The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is LinDa Yin of Huizhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2017, 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 February 22, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 23, 2017. 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 of the Complaint in English and Chinese, and the proceedings commenced on March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 29, 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
The Complainant, OSRAM GmbH, is a German limited liability company, with headquarters in Munich. The Complainant belongs to the OSRAM group which was founded in Germany in 1919. OSRAM GmbH has been transformed into an international joint stock company, OSRAM Licht AG, and the operative company name is OSRAM GmbH.
The Complainant is an international company, employs currently more than 33,000 people and has operations in over 120 countries. The Complainant is concentrated on technology and innovation-led applications and its subsidiary, Ledvance GmbH, is responsible for the distribution of the OSRAM products.
The Complainant is the owner of numerous trademark registrations for the mark OSRAM around the world. For example: European Union trade mark registration no. 000027490 OSRAM, filed on April 1, 1996, and registered on April 17, 1998; United States of America trademark registration no. 1,552,573 OSRAM, registered on August 22, 1989; International trademark registration no. 567593 OSRAM, registered on February 15, 1991; and many more.
The disputed domain name was registered on February 24, 2016.
The Complainant is the owner of more than 160 domain names based on the denomination "osram", covering both generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs").
Currently, the disputed domain name resolves into a website offering the Complainant's lighting products and its competitors' products. 5. Parties' Contentions A. Complainant
The Complainant argues that the name "Osram" is protected as a trademark in various countries and regions around the world.
The Complainant further argues that the disputed domain name is identical or at least confusingly similar to marks owned by the Complainant and to the Complainant's company name.
The Complainant further argues that the dominant and distinctive feature of the disputed domain name is the well-known element "osram". The Complainant further contends that the additional letters "hz" used within the disputed domain name is the mere addition of a geographic designation and is to be regarded as insufficient to prevent threshold Internet user confusion.
The Complainant further argues that the Respondent is not a holder of a trademark OSRAM and has no rights or legitimate interests in the name "Osram".
The Complainant further argues that the Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is not licensee of the Complainant with regard to the trademark rights nor the right to register the disputed domain name. The Complainant further argues that the Respondent is not commonly known by the disputed domain name.
The Complainant further argues that the Respondent does not explain that the website under the disputed domain name is not related to the Complainant.
The Complainant further argues that the Respondent has registered and uses the disputed domain name in bad faith. The Complainant further contends that the Respondent does not use the disputed domain name for personal noncommercial interests, and that the Respondent is obviously trying to exploit the Complainant's famous trademark in order to attract potential clients.
The Complainant further argues that the sole purpose of the Respondent's act 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 its website or location.
The Complainant further argues that the Respondent knew or should have known about the Complainant's mark OSRAM before registering the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of February 20, 2017.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond to the Complainant's language request.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The website under the disputed domain name displays the OSRAM mark in Latin letters;
(iii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;
(iv) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English shall be the language of the proceeding. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous trademark registrations for the mark OSRAM. For example: European Union trade mark registration no. 000027490 OSRAM, filed on April 1, 1996 and registered on April 17, 1998; United States trademark registration no. 1,552,573 OSRAM, registered on August 22, 1989; International trademark registration no. 567593 OSRAM, registered on February 15, 1991; and many more.
The Complainant also owns domain names with the trademark OSRAM, i.e., ; ; ; ; and many more.
The disputed domain name is identical to the registered trademark OSRAM apart from the addition of the letters prefix "hz". The disputed domain name integrates the Complainant's trademark OSRAM in its entirety, as a dominant element.
The addition of the prefix "hz" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's OSRAM trademark as "hz" may be interpreted as an indication to the city of the Respondent - Hui Zhou. It is clear that the most prominent element in the disputed domain name is the term "osram". Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant's OSRAM trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain name from the registered trademark: "[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark" (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, "[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the Respondent.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the OSRAM trademark, or a variation thereof.
The Respondent had not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
In light of the above, and as set out in more detail below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark OSRAM and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark, the Complainant has owned a registration for the OSRAM trademark at least since the year 1966. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
In light of the Complainant's distinctive registered trademark and the Respondent's use of a confusingly similar domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Also, based on the Complainant's evidence, the Respondent appears to be operating a website under the disputed domain name pretending to be an official Chinese site of the Complainant, offering for sale the Complainant's products together with competing products of other brands, as well as links to other brands' websites. The Respondent is also displaying the Complainant's Osram brand, using the color the Complainant uses in connection with its brand and on its own website. These circumstances are considered to be clear indications of the Respondent's bad faith registration and use of the disputed domain name.
Having regard to the evidence on record, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to misleadingly create an impression of an association with the Complainant and profit therefrom. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith."
Based on the evidence that was presented to the Panel, including the Complainant's registered trademark, the use of the Complainant's trademark in the disputed domain name, the use of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: April 12, 2017
Full & Egal Universal Law Academy