The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam of Hanoi, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 18, 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 August 18, 2017, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding.
On August 22, 2017, the Respondent submitted an email indicating that it will cancel the Disputed Domain Name. Accordingly, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by August 29, 2017. On August 22, 2017, the Complainant requested to suspend the proceeding. The Center notified the Parties that the proceeding will be suspended until September 21, 2017. On September 21, 2017, the Complainant submitted an email requesting to reinstitute the proceeding. The Center notified the Parties the proceeding was reinstituted as of September 21, 2017 and invited the Parties to comment on the language of the proceeding.
On September 22, 2017, the Complainant requested that English be the language of the proceeding. On September 25, 2017, the Respondent offered to transfer the Disputed Domain Name to the Complainant. The Complainant requested a further suspension on September 26, 2017. On the same day, the Center informed the Parties that the proceeding will be suspended until October 26, 2017. On October 26, 2017, the Complainant requested to reinstitute the proceeding. Therefore, the Center notified the Parties that the proceeding was reinstituted as of October 27, 2017.
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 English and Vietnamese of the Complaint, and the proceedings commenced on October 30, 2017. In accordance with the Rules, paragraph 5, the due date for the Respondent to respond was November 19, 2017. The Respondent did not file any response by the said due date.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on November 22, 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 Germany-based company, belonging to the OSRAM Licht Group (the “OSRAM Group”), which was founded in 1919 and became one of the largest European light bulb manufacturers.
The Complainant’s main businesses comprises technology and innovation led applications based on semiconductor technologies, addressing new trends of the lighting industry market, including, amongst others, semiconductors, automotive and specialty lighting, luminaries & solutions. The Complainant is the operative company of OSRAM Licht AG, headquartered in Munich, Germany.
In July 2016, the Complainant legally carved out part of its business, transferring it to its fully owned subsidiary, LEDVANCE GmbH, which is now responsible as licensee of the Complainant for the distribution of OSRAM products in many countries. LEDVANCE GmbH’s portfolio comprises LED Lamps and Classic Lamps & Ballasts.
The OSRAM Group employs more than 33,000 people and has operations in over 120 countries. In the financial year 2015, its revenue was about EUR 5.6 billion. The Complainant was one of the three largest lighting manufacturing companies and well-known around the world.
The OSRAM trademark was registered on as early as May 30, 1906 for “electrical incandescent and arc lamps” in Class 11 in Germany (Registration No. VR190600233).
The Complainant owns over 100 international registrations and more than 500 national registrations for OSRAM trademarks and service marks in more than 150 countries and regions around the world.
The Complainant’s OSRAM trademark has been recognized as well-known in many earlier UDRP decisions (e.g., OSRAM GmbH v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004; Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Entrprise Ltd.,WIPO Case No. D2008-1032; OSRAM GmbH v. Kim Chanroc,WIPO Case No. D2015-0742; OSRAM GmbH v. Domain Administrator, See PrivacyG / Ario Mardowo,WIPO Case No. D2016-0267 etc.).
The Complainant also owns more than 640 domain names under generic Top-level Domains (“gTLD”) and country-code Top-level Domains (“ccTLD”) containing the term “osram”.
The Respondent registered the Disputed Domain Name on June 22, 2017. As of the date of this Decision, the Disputed Domain Name is resolving to an inactive website. However, the Disputed Domain Name used to resolve to a web shop of the Respondent via which lighting products of diverse producers are advertised and offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Firstly, the Complainant contends that the Complainant is the operative company of the OSRAM Group, which has been for many years the right holder of the OSRAM trademarks and service marks in numerous countries and regions worldwide. The OSRAM trademark well predates the Respondent’s registration of the Disputed Domain Name.
Secondly, the Complainant contends that the Disputed Domain Name is identical with or at least confusingly similar to marks owned by the Complainant and the Complainant’s company name by arguing that:
(a) the Disputed Domain Name comprises the famous trademark OSRAM, which stands out and leads the public to think that the Disputed Domain Name is somehow connected to the owner of the registered trademarks; and
(b) the additional letters “hbg” are to be regarded as insufficient to prevent Internet user confusion, as such letters do not convey any significant meaning, while containing “osram” element could leads the public to connect the Disputed Domain Name to the owner of the registered trademark.
Finally, the Complainant submits that the addition of the gTLD suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
Firstly, the Respondent is not holder of a trademark OSRAM and has no rights or legitimate interests in the name “osram”.
Secondly, the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as the Respondent has no license from the Complainant with regard to the trademark rights or the right to register the Disputed Domain Name. The Respondent is also not commonly known by the Disputed Domain Name.
Thirdly, the Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Fourthly, the Respondent does not explain that the website is not related to the Complainant.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the OSRAM mark is famous in relation to the Complainant, a reputed lighting manufacturer and the Disputed Domain Name is in use for a web shop of the Respondent, via which lighting products of diverse producers are advertised and offered.
Secondly, the Complainant further submits that the Respondent does not use the Disputed Domain Name for personal noncommercial interests, but obviously try to exploit the Complainant’s famous trademark in order to attract potential clients.
Thirdly, the Complainant contends that the Respondent’s choice of the Disputed Domain Name, which is virtually identical to the well-known OSRAM trademark of the Complainant, clearly indicates bad faith intents to register and use of the Disputed Domain Name. 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 its website and products on its website.
Finally, the Complainant argues that 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 trademark rights in OSRAM before registering the Disputed Domain Name.
Therefore, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent sent to the Center and the Complainant two emails on August 22, 2017 and September 25, 2017 respectively, stating its intention to transfer the Disputed Domain Name to the Complainant. However, the Respondent neither timely signed the settlement agreement offered by the Complainant so far nor submitted any response to the Complainant’s arguments and/or contentions by the due date of November 19, 2017. Accordingly, the Panel draws inference from the two aforesaid emails by the Respondent in the below decision. 6. Discussion and Findings A. Procedural Issues
Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated August 18, 2017, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.
The Center, upon expiration of first suspension of the proceeding, notified the Parties the proceeding was reinstituted as of September 21, 2017 and also invited the Parties to comment on the language of the proceeding.
On September 22, 2017, the Complainant submitted its confirmation of request that English be the language of the proceeding. The Respondent submitted neither request nor comment.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the nationality of the Parties;
(ii) the fact that the Complainant, a German entity, does not appear to be able to communicate in Vietnamese; and
(iii) the fact that the Respondent is obviously capable of understanding and using English as two emails of August 22, 2017 and September 25, 2017 by the Respondent are written in English.
Hence, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. For the purpose of easy comprehension of the Complainant (the only Party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English. B. Identical or Confusingly Similar
The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it or the OSRAM Group which the Complainant belongs to has registered trademark rights to OSRAM, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer products in lighting industry for both consumers and professional users worldwide.
Second, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known OSRAM mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the element “hbg”, subsequent to the word “osram”. In this regard, from its own search, the Panel finds that the element “hbg” has been registered as a trademark of the Respondent in Vietnam.
However, the Panel refer to views noted in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”, and determines that despite the fact that the Respondent incorporates its registered trademark “hbg” into the Disputed Domain Name, taking into account the position of such an element (i.e., at the end of the phrase “osramhbg”) and the undisputed fame of the element “osram”, “osram” is clearly recognizable and remains the prominent element in the Disputed Domain Name.
As such, the addition of the letters “hbg” to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark. Thus, in the Panel’s view, the addition of the letters “hbg” is not sufficient to distinguish the Disputed Domain Name from the trademark, nor to dispel the risk of confusing similarity.
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s OSRAM trademark, and the first element, paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the OSRAM trademark.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria.
Indeed, the Panel finds that before and on the date on which the Complaint was filed, on the website under the Disputed Domain Name, the Respondent sold a variety of lighting products, including both those under the OSRAM trademarks and those from other manufacturers. Hence, there is a possibility that the Respondent is using the OSRAM trademark in the Disputed Domain Name to bait consumers and then switch them to other goods.
In addition, on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of a relationship with the Complainant, but listing OSRAM and LEDVANCE (among others) as its “Đối tác tin cậy” (English translation: “reliable partners”), using the trademarks OSRAM and LEDVANCE in word and figurative form and putting the links to the Complainant’s official websites “” and “”, which may be further evidence of the Respondent’s intention to create an impression that the Respondent is somehow in association with the Complainant or it is legally entitled to use the Complainant’s OSRAM trademarks, while no such right exits.
For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services under the Oki Data criteria.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the OSRAM trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Additionally, the Respondent’s statements in its emails of August 22, 2017 and September 25, 2017 that “We do not intend to infringe on Osram’s intellectual property rights” and that “We’re going to transfer this domain to you” is further indicative of the Respondent’s awareness and admission of its lack of rights and legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular, but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not submit substantive reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s OSRAM trademarks have been registered on a worldwide basis.
The Disputed Domain Name comprises the OSRAM trademark in its entirety, adding three letters “hbg”, which does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel the risk of confusing similarity as discussed in Section 6.B above. OSRAM is being used in the Complainant’s OSRAM trademarks, trade name, and domain names, which all well predate the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Complainant’s OSRAM trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and its OSRAM trademark before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
The Panel finds that, similar to numerous previous UDRP decisions, the use of a Complainant’s mark to attract visitors to such a for-profit site constitutes bad faith (see e.g., Pfizer Inc. v. Fizer Inc.,WIPO Case No. D2005-0285).
Further, the Panel finds that in addition to the adoption of the Complainant’s well-known trademark as a distinctive part in the Disputed Domain Name, on the website resolved to by the Disputed Domain Name, the Respondent also used, without permission, the Complainant’s trademarks OSRAM and LEDVANCE in word and figurative form and placed links to the Complainant’s official website “” and a statement on a misleading relationship with the Complainant as above-mentioned. Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Name to mislead consumers into believing that the website under the Disputed Domain Name is in somehow associated, fostered or recommended by the Complainant.
Moreover, the Panel finds that by the date of this Decision, the Disputed Domain Name resolved to a website selling lighting and other electronic products not only of the Complainant, but also of the Complainant’s competitors. This creates a likelihood of confusion as to sponsorship, affiliation with, and endorsement by the Complainant of the site to which the Disputed Domain Name resolves, to the online retailers to which that site links, and to the products of other competitors that are sold on those sites. The Panel finds that the likelihood of confusion as said is an indication of bad faith use of the Disputed Domain Name.
Last but not least, in the emails of August 22, 2016 and September 25, 2017, the Respondent stated its intention not to use the Disputed Domain Name anymore and to transfer the Disputed Domain Name to the Complainant However, as mentioned in the letter dated October 26, 2017 by the Complainant, the Respondent did not sign the Standard Settlement Form as requested by the Complainant. Although the website under the Disputed Domain Name was inactive as of the date of this Decision, the Panel finds that the Respondent does not comply with its statements in its correspondence to the Complainant and the Center, making the proceeding prolonged, and indeed, attempts to gain commercial benefits from running the website under the Disputed Domain Name even after being notified of the Complaint and the respective proceeding. These facts are indicative of bad faith from the side of the Respondent.
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see in the same way Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031).
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 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.
Pham Nghiem Xuan Bac
Sole Panelist
Date: December 5, 2017
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