The Complainant is OSRAM GmbH of Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Shen Duo Wu of China. 2. The Domain Name and Registrar
The disputed domain name is registered through Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing the identity and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 10, 2019.
On March 28, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 29, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Chinese, of the Complaint, and the proceedings commenced on April 11, 2019.
In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Complainant of the Respondent’s default on May 3, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on May 17, 2019. The Panel finds that the Panel 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 operational arm of the Osram Licht Group, which has used the name “Osram” as its company name since its founding in 1919. The company operates in over 120 countries and in 2018 earned revenues of approximately EUR 4.1 billion.
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 claims to own more than 500 national trademark and service mark registrations for the mark OSRAM, as well as over 100 international trademarks, and 640 domain name registrations containing the name “Osram”.
The disputed domain name was registered on November 23, 2018 by the Respondent, who is located in China. The disputed domain name resolves to a Chinese-language lighting website advertising goods of a Chinese company said to specialize in the sale of LED lamps. The company purports to act on behalf of various international lighting companies, including the Complainant and third party lighting companies such as Cree, Inc. The website also depicts the logos of established lighting companies including the Complainant and third party lighting companies. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark OSRAM in which it has rights. The disputed domain name contains its trademark OSRAM with the addition of the term “cree”, which the Complainant states in the circumstances for purposes of the first element test is a meaningless term and insufficient to prevent Internet user confusion that the disputed domain name is somehow connected to the Complainant.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons. To the best of the Complainant’s knowledge, the Respondent does not hold any rights in the trademark OSRAM and is not commonly known by the disputed domain name. The Respondent has not registered the disputed domain name in connection with any bona fide intent, as the Respondent is not an authorized dealer, distributor or licensor of the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and does not explain that the website is not related to the Complainant.
Registered and used in bad faith
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith for the following reasons. OSRAM is a famous trademark of the Complainant lighting manufacturer OSRAM GmbH. The Respondent is using the disputed domain name to advertise and offer for sale lighting products of the Complainant and its competitors. The Respondent is thereby trying to exploit the fame of the Complainant’s trademark to attract potential clients and make commercial gains by creating a likelihood of confusion as to the source of the goods offered on its website or affiliation of its website with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues A. Language of Proceeding
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.”
In this case, the language of the Registration Agreement is in Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding. It contends that the panel should proceed in English because the disputed domain name uses the Roman alphabet, the generic Top-Level Domain “.com” was chosen and the website is available in English, suggesting that the Respondent knows the English language. It also submits that the Complainant does not understand or speak Chinese and the obligation to translate the Complaint would cause an unfair disadvantage to the Complainant and unnecessary delays in resolving the present dispute.
The Panel agrees that requiring the Complainant to translate the Complaint would cause undue burden and delay. While it is unclear whether the Respondent is familiar with English, the Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and chose not to express a language preference or submit a Response. Given this, and noting the aim of conducting proceedings with due expedition and in a cost-efficient manner, the Panel will proceed in English. B. Transfer of the Disputed Domain Name containing a Third Party’s Trademark
The Panel notes that the Complainant has requested the remedy of transfer of a domain name which also contains a third party trademark CREE owned by the American lighting company Cree, Inc. (see, among others, United States of America trademark No. 3935629, registered on March 22, 2011, designating Class 11 goods including LEDs and lighting fixtures). This raises the issue of whether, if the Complainant is successful, a transfer of the disputed domain name would impinge on the rights of the third party.
Many Panels have encountered this scenario and have dealt with it in different ways, including ordering the requested transfer (WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674), ordering the requested transfer without prejudice to the rights of the third party (F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751), ordering the requested transfer where a letter of consent by the third party was provided (Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793), or deeming cancellation the appropriate remedy (Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794). 6.2 Substantive Issues A. Identical or Confusingly Similar
Under the first element of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has submitted a selection of registration certificates for national trademarks it owns for the mark OSRAM, designating lamps and lighting. The Complainant has also submitted evidence which supports that OSRAM is an internationally well-known trademark and a distinctive identifier of the Complainant’s products. Evidence includes numerous decisions in domain name disputes involving OSRAM, overseas court decisions, legal textbooks, and a Shanghai customs webpage describing “famous trademark infringement cases” including those involving the brand “Osram”. The Complainant has therefore proven it has the requisite rights in the mark OSRAM.
The test for identical or confusing similarity involves a side-by-side comparison of the disputed domain name with the trademark. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962).
In this case, the disputed domain name clearly contains the mark OSRAM, with the addition of the term “cree”, which is in fact a trademark belonging to the American lighting company Cree, Inc. This is insufficient to prevent confusing similarity with the Complainant’s mark and arguably implies an affiliation with lighting companies.
Accordingly, the Panel finds the disputed domain name is confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
Under the second element, the Complainant must demonstrate that the Respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
The Panel accepts that the Respondent is not an authorized dealer, distributor or licensor of the Complainant. In light of this, the Respondent cannot be making a bona fide or noncommercial use of the disputed domain name, as the Respondent is, without authorization, using the disputed domain name to advertise for sale OSRAM lighting products under the pretense of being an agent for the Complainant. Although the Respondent’s website provides a link to the official OSRAM website, this merely reinforces the confusion that the Respondent is an authorized distributor of OSRAM products in China when that is not the case.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 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).
A strong inference of bad faith can arise where the Respondent “knew or should have known” of the Complainant’s trademark rights (Volkswagen AG v. Jan-Iver Levsen,WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051). The fact that OSRAM is a famous international trademark, that the Respondent combined the word “osram” with the trademark of another lighting company (“CREE”), and that the Respondent’s website is used to promote lighting products clearly indicates that the Respondent knew of the Complainant and its trademark rights when registering the disputed domain name.
The Respondent’s subsequent use of the website to promote the sale of lighting products under the Complainant’s trademark, and under the guise that it is authorized by the Complainant, is further evidence of bad faith. It is a deliberate attempt to ride on the reputation of the Complainant’s mark OSRAM for commercial gain, by creating a likelihood of confusion that the website and its products are affiliated with or endorsed by the Complainant.
Therefore, the Panel finds the disputed domain name was registered and is being used 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 name be transferred to the Complainant.
The present transfer order is based on the understanding that the Complainant has brought this case for defensive purposes, and not to use the disputed domain name for active marketing purposes, and the Panel feels it appropriate to record here that should the Complainant ever use the disputed domain name without the express permission of Cree, Inc. then the latter may have a claim e.g., under the UDRP or for unfair trade.
Joseph Simone
Sole Panelist
Date: May 31, 2019
Full & Egal Universal Law Academy