Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is Zhang Jian Gong, He Nan Lin Feng Zhao Ming Dian Qi You Xian Gong Si of Zhengzhou, Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GuangDong NaiSiNiKe Information Technology Co Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On December 5, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 8, 2016, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
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 Respondent of the Complaint, and the proceedings commenced on December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on January 10, 2017. 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
Complainant, OSRAM GmbH, is a company incorporated in Munich, Germany. Complainant belongs to OSRAM Licht group, which was founded in Germany in 1919. Complainant and its related group companies (together “OSRAM”) was one of three largest lighting manufacturing companies in and well-known around the world. OSRAM Licht group employed more than 33,000 people and had operations in over 120 countries. In the 2015 fiscal year, a revenue of about 5.6 billion Euros was achieved.
Complainant owns numerous trademark registrations for the word mark OSRAM over 150 countries and regions, including international registrations (since 1975; see Annex 10 to the Complaint). It also owns numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as , and (see Annex 19 to the Complaint).
Respondent is Zhang Jian Gong, He Nan Lin Feng Zhao Ming Dian Qi You Xian Gong Si of Zhengzhou, Henan, China. The disputed domain name was registered on June 16, 2016. The registration date of the disputed domain name is long after Complainant’s OSRAM marks became internationally well known. The disputed domain name resolved to a website where Respondent holds itself out as being an affiliate of Complainant, including content copied directly from Complainant’s official website, and purporting to offer OSRAM branded products being offered by Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or at least confusingly similar to the OSRAM Marks in which Complainant has rights. The only difference is the additions of the descriptive word “hnlf”, which is descriptive with respect to lighting, and the non-distinguishing generic Top-Level Domain (“gTLD”) “.com.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not formally reply to Complainant’s contentions. 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 specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant does not understand or speak Chinese language.
(b) The obligation to translate all case relevant documents would unfairly disadvantage complainant. It would be too cost-intensive and the proceeding would be unnecessarily delayed.
(c) The disputed domain name was registered in ASCII characters using the Roman alphabet.
(d) The generic top level domain (gTLD) “.com” was chosen. The addresses of “.com” domains are located everywhere around the world and they usually speak and understand English.
(e) English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
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 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 (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3, further provides:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
In this case, the Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “hnlf” (the acronym “hnlf” means “highly non-linear fibre”, which is a technical term in the field of fibre optics) and “osram” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047; OSRAM AG v. Guan Jing, Lin Jing, li xiaoyong,WIPO Case No. D2012-1690).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name was registered in Latin characters and is composed of abbreviation of English words (the acronym “hnlf” means “highly non-linear fibre”, as above), rather than Chinese script; (b) the website resolved from the disputed domain name is mainly in Chinese, but have many English words on the website, such as “about us”, “link” and “classic case” (and all case names on the website were in English, see Annex 2 to the Complaint); (c) the Center has notified Respondent of the proceeding in both Chinese and English; (d) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the OSRAM marks acquired through registration. The OSRAM marks have been registered worldwide, and Complainant has a widespread reputation as one of three largest lighting manufacturing companies in and well-known around the world.
The disputed domain name comprises the OSRAM Mark in its entirety. The disputed domain name simply connects the OSRAM Mark with the additional acronym “hnlf”. This does not eliminate the identity or the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
The addition of the acronym “hnlf” to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the confusing similarity. “hnlf” is descriptive with respect to lighting. The acronym “hnlf” means “highly non-linear fibre”, which is a technical term in the field of fibre optics. It is one of products produced by Complainant. The disputed domain name may lead to confusion on the part of Internet users who may falsely believe that the disputed domain name is operated by Complainant for providing OSRAM-branded products or services in China. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the OSRAM Marks.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the OSRAM marks globally since 1975 (see Annex 10 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (in 2016). It also owns numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as , and (see Annex 19 to the Complaint). According to Complainant, Complainant is one of three largest lighting manufacturing companies in and well-known around the world. OSRAM Licht group employed more than 33,000 people and had operations in over 120 countries. In the 2015 fiscal year, a revenue of about EUR 5.6 billion was achieved.
Moreover, Respondent is not an authorized dealer of OSRAM branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
More specifically, based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “osram” in its business operation or the use of the OSRAM Marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the OSRAM marks or to apply for or use any domain name incorporating the OSRAM marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2016, long after the registration of the first OSRAM Marks. The disputed domain name is identical or confusingly similar to Complainant’s OSRAM marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported OSRAM products at the disputed domain name (Annex 2 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the OSRAM mark with regard to its products. Complainant has registered its OSRAM marks internationally (since 1975). Moreover, the websites to which the disputed domain name resolves advertise for sale various purported OSRAM products (Annex 2 to the Complaint) (as mentioned above).
Respondent would likely not have advertised products purporting to be OSRAM products on the Website if it was unaware of Complainant’s reputation. In other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the OSRAM mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s OSRAM branded products.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s OSRAM branded products and services without authorization.
To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that the intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the OSRAM marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website (see Annex 2 of the Complaint). In other words, Respondent has through the use of confusingly similar domain name and webpage content created a likelihood of confusion with the OSRAM marks. Noting also that apparently no clarification as to Respondent’s relationship with Complainant is made on the homepage of the Website at the disputed domain name, Internet users are led to believe that the Website is either Complainant’s site or the site of official authorized agents of Complainant, which they are not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conducts of Respondent as far as the Website is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 Complainant.
Yijun Tian
Sole Panelist
Dated: January 23, 2017
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