The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is foshanshijiayaozhaomingyouxiangongsi of Foshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 35 Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2015. On December 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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. On December 3, 2015, the Complainant submitted a revised Complaint.
On December 4, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 7, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the revised 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceeding commenced on December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. The Response was filed with the Center on December 31, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 11, 2016. 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 is one of the three largest lighting manufacturing companies in the world. The Complainant is the owner of registrations dating back to 1913 in numerous countries and regions worldwide for its well-known word and figurative trade mark, OSRAM (the "Trade Mark"), including registrations in China, where the Respondent is based. B. Respondent
The Respondent is a company incorporated in China. C. The Disputed Domain Name
The disputed domain name was registered on September 1, 2015. D. The Website at the Disputed Domain Name
The disputed domain name is resolved to a website (the "Website") which features prominently the Complainant's figurative version of the Trade Mark, copies part of the Complainant's original website, and promotes and offers for sale lighting products in direct competition with those of the Complainant 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent contends that the disputed domain name has been lawfully registered with the Registrar in accordance with national law, and is being used in order to promote the Respondent's products, and not for any illegal purpose. 6. Discussion and Findings 6.1 Language of the Proceeding
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 proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding, in order 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 proceeding.
The Complainant made the following submissions in support of its language request:
(1) The disputed domain name was registered in ASCII characters using the Roman alphabet, and has a ".com" generic Top-Level Domain ("gTLD");
(2) The Respondent is obviously capable of understanding and using the English as the Website contains English words;
(3) The Complainant does not understand nor speak Chinese. The obligation to translate all case relevant documents would unfairly disadvantage the Complainant. It would be too cost-intensive and the proceeding would be unnecessarily delayed.
The Respondent did not make any submissions on the question of the language of the proceeding.
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 there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. Although the Website is predominantly in Chinese, it does contain some English wording such as "recommended products" and "contact us". The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner, and notes the Respondent has been silent on this issue.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding 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.
The disputed domain name comprises the Trade Mark in its entirety, preceded by the letters "fs", a common abbreviation in Latin script for Foshan, the name of the city in which the Respondent is based. The Panel finds the addition of the generic and descriptive letters "fs" does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark. 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 disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
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 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 has been 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, promotes and offers for sale lighting products in direct competition with those of the Complainant and, without the Complainant's authorisation, flagrantly copies part of the Complainant's original website, and brazenly reproduces the Complainant's figurative Trade Mark.
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 rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the evidence of the Respondent's use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used 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 name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: January 25, 2016
Full & Egal Universal Law Academy