The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Lirong Shi of Jinjiang, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with ! #1 Host Israel, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2016, 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 March 29, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 30, 2016, 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 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 proceedings commenced on April 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on May 17, 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
The disputed domain name was registered on December 27, 2015 and is used for a sports betting website and online advertisements for movies.
The Complainant is a German company, belonging to the OSRAM Licht group which was founded in 1919. The Complainant is the operative company of OSRAM Licht AG, headquartered in Munich, Germany. The Group employs more than 34,000 people and has operations in over 120 countries. In the financial year 2014, its revenue was about EUR 5.1 billion. OSRAM is one of the three largest lighting manufacturing companies and well known around the world.
OSRAM has expanded to the Asia-Pacific market, where it makes up to 16% of its sales. Its employee count in China is over 7,000. In July 2013, OSRAM Licht AG was listed on the Frankfurt Stock Exchange.
The Complainant has traded under the name “Osram” since its foundation. On April 17, 1906, the OSRAM trade mark was registered in respect of “electrical incandescent and arc lamps”. Since then, the Complainant has registered more than 500 OSRAM trade marks in over 150 countries and regions. The Complainant owns over 100 international OSRAM trade mark registrations. The Complainant is also the owner of more than 640 domain names based on the denomination “Osram” covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
As a result of its extensive, international use, the Complainant asserts that its OSRAM trade mark is well-known. In many earlier UDRP decisions, the OSRAM mark has been recognised as well-known worldwide. In Thailand and Germany, the OSRAM mark has been registered as a well-known mark. In China, an extract of the Customs webpage of the government of Shanghai states that “such famous trade mark infringement cases as ‘BENZ’, ‘KODAK’, ‘Philips’, ‘Osram’, ‘Galaxy and ‘Diamond’ have been seized in succession”. The International Economic and Trade Arbitration Commission (CIETAC) in China has also recognized that OSRAM marks have a high level of fame and reputation in China. 5. Parties’ Contentions A. Complainant
1. The Complainant asserts that the disputed domain name is identical or, at least, confusingly similar to the OSRAM mark owned by the Complainant. The disputed domain name contains the famous mark, OSRAM. The element “qd-” is to be regarded as insufficient to prevent Internet user confusion as it is purely descriptive with regard to lighting products as it stands for “quantum dot”, which is often used in relation with “leds” (light-emitting diodes).
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name: (i) the Respondent is not a holder of a trade mark, OSRAM, and is not a licensee of the Complainant; (ii) the Respondent is not commonly known by the disputed domain name; (iii) the Respondent is not an authorised dealer, distributor or licensor of the Complainant; (iv) the Respondent is not associated in any way with the Complainant; and (v) on the Respondent’s website, he does not explain that his website is not related with the Complainant.
3. The disputed domain name was registered and is being used in bad faith. The OSRAM mark is famous in relation to the Complainant, a reputed lighting manufacturer. The Respondent does not use the disputed domain name for personal, noncommercial interests. He is obviously trying to exploit the Complainant’s famous mark in order to attract potential clients.
The Respondent’s choice of the disputed domain name, which is virtually identical to the well-known OSRAM trade mark of the Complainant, clearly indicates bad faith. The Respondent’s sole purpose is to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website and products on his website. The registration of a domain name incorporating a well-known mark of another does not confer any rights or legitimate interests in the disputed domain name. The Respondent knew or should have known about the Complainant’s trade mark rights in OSRAM before registering the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Language of the Proceeding
The Complainant filed the Complaint in English and requested that English be treated as the language of the proceeding, even though the Registration Agreement is in Chinese. The arguments raised in support of its request are that there are not only English words and movie titles on the Respondent’s website, but also numerous advertisements and company names written in Latin letters. Further, it is evident from the Respondent’s website that the Respondent speaks and/or understands the English language and therefore he would not be disadvantaged by the proceeding being in English. The disputed domain name was registered in ASCII characters using the Roman alphabet. On the other hand, the Respondent does not understand or speak Chinese. An obligation to translate all the case file documents would unfairly disadvantage the Complainant and the proceeding would be unnecessarily delayed.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Pursuant to paragraph 11 of the Rules, the Panel finds it appropriate to hold that English shall be the language of the administrative proceeding. The Respondent’s choice of the disputed domain name and the content of his website reflect a level of familiarity and comfort with the English language and an intention to target English-speaking customers.
The Panel is of the view that requiring the Complainant to translate the Complaint and supporting evidence into Chinese would unduly delay the proceeding, which would be contrary to paragraph 10(c) of the Rules which prescribes that “the Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Respondent has been given a fair opportunity to respond to the Complainant’s claims and request for the language of the proceeding to be English, and has been apprised of the nature and content of the proceedings, since all communications sent by the Center to the parties were in both the Chinese and English languages.
The Panel therefore determines that English should be the language of the proceeding and believes the Respondent would not be prejudiced thereby. B. Identical or Confusingly Similar
The disputed domain name comprises a combination of the letters “qd”, a hyphen, the word “osram” and the gTLD “.com”.
The Complainant has established it has rights in the trade mark OSRAM. This trade mark has been incorporated in the disputed domain name and is identifiable therein. The Complainant has also explained what “qd” stands for in the context of lighting. In any case, these are generic letters of the alphabet, and whether or not they stand for anything specific, the Panel finds that their inclusion in the disputed domain name does not suffice to remove the confusing similarity with the Complainant’s OSRAM trade mark. The fact that “qd” does appear to signify a generic term, “quantum dots”, only serves to add to the confusion with the Complainant’s mark.
The additional element “.com” in the disputed domain name does not serve to remove the confusing similarity either as it is a technical requirement of registration. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The hyphen in the disputed domain name has no effect in removing the confusion with the Complainant’s mark.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark OSRAM in which the Complainant has rights.
Paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests
In relation to Paragraph 4(a)(ii) of the Policy, the Panel applies the consensus view of UDRP panelists, as captured in paragraph 2.1 of the WIPO Overview 2.0:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Panel is of the view that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent owns trade mark or other rights in OSRAM which, the Complainant has established, is a well-known mark. Further, there is no evidence of a business relationship between the Respondent and the Complainant whereby an inference of consent to the Respondent’s registration and use of the disputed domain name incorporating the OSRAM mark can be made.
The Respondent has remained silent in this proceeding. In the absence of any evidence to the contrary, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has therefore been satisfied. D. Registered and Used in Bad Faith
The Panel has determined on the facts presented, that the OSRAM mark is a well-known mark. The Respondent registered and used the disputed domain name incorporating the OSRAM mark in combination with the abbreviation “qd”, which strongly suggests that the Respondent was familiar with the Complainant, the industry it belongs to, and its OSRAM marks when he registered the disputed domain name. The Respondent has not shown any legitimate interests or rights in the mark OSRAM. In light of the OSRAM mark’s fame, the Panel would require very persuasive and clear evidence of good faith and legitimacy in the Respondent’s registration of the disputed domain name, which has not been provided, as the Respondent is in default.
The Panel finds that the circumstances of this case, specifically the use of the disputed domain name for gambling services and movie advertisements, fall within paragraph 4(b)(iv) of the Policy, i.e. “by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location”.
The Panel draws a negative inference from the Respondent’s failure to respond in this proceeding.
Paragraph 4(a)(iii) of the Policy has therefore been satisfied. 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: May 20, 2016
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