The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondents are Shin Pil Sup of Seoul, Republic of Korea and Paul David Song of Seoul, Republic of Korea (collectively referred to as “the Respondent”), self-represented. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , and are registered with the Registrar, Megazone Corp., dba HOSTING.KR.
The disputed domain names and are registered with the Registrar, Uniregistrar Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 2, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names, , , , , , , , and . On May 3, 2018, the Registrar, Megazone Corp., dba HOSTING.KR, transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean; that the disputed domain names, , , , , , , and , are registered to the Respondent Shin Pil Sup; and providing the registrant’s contact details. On the same date, the Registrar, Uniregistrar Corp, transmitted by email to the Center its verification response confirming that the language of the registration agreement is English; that the disputed domain names and are registered to the Respondent Paul David Song; and providing the registrant’s contact details.
On May 7, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain names and is English, while the language of the registration agreement for the remaining disputed domain names , , , , , and is Korean. On May 9, 2018, the Complainant requested for English to be the language of the proceeding. On May 10 and May 11, 2018, the Respondent requested for Korean to be 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 in English and Korean of the Complaint, and the proceedings commenced on May 15, 2018.
On May 17, 2018, the Complainant requested that the domain names, , , , , , , , , , , , , , , , , , and , be added to the proceeding (the “Additional Domain Names”).
In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on June 5, 2018, that it would proceed to appoint the panelist in this proceeding.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 18, 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.
On June 20, 2018, at the request of the Panel, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Additional Domain Names. On June 25, 2018, the Registrar, Megazone Corp., dba HOSTING.KR, transmitted by email to the Center its verification response confirming that the language of the registration agreement is Korean; that the Additional Domain Names are registered to the Respondent Shin Pil Sup; and providing the registrant’s contact details.
On June 25, 2018, the Panel issued Administrative Panel Procedural Order No. 1, granting the Complainant’s request for the inclusion of the Additional Domain Names to this proceeding. The Respondent did not comment on the inclusion of the Additional Domain Names. 4. Factual Background
The Complainant is OSRAM GmbH, the German operative company of OSRAM Licht AG, an international lighting manufacturer headquartered in Munich, Germany. According to the Complaint, until recently, OSRAM Licht AG was one of the three largest lighting manufacturing companies in the world.
According to the Complaint, the Complainant owns more than 500 registered trademarks incorporating the term “OSRAM” in over 150 jurisdictions, of which one of the registration dates back to April 17, 1906. The Complainant also owns more than 100 international “OSRAM” trademarks.
The Respondent is Shin Pil Sup and Paul David Song, of the Republic of Korea and registered owners of the disputed domain names. The Respondent did not file a formal Response, and consequently little information is known about the Respondent. The Respondent Paul David Song was previously involved in a UDRP proceeding with the same Complainant regarding the same trademark, in which he was ordered to transfer the disputed domain names to the Complainant. See, e.g., OSRAM GmbH v. Privacydotlink Customer 3069957, 3069958, 3069959, 3069960 / Paul David Song,WIPO Case No. D2017-2307 (the “Previous WIPO Proceeding”).
The disputed domain names were registered as follows:
1
January 30, 2018
2
January 17, 2018
3
December 13, 2017
4
January 17, 2018
5
January 30, 2018
6
March 2, 2018
7
January 30, 2018
8
August 22, 2017
9
August 22, 2017
10
May 3, 2018
11
May 3, 2018
12
May 3, 2018
13
May 3, 2018
14
May 3, 2018
15
May 3, 2018
16
May 3, 2018
17
May 3, 2018
18
May 3, 2018
19
May 3, 2018
20
May 3, 2018
21
May 3, 2018
22
May 3, 2018
23
May 3, 2018
24
May 3, 2018
25
May 3, 2018
26
May 3, 2018
27
May 3, 2018
According to evidence submitted by the Complainant, the disputed domain names , , and resolved to websites displaying information about “Metal Oxide Semiconductor Random access memory”. The other disputed domain names appear to have resolved to registrar parking pages offering the respective disputed domain names for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or at least confusingly similar to the trademark owned by the Complainant in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names and that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant notes inter alia that: (i) the Respondent has engaged in a pattern of conduct by continuously registering more domain names that all incorporate the Complainant’s mark; (ii) the disputed domain names are mostly for sale; and (iii) the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain names. B. Respondent
The Respondent did not submit any substantive reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. The language of the registration agreement for the disputed domain names and is English, while the language of the registration agreement for the remaining disputed domain names is Korean. On May 9, 2018, the Complainant requested for English to be the language of the proceeding. On May 10 and May 11, 2018, the Respondent requested for Korean to be the language of the proceeding.
In determining the language of the proceeding in the present case, noting section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considered the following circumstances: (i) it is apparent from the communications in the Previous WIPO Proceeding that the Respondent understands and is capable of communicating in English; (ii) the language of the contents on the webpage under some of the disputed domain names is English; (iii) the languages of the registration agreement for some of the disputed domain names are English; and (iv) ordering the Complainant to translate the Complaint in English will cause undue delay in the proceeding.
In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint filed in English and issue a decision in English. 6.2. Consolidation of Multiple Respondents
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Here the registrants of the disputed domain names are identified as “Shin Pil Sup” and “Paul David Song”. While the disputed domain name registrants are nominally distinct individuals, the Panel notes that the WhoIs information for all disputed domain names lists the same phone number and email address. This strongly supports the inference that the disputed domain names, if not registered by the same individual, are subject to common control. In the circumstances, and having regard to section 4.11 of WIPO Overview 3.0, the Panel upholds the Complainant’s request for consolidation of multiple respondents as being fair and equitable to all Parties. 6.3. Additional Domain Names
After the commencement of the proceedings, the Complainant filed an amendment to the Complaint on May 17, 2018 to add 18 Additional Domain Names to the proceedings.
Section 4.12.2 of the WIPO Overview provides that it is up to the Panel to determine whether or not to accept requests to add domain names to the Complaint after the Respondent has been notified and the proceedings have formally commenced.
In the Previous WIPO Proceeding, the panel decided to reject the Complainant’s request to amend the Complaint on the grounds that the Complainant failed to provide the evidence of the respondent gaming or attempts to frustrate the proceedings and that granting the request would be unfair to the Respondent given that all requests were on or after the due date for the Response.
However, the facts and circumstances surrounding the Complainant’s request to amend the Complaint in the present proceeding are distinguished from those in the Previous WIPO Proceeding In determining whether to accept the Complainant’s amendment request, the Panel considers following facts and circumstances:
1. Unlike the request to amend the complaint made in the Previous WIPO Proceeding, the request in the current proceeding was made before the due date for the Respondent to reply.
2. The Panel confirmed that the requested Additional Domain Names are registered to the same Respondent, Shin Pil Sup .
3. The Additional Domain Names were registered after the Complaint was filed. Therefore, the Complainant could not have included the Additional Domain Names in the original Complaint.
4. The Additional Domain Names incorporate the Complainant’s trademark in the same way as the disputed domain names in the Complaint, and thus, the issues to be determined are identical or substantially similar. Thus, the submission of a separate complaint would be redundant and unnecessary and would prejudice the Complainant.
5. Considering the timing of the registration of the Additional Domain Names, which was one day after the filing of the Complaint, the Panel finds the high possibility of the Respondent gaming/attempts to frustrate the proceedings. The Panel finds that the Respondent continues to engage in the behavior of registering the domain names incorporating the trademark of the Complainant in the same way even after the decision of the Previous WIPO Proceeding.
In light of the above-listed facts and circumstances, the Panel finds that it would be procedurally efficient, fair, and equitable, to accept the Complainant’s request to include the Additional Domain Names in this proceeding. Thus, the Complainant’s request to add the Additional Domain Names to the Complaint is hereby granted. A. Identical or Confusingly Similar
All of the disputed domain names (including the Additional Domain Names) incorporate the mark “osram” entirely with additions of either descriptive or meaningless terms or letters, except for one name which replaces the letter “o” in the “osram” with the letter “q.” Section 1.7 of WIPO Overview 3.0 provides that “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar.” Section 1.8 of WIPO Overview 3.0 also provides that an addition of a descriptive or meaningless term would not prevent a finding of confusing similarity if the relevant trademark is recognizable within the disputed domain names. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant asserts, with various documentations and supporting materials, that the Respondent lacks any rights or legitimate interests in the disputed domain names.
Section 2.1 of WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
After reviewing the assertions made in the Complaint and the supporting materials thereto, the Panel finds that the Complainant has established a prima facie case that the Respondents do not have rights or legitimate interests in the disputed domain names. As noted by the Complainant, there has been no authorization from the Complainant for the Respondent to use the Complainant’s mark. The Panel accepts that the Respondent’s behavior evidences a pattern of conduct through which the Respondent is attempting to sell the disputed domain names incorporating the Complainant’s mark. As such, the Respondent cannot be said to be engaged in a bona fide offering of goods or services. In this regard, the Panel considers the use of the disputed domain names , , and to be merely pretextual, in light of the use to which the other disputed domain names have been put. On the other hand, by never responding to the Complainant’s position, the Respondent failed to provide evidence of any of the circumstances provided in paragraph 4(c) of the Policy.
In light of the above analysis, along with the inferences available to be made in case of the absence of a response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
According to paragraph 4(b)(i) of the Policy, bad faith can be found when there are circumstances indicating that the respondent has registered or 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 consdieartion in excess of the respondent’s documented out-of-pocekt costs directly related to the domain name. Paragraph 4(b)(ii) of the Policy states that bad faith can be found when the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a correponding domain name, provided that the respondent has engaged in a pattern of such conduct. Paragraph 4(b)(iv) of the Policy further states that bad faith may be found when the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Section 3.1.1 of WIPO Overview 3.0 also provides that “if on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent.” Such circumstances include: “(i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent . . . (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.” In determining bad faith pursuant to the above provisions of the Policy, this Panel considers the following facts and circumstances:
(1) It is evident that the Respondent had knowledge of the Complainant’s rights because one of the named Respondents was previously involved in a UDRP proceeding with the same Complainant and the same trademark. The Panel also accepts that the Complainant’s trademark is distinctive and widely known.
(2) The Respondent showed a pattern of abusive behavior by registering 4 disputed domain names addressed in the Previous WIPO Proceeding and 27 disputed domain names addressed in the current proceeding.
(3) It is clear that the Respondent registered the disputed domain names incorporating the Complainant’s trademark ignoring the decision from the Previous WIPO Proceeding including registering the Additional Domain Names after the filing of the current Complaint.
(4) According to the evidence submitted by the Complainant, the Respondent previously offered the sale of the disputed domain names. However, the contents of the websites which offered the sale of the disputed domain names have been deleted at some point, and such websites now only show the same contents as the contents shown in “www..” The Panel considers that this behavior by the Respondent is pretextual and amounts to an attempt to trick and frustrate this proceeding.
In light of the above facts and circumstances, the Panel finds that the Respondent registered and used the disputed domain names in bad faith. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Date: July 9, 2018
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