the Complainant to comment on these court proceedings by way of submissions, to be copied to the Respondent, by February 28, 2015; and
(4) Advising that the due date for the Decision had been extended until March 7, 2015.
On February 27, 2015, the Complainant's representatives requested an extension of time until March 4, 2015 to respond to the Panel Order, as they had not yet had the opportunity to discuss the matter with the Complainant.
On February 27, 2015, the Center notified the parties that the Panel had granted the Complainant's request for an extension of time, and that the due date for the Decision had been extended until March 11, 2015.
On March 2, 2015, the Complainant filed submissions in response to the Panel Order.
The Respondent did not reply to any of the Center's email communications sent following receipt of the Respondent's Emails, and did not respond to the Panel Order. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Germany and the owner of registrations in over 150 countries and regions for the trade mark OSRAM, including numerous registrations in China. The Complainant's trade mark OSRAM has been recognised as a well-known trade mark in several jurisdictions and in numerous UDRP decisions.
The Complainant is also the owner of several registrations in China for the trade mark 欧司朗 (the "Trade Mark"), which is the Chinese language version of the Complainant's OSRAM trade mark, registered both as a stand-alone mark, and in conjunction with the OSRAM mark (欧司朗OSRAM). B. Respondent
The Respondent is an individual based in China. C. The Disputed Domain Name
The disputed domain name was registered on October 4, 2010. D. The Website at the Disputed Domain Name
The disputed domain name is used in respect of a website available in both Chinese and English language and apparently operated by AOSILANGLIGHTING (CHINA) LIMITED (澳司朗照明(中国)电器有限公司), which website promotes and offers for sale a wide range of lighting products (the "Website"). 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 disputed domain name is identical or at least confusingly similar to the Complainant's trade marks. The pinyin (Romanized text) for the Trade Mark is "ousilang", which is very similar to the text "aosilang" in the disputed domain name. In this regard, the Complainant relies on an unrelated third party trade mark opposition decision issued in favour of the Complainant by the Chinese Trademark Office in 2013, in which the trade mark 奥斯朗 AOSLAG was refused for registration, on the grounds it is confusingly similar to the Complainant's registered欧司朗 OSRAM trade mark in China. The Complainant submits that the pinyin for the Chinese language component of the奥斯朗 AOSLAG trade mark, "aosilang", is the same as the disputed domain name herein.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The owner of the Website does not have any trade mark or trade name rights in respect of "aosilang".
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 advertises and sells lighting products. B. Respondent
The Respondent did not file a formal Response.
The Respondent contended in the Respondent's Emails that there are no similarities between the disputed domain name and the Complainant's domain name , and the differences between the English language letters used in each of these domain names are great.
The Respondent otherwise made no submissions in relation to the second and third limbs under paragraph 4(a) of the Policy.
The Respondent's Documents were attached to the Respondent's Emails without any explanation. These documents include:
(1) A trade mark application certificate in respect of the application filed in China by 宿迁澳司朗照明电器厂 (Suqian Aosilang Lighting Factory) for registration of a logo trade mark comprising a light bulb device and the wording AOSLAN on January 28, 2008;
(2) A trade mark application certificate in respect of the application filed in China by宿迁澳司朗照明电器厂 (Suqian Aosilang Lighting Factory) for registration in China of a logo trade mark comprising a different light bulb device, the Chinese characters 澳司朗·东艾and the English script wording AOSLAN DONGAI on October 22, 2008;
(3) Design patent registration certificates in respect of two design patents registered by the Respondent in China in respect of certain lighting and packaging designs on March 17, 2008;
(4) A mock-up for box packaging featuring the澳司朗·东艾AOSLAN DONGAI light bulb device mark; and
(5) Several pages of documents which suggest that the applications for registration of the AOSLAN and light bulb device mark and the 澳司朗·东艾AOSLAN DONGAI light bulb device mark in China (referred to above) were successfully opposed by the Complainant, and that there are currently pending appeals in respect of both oppositions before the Beijing No. 1 Intermediate People's Court, which are yet to be determined1. 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) allows the Panel to determine the language of the proceedings having regard to all the circumstances of the administrative proceedings. 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 proceeding. 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, as:
(1) The content of the Website is available in English as well as Chinese;
(2) The disputed domain name was registered in ASCII characters using Roman script;
(3) The Respondent did not respond to the Complainant's warning letter and did not try to prevent the proceedings;
(4) The Respondent has not formally taken part in the proceedings;
(5) The Complainant does not understand or read Chinese; and
(6) Translating the Complaint and annexes would unfairly disadvantage the Complainant, would be too cost-intensive, and would cause the proceedings to be delayed.
The Panel notes that the Respondent did not make any submissions in relation to the language of the proceedings, but chose to send the Respondent's Emails to the Center in Chinese.
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 that sufficient evidence has been adduced by the Complainant to suggest the likely possibility the Respondent is proficient in the English language – in particular, the fact the Website is available in both English and Chinese language.
The Panel is also mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Respondent's Emails in Chinese; and
(3) It will render this Decision in English. 6.2 The Respondent's Documents
Paragraph 5(b) of the Rules requires the Response, including any annexes, to be submitted in electronic form to the relevant approved dispute resolution provider (the "Provider" - in the present proceedings, the Center).
Paragraph 2(c) of the Rules requires any communication to the Provider to be made by the means and in the manner stated in the Provider's Supplemental Rules.
Paragraph 7 of the Supplemental Rules requires the Response, including any annexes, to be submitted electronically in complete form in accordance with paragraph 12(b) of the Supplemental Rules. Paragraph 12(b) and Annex E of the Supplemental Rules requires the size of any one email or of any individual file (such as a document in Word, PDF or Excel format) transmitted to the Center to be no larger than 10MB. When larger amounts of data need to be transmitted, larger files can be "split" into a number of separate files or documents each no larger than 10 MB.
The Respondent's Documents were not submitted to the Center as files attached to the Respondent's Emails (whether in Word, PDF, Excel, or other format). Instead, four separate links were included in the Respondent's Emails whereby, by clicking on the words 下载 ("download" in Chinese), the Respondent's documents could then be downloaded from zip files uploaded to an external website using Cloud technology.
The Respondent did not respond to the Center's request that the Respondent re-submit the Respondent's Documents by email in accordance with the Rules and the Supplemental Rules.
Due to the exceptional circumstances of this case, the Panel has decided to accept the Respondent's Documents.
In deciding to admit the Respondent's Documents in accordance with the Panel's wide discretion under paragraph 10(d) of the Rules to determine the admissibility, relevance, materiality and weight of the evidence, the Panel has also had particular regard to its obligation under paragraph 10(b) of the Rules to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.
The Panel is cognisant of the requirement under paragraph 10(a) of the Rules for the Panel to conduct the proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules. Insofar as the manner of submission of the Respondent's Emails is not strictly in compliance with the Rules, the Panel nonetheless considers that, in all the circumstances, it would be unfairly prejudicial to the Respondent for the Respondent's Documents to be excluded in these proceedings (and notwithstanding the Respondent's failure to (1) provide any explanation or submissions in the Respondent's Emails regarding the Respondent's Documents; and (2) respond to the requests from the Center or to the Panel Order). 6.3 The Complainant's Supplemental Submissions
panels have sole discretion, under paragraphs 10 and 12 of the rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. the party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
The Complainant's supplemental submissions herein, in addition to objecting to the admission of the Respondent's Documents on the grounds they were not submitted to the Center as attachments to the Respondent's Emails, included several additional grounds in support of the Complaint which the Panel considers should properly have been included in the Complaint, and/or which amount to an attempt to include evidence in reply to the Respondent's submissions, which is not usually allowed in UDRP proceedings absent special circumstances.
For the above reasons, the Panel has determined not to allow the Complainant's supplemental submissions. 6.4 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 and in its OSRAM trade mark (upon which the Trade Mark is based) acquired through use and registration which predate the date of registration of the disputed domain name.
In the Panel's view, the disputed domain name is confusingly similar to the pinyin for the Trade Mark, "ousilang". The pronunciation of the first syllable of the disputed domain name, "ao", is similar to the pronunciation of "ou", the first syllable of "ousilang". The second and third syllables are identical.
The Panel notes further that the second and third Chinese characters in the unregistered logo mark relied upon by the Respondent herein, "司朗", are identical to the second and third characters in the Trade Mark.
The Panel is fortified in making its determination by the decision of the Chinese Trademark Office relied upon by the Complainant, in which the Complainant's opposition to registration of the unrelated third party trade mark奥斯朗 AOSLAG was upheld. The Chinese characters comprised in the relevant奥斯朗 AOSLAG mark are very similar to the Chinese characters澳司朗in the AOSLAN DONGAI澳司朗·东艾device mark relied upon by the Respondent herein. Furthermore, 奥斯朗and 澳司朗are pronounced exactly the same way in Chinese (ào sī lǎng – 4th tone, 1st tone, 3rd tone).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfils 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 no evidence that the Complainant has 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 many 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 it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which promotes and offers for sale lighting products in direct competition with those manufactured by the Complainant. In all the circumstances, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
It is apparent from reviewing the Respondent's Documents that the efforts of the Respondent (or persons or entities affiliated with the Respondent) to register the trade marks referred to in the Respondent's Documents have, to date, been unsuccessful. It appears the relevant applications were successfully opposed by the Complainant and that the Respondent's efforts to overturn the opposition decisions by way of appeal to the Beijing No. 1 Intermediate People's Court have, so far, been unsuccessful.
Even if the Respondent had established relevant trade mark rights in respect of such marks (which have been used, in various permutations, on the Website), the Panel notes the disputed domain name is not the same as the English script wording AOSLAN or AOSLAN DONGAI contained in these logo marks, and is not the same as the pinyin version of the Chinese characters comprised in the second mark, namely, "aosilang dongai"
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 any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce satisfactory 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
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
"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."
The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by many years. The disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which promotes and offers for sale products in direct competition with those manufactured and sold by the Complainant.
The Panel considers the Respondent must have known of the Complainant and of its rights in the Trade Mark at the time the disputed domain name was registered. The evidence supports the conclusion that the Respondent has registered and used the disputed domain name for the purpose of attracting Internet users to the Website, for the purpose of marketing and selling the Respondent's products in direct competition with the products manufactured and sold by the Complainant under the Trade Mark and the OSRAM trade marks for many years. This conclusion is supported by the Respondent's unsuccessful attempts to register the AOSLAN and AOSLAN DONGAI澳司朗·东艾 device marks in China.
The Panel is therefore convinced that bad faith registration and use has been made out under paragraph 4(b)(iv) of the Policy.
For 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 11, 2015
1 The Complainant was invited in the Panel Order to comment in relation to these court proceedings. The somewhat unhelpful submissions received from the Complainant's representatives in response to the Panel Order simply asserted that there are no pending legal trials relating to the disputed domain name, and referred to the unrelated third party trade mark opposition proceedings and trade mark litigation in China involving the Complainant, which were already referred to in the Complaint.
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