The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is yidan yuan, yi dan yuan of Guilin, Guangxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 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 April 3, 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 April 4, 2017. The 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 the Respondent of the Complaint in English and Chinese, and the proceeding commenced on April 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 15, 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 belongs to the OSRAM Licht group, which was founded in Germany in 1919. The OSRAM Licht group manufactures lighting and has made extensive use of the OSRAM trademark in many countries around the world. The Complainant is the operating company of OSRAM Licht AG, an international joint stock company. The Complainant has registered multiple trademarks for OSRAM in multiple jurisdictions, including international trademark registrations numbers 321818, 409023, 501480, 567593, 614357 and 676932, registered from September 26, 1966, July 11, 1974, April 1, 1986, February 15, 1991, February 23, 1994 and April 16, 1997, respectively. These registrations specify goods in multiple classes. The Complainant has also registered numerous domain names incorporating the trademark OSRAM, including .
The Respondent is an individual or organization located in Guilin, China. The registrant name for the disputed domain name is “yidan yuan” and the organization name is “yi dan yuan”, both of which are a transliteration of Chinese words meaning “a unit”. The disputed domain name was created on March 1, 2016 and resolves to an untitled website in Chinese offering pornographic photographs and videos to registered users. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s OSRAM trademark. The absence of the letter “a” is not sufficient to prevent a risk of confusion. It is likely that persons who search for OSRAM erroneously type the disputed domain name. The Top-Level Domain (“TLD”) suffix “.wang” should be disregarded under the confusing similarity test since it is a technical requirement of registration.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant with regard to the OSRAM trademark or the right to register the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not an authorized dealer, distributor or licensee of the Complainant nor associated in any way with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but, rather, is using it with a pornographic website.
The disputed domain name was registered and is being used in bad faith. OSRAM is a famous trademark belonging to the Complainant. The Respondent knew, or should have known, about the Complainant’s trademark rights before registering the disputed domain name. The Respondent uses the disputed domain name with a pornographic website, which intentionally tarnishes the OSRAM trademark. The disputed domain name is used to attract traffic to the Respondent’s website, not for personal noncommercial interests. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides 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.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that it does not understand Chinese and that translation of all documents would create unnecessary expense and delay. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Having received notice of the Complaint in Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the OSRAM trademark.
The disputed domain name incorporates the Complainant’s OSRAM trademark in its entirety but for the letter “a”. The omission of the letter “a” is an obvious misspelling of the Complainant’s OSRAM trademark. Accordingly, it does not dispel the confusing similarity of the disputed domain name with that trademark.
The only additional element in the disputed domain name is the TLD suffix “.wang”. A TLD suffix generally has no capacity to dispel confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. In this case, the TLD suffix “.wang” is a transliteration of a Chinese word meaning simply “net”, as in “Internet”, which does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark 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 trademark or service mark at issue.
The Respondent uses the disputed domain name in connection with an offering of pornographic content to registered users. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s OSRAM trademark and the Complainant submits that the Respondent is not an authorized dealer, distributor or licensee of the Complainant or associated in any way with the Complainant. Nothing on the Respondent’s website indicates any reason why the Respondent would register the letters “osrm” as a domain name other than in an attempt to attract Internet users who misspelled the Complainant’s trademark, thereby taking advantage of the reputation of the Complainant’s trademark to misleadingly divert consumers. That is not a legitimate interest within the terms of the first circumstance of paragraph 4(c) of the Policy.
The Respondent’s name and organization name, according to the Registrar’s WhoIs database, are “yidan yuan” and “yi dan yuan”, not “osrm” or anything similar. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of the second circumstance of paragraph 4(c) of the Policy.
The Respondent is using the disputed domain name in connection with a commercial website. That is not a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut the Complainant’s prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain name was created in 2016, many years after the Complainant registered its OSRAM trademark. The Complainant has made extensive use of that trademark. The disputed domain name is an obvious misspelling of the Complainant’s OSRAM trademark (plus a TLD suffix). Nothing on the Respondent’s website indicates any legitimate reason why the Respondent would register the letters “osrm” as a domain name other than in an attempt to attract Internet users who misspelled the Complainant’s trademark. This all gives the Panel reason to believe the Respondent deliberately chose to register a domain name confusingly similar to the Complainant’s trademark in bad faith.
The disputed domain name is used to attract Internet users who misspell the Complainant’s trademark and direct them to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a service on that website. This use is intentional and for commercial gain. Accordingly, the Panel finds that these facts fall within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 the Complainant.
Matthew Kennedy
Sole Panelist
Date: May 19, 2017
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