The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Nguyen Van Huyen of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
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 June 26, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2018, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Vietnamese, confirming that the Respondent is listed as the registrant, and providing the registrant's contact details.
On July 3, 2018, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the disputed domain name is Vietnamese. On July 5, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any requests regarding 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 Vietnamese, and the proceedings commenced on July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on August 8, 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, 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 and solutions. The Complainant is the operative company of OSRAM Licht AG, headquartered in Munich, Germany.
The OSRAM Group employs more than 26,000 people and has operations in over 120 countries. In the financial year 2017, its revenue was about EUR 4.1 billion. The Complainant was one of the largest lighting manufacturing companies.
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 also owns more than 640 domain names under generic Top-level Domains ("gTLDs") and country code Top-level Domains ("ccTLDs") containing the term "osram".
The Respondent registered the Disputed Domain Name on June 8, 2018. 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 were 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 rights 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 addition of the descriptive term "den", which means "lights" in Vietnamese, is descriptive with regard to the business of the Complainant.
Finally, the Complainant submits that the addition of the gTLD suffix ".com" in the Disputed Domain Name is to be disregarded under the confusing similarity test.
(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 by the Respondent.
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 licensee 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 that 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 intent to register and use 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, all three elements of the Policy are established and the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural Issue: Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated July 3, 2018, 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 (ii) a translation of the Complaint into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.
On July 5, 2018, the Complainant confirmed its 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, while the Respondent appears capable of understanding and using English as its own website "www." contains some English words such as "lighting", "hotline", "catalogue" and "smart"; and
(iii) the Complainant is the only Party that is active in this UDRP proceeding.
Hence, if the Complainant were 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 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. Also, the Complainant has 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 OSRAM mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix "den", which is written with an accent mark as "đèn" in Vietnamese and means "lights" in English.
The Panel finds that "osram" remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as "den") to a trademark does not prevent confusing similarity, thus, in the Panel's view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the trademark, nor to avoid confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp,WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien,WIPO Case No. D2012-2320).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD ".com" to the Disputed Domain Name may be disregarded for the purposes of comparison under this element (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. However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria as by 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.
For the 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 to show 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.
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 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 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 Enterprise 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 Disputed Domain Name comprises the OSRAM trademark in its entirety, adding the descriptive term "den", 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. Vietnamese customers are very likely to easily perceive the term "den" as "đèn" ("lights" in English). 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)
On the date of this decision, the Panel accessed the Disputed Domain Name and finds that it resolves to an inactive website. However, it is well proved and evidenced by the Complainant that by the filing date of the Complaint, the website under the Disputed Domain Name had been used for 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 resolved, to the online retailers, to which that site linked, and to the products of other competitors that were 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.
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: August 22, 2018
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