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 MAFF Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant on May 9, 2018, and provided the contact details.
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").
On May 7, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 9, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on June 12, 2018. 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 is the operative arm of the Osram Licht group and has used the name "Osram" as its company name since its foundation in 1919. The "Osram" brand was first registered as a trademark for "electrical incandescent and arc lamps" in 1906 (see German trademark No. DE86924, registered on April 17, 1906). The Complainant has since expanded to become a global lighting manufacturer and is the owner of more than 500 OSRAM national trademark and service mark registrations as well as over 100 international trademarks and 640 domain names containing the denomination "Osram".
The disputed domain name was registered on January 31, 2016 by the Respondent Lirong Shi, located in Jinjiang, Fujian, China. The disputed domain name resolves to a gambling website with no apparent connection to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that it has both registered and unregistered rights in the mark OSRAM. The Complainant further submits that the disputed domain name is either identical or at least confusingly similar to the marks owned by the Complainant and the Complainant's company name, as it incorporates the entirety of the OSRAM trademark. The Complainant regards the addition of the letters "hn" as insufficient to prevent Internet user confusion and points out that the top-level suffix ".com" is to be disregarded when assessing similarity.
The Complainant states that to the best of its knowledge, the Respondent is not a holder nor licensee of a trademark OSRAM and has no rights or legitimate interests in the name "Osram". The Respondent did not register the disputed domain name with regard to rights it held, rather, the resolution of the disputed domain name to a gambling-related website demonstrates a commercial objective. The Complainant states that the Respondent is not commonly known by the disputed domain name, as neither "osram" nor "hnosram" are used in the website content. The Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is it associated in any way with the Complainant and is not making a legitimate noncommercial or fair use of the disputed domain name. Finally, the Complainant points out the Respondent does not explain that the website is not related to the Complainant.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith, as OSRAM is a famous trademark of the lighting manufacturer and the disputed domain name is in use for a gambling website. The Complainant contends that this shows the Respondent is obviously trying to exploit the Complainant's mark in order to attract potential customers, rather than using the disputed domain name for personal noncommercial interests. Moreover, the choice of a domain name that is virtually identical to the Complainant's trademark clearly indicates bad faith intent, the sole purpose being to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant as to its source, sponsorship, affiliation or endorsement. Apart from the above, the Respondent has not attempted to make any bona fide use of the disputed domain name. The Complainant contends that there can be no question that the Respondent knew or should have known about the Complainant's trademark rights prior to registering the disputed domain name because of the Complainant's worldwide well-known status. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement in this case is in Chinese, but the Complainant filed the Complaint in English and requested that English be the language of the proceeding for the following reasons:
- The Respondent clearly understands the English language, as the website to which the disputed domain name resolves contains English words like "16 March" and "views" as well as "style".
- The disputed domain name was registered in ASCII characters using the Latin alphabet, thus the same language/script as the Complainant's mark. Also, the generic Top-Level Domain ("gTLD") ".com" was chosen. The addresses of ".com" domains are located everywhere around the world and usually target audiences who speak and understand English.
- The Complainant does not speak or understand Chinese. The obligation to translate all relevant case documents would unfairly disadvantage the Complainant. It would be too cost-intensive and the proceeding would be unnecessarily delayed.
- Considering these circumstances, English as the language of the present proceedings is fair to both Parties and not prejudicial to either Party or his or her ability to articulate arguments. This conclusion accords with recent UDRP decisions, e.g., Orlane S.A. v. Yu Zhou He / He Yu Zhou,WIPO Case No. D2016-1763.
In accordance with paragraph 11 of the Rules:
"…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."
Therefore, prima facie, the language of the proceedings shall be Chinese.
Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement. The Complainant requests the Panel to consider paragraphs (i), (ii), (vi) and (x):
- evidence showing that the respondent can understand the language of the complaint;
- the language/script of the domain name particularly where the same as that of the complainant's mark;
- potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
- other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
With respect to paragraph (i) that the Respondent can understand the language of the Complaint, the presence of merely a few English words on what is otherwise a predominantly Chinese-language website is, in the Panel's view, not sufficient to demonstrate the Respondent understands or is able to communicate in English.
With respect to paragraph (ii) it also does not necessarily follow from the fact that the disputed domain name is in English and that the gTLD ".com" was chosen, that the Respondent is familiar with the English language. The registrants of ".com" domain names may well not be competent in English. As there has been no correspondence with the Respondent, the English language competency of the Respondent cannot be determined.
That said, it is well established that "Paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition." (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). The language requirement should not cause any undue burden on the parties or undue delay (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; Groupe Auchan v. Yang Yi,WIPO Case No. D2014-2094).
The Respondent was notified in both English and Chinese by the Center, of the nature and deadlines pertaining to the proceeding, as well as the issue of the language of the proceeding. Because the Respondent did not respond to the issue of language nor submit a Response to the Complaint, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy drafters' aim of facilitating a relatively time- and cost‑ efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding. A. Identical or Confusingly Similar
In order to bring a complaint, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the Complainant must first demonstrate substantive rights in the trademark on which the Complaint is based. The Panel finds that the Complainant has registered rights in the mark OSRAM by virtue of the Complainant's numerous national and international trademark registrations as well as unregistered rights as a result of its long history and extensive use of the mark around the world.
The Complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar is a relatively straightforward comparison and a domain name incorporating the entirety or dominant feature of the trademark will normally satisfy the threshold. When comparing the domain name with the trademark, the top-level ".com" suffix of the domain may be omitted (section 1.11 of WIPO Overview 3.0; G4S Plc v. Noman Burki,WIPO Case No. D2016-1383).
In this case, the disputed domain name incorporates the entirety of the Complainant's trademark OSRAM, and the addition of the letters "hn" appear meaningless (or are otherwise likely intended to refer to the Chinese province of Hainan) and do not prevent a finding of confusing similarity under the first element (VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269; section 1.8 of WIPO Overview 3.0).
The first requirement of the UDRP is therefore satisfied. B. Rights or Legitimate Interests
The Complainant must demonstrate that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(i) of the Policy).
The Complainant submits that to the best of its knowledge, the Respondent is neither a holder nor licensee of the trademark OSRAM and has no legitimate rights or interests in the name "Osram", the Respondent is not commonly known by the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Having made out a prima facie case, the burden of production now shifts to the Respondent (section 2.1 of WIPO Overview 3.0). By failing to respond, the Respondent has not presented any evidence to establish rights or legitimate interests under this element and none of the circumstances set out in paragraph 4(c) of the Policy which would justify such a finding are present in this case.
Considering the absence of a response by the Respondent to the Complainant's contentions, and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant's trademark, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second requirement of the UDRP is therefore satisfied. C. Registered and Used in Bad Faith
Finally, the Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Paragraph 4(b) of the Policy sets out circumstances which, 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. Subparagraph (iv) specifies using the domain name to intentionally attract, for commercial gain, Internet users to the 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 website or location, or of a product or service on the website or location.
In this regard, section 3.1.4 of the WIPO Overview 3.0 states that "panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith."
Furthermore, prior UDRP panels have made a finding of bad faith where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name (Yahoo! Inc. v. Yahoo-Asian Company Limited.,WIPO Case No. D2001-0051; Volkswagen AG v. Jan-Iver Levsen,WIPO Case No. D2015-0069).
The Complainant has demonstrated that the OSRAM trademark is an internationally well-known trademark used extensively over a long period of time. Given the ease with which it can be located on the Internet, and the distinctiveness of the mark, the Panel agrees there can be no question that the Respondent knew or should have known about the Complainant's trademark rights before registering the disputed domain name.
In addition, this presumption is reinforced by the lack of the Respondent's own rights to or legitimate interests in the disputed domain name and the fact that the disputed domain name resolves to a gambling website. The Respondent clearly intends to use the fame of the Complainant's trademark to attract potential customers to its website.
The lack of any credible reason for choosing the disputed domain name other than to profit from the substantial goodwill of the Complainant and the Respondent's failure to submit a response to the contrary, lead to the conclusion that the disputed domain name was registered and used in bad faith.
The third requirement of the UDRP is therefore 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.
Joseph Simone
Sole Panelist
Date: June 26, 2018
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