The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is huangwenge, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 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 May 3, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2019, 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 May 13, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 14, 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 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 Chinese and the proceedings commenced on May 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2019. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent’s default on June 13, 2019. Within minutes, the Center received three communications from an unidentified email address. The Center acknowledged receipt of all these communications and requested confirmation of the sender’s identity in an email dated June 14, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 18, 2019. 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.
Five further communications from the same unidentified email address were received on June 19 and 21, 2019, in which the sender claimed to be the owner of the disputed domain name and confirmed that he had no relationship with the Complainant. The Center acknowledged receipt of all these communications and noted that the sender was the registrant and had no relationship with the Complainant. 4. Factual Background
The Complainant is a German lighting company. It is part of a corporate group with operations in many countries around the world. Its business is now focused on new trends in the lighting industry, including optoelectronic semiconductors, automotive and specialty lighting, luminaries and solutions. The Complainant has obtained multiple trademark registrations for OSRAM in multiple jurisdictions, including international trademark registration number 325028, registered on November 7, 1966, designating multiple jurisdictions and specifying goods in classes 1, 9, 10 and 11; and international trademark registration number 567593, registered on February 15, 1991, designating multiple jurisdictions, including China, and specifying goods in classes 6, 7, 8, 9, 10, 11, 17 and 21. Those trademark registrations remain current.
The Respondent is an individual resident in China.
The disputed domain name was registered on July 12, 2018. It does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or at least confusingly similar to the Complainant’s OSRAM trademark. The additional letter “e” is insufficient to prevent Internet user confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not own any OSRAM trademark and is not commonly known by the disputed domain name. The Respondent is not an authorized dealer, distributor or licensee of the Complainant nor in any way associated with the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent has registered the disputed domain name within the circumstances of paragraph 4(b(iii) and (iv) of the Policy. Even though the Respondent does not actively use the disputed domain name, the registration of the disputed domain name consisting of the well-known OSRAM trademark and only one additional letter “e” constitutes bad faith. The Respondent does not use the disputed domain name for personal noncommercial interests nor has she or he attempted to make any bona fide use of the disputed domain name. The Respondent knew or should have known about the Complainant’s trademark before registering the disputed domain name. It is obvious that the Complainant’s famous trademark is being used to attract potential buyers to the website to which the disputed domain name resolves. B. Respondent
The Respondent argues that the disputed domain name was acquired from the Registrar in 2018 and is lawfully held. The Respondent offered to transfer the disputed domain name to the Complainant for CNY 30 but immediately corrected that figure to CNY 300,000. The Respondent submits that the disputed domain name is currently in development. The Respondent has not offered the disputed domain name for sale or engaged in any profit-seeking behavior. The disputed domain name has nothing to do with the Complainant. The Complainant has seriously infringed the disputed domain name and has no reason to complain about it. The disputed domain name belongs to the Respondent and is completely legal. The Respondent has no relationship with the Complainant. The Complainant is seeking to acquire the disputed domain name illegally. 6. Discussion and Findings 6.1 Procedural Issues A. Late Submission
The Respondent sent eight emails to the Center on June 13, 19 and 21, 2019, after the due date for the Response.
Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel is satisfied that the emails sent after the due date for the Response were sent by the Respondent. All eight emails were sent from the same email account within days of each other. The initial emails were sent immediately after the Center’s notification of the Respondent’s default, which was sent to the Respondent’s contact email address. The latter emails were sent in response to a request from the Center for identification of the sender, that was also copied to the Respondent’s contact email address. The later emails specifically identified the sender as the registrant of the disputed domain name.
The Panel notes that some of the information in the Respondent’s emails was solicited, insofar as those emails identified the sender as the Respondent and confirmed that the sender had no relationship with the Complainant. These emails constitute the only response to the Complaint in this proceeding and they provide highly relevant evidence not otherwise found on the record. Given the content of the emails, the Panel does not consider that accepting them creates any unfairness to the Complainant.
Therefore, the Panel exercises its discretion to take these emails into consideration as part of the evidence on the record according to their relevance, materiality and weight. B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that there is evidence that the Respondent can understand English and that the Complainant does not understand Chinese so that the translation of the Complaint would unfairly disadvantage the Complainant.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel notes that in the present proceeding the Complaint was filed in English while the Respondent sent its informal responses in Chinese. Despite having received a communication regarding the language of the proceeding, notification of the Complaint, and the written notice of the Complaint in Chinese and English, and despite having sent numerous informal communications to the Center, the Respondent did not comment on the language of the proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding and accepting all communications as filed will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all communications as filed in their original language without translation. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the OSRAM mark.
The disputed domain name wholly incorporates the OSRAM mark. It also includes the letter “e” as its initial element. However, given that the OSRAM mark remains clearly recognizable within the disputed domain name, this element does not dispel the confusing similarity between the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.7.
The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.wang”, which can be a transliteration of the Chinese word “网”, meaning “net”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Philip Morris USA Inc. v. Tianxiaofang / Yumeijing,WIPO Case No. D2015-1852.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain name is only passively held. This does not constitute a use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor does it constitute a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance above, the name of the Respondent is “huangwenge”, not “eosram”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, the Respondent submits that the disputed domain name was lawfully acquired from the Registrar. The Panel recalls that the mere fact of registration of a domain name is no defence to a complaint under the Policy, otherwise no complaint could ever succeed, which would defeat the purpose of the Policy. See, for example, Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134.
The Respondent submits that the disputed domain name (presumably meaning a website) is in development. The Panel notes that the Respondent provides no evidence in support of that assertion.
The Respondent denies having engaged in any profit-seeking behavior. The Panel finds that passive use of a domain name does not constitute a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy. In any case, the Panel observes that the Respondent offered to sell the disputed domain name for profit during the course of this proceeding.
Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name”.
The Respondent registered the disputed domain name in 2018, many years after the Complainant registered its trademark, including in China where the Respondent is resident. The disputed domain name wholly incorporates the Complainant’s OSRAM trademark, with no additional element besides the letter “e” and a gTLD suffix, which is a technical requirement of registration. The Complainant has also made extensive use of its OSRAM mark in China. The six letters “eosram” have no apparent meaning other than as a combination of the letter “e” and the Complainant’s OSRAM mark. The Parties agree that the Respondent has no relationship with the Complainant. Therefore, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that the disputed domain name was registered and that the Respondent registered the disputed domain name in bad faith.
The Respondent offered to sell the disputed domain name to the Complainant for CNY 300,000 during the course of this proceeding. Although the Respondent denies having ever offered the disputed domain name for sale, that can only be true of the period prior to this proceeding. The disputed domain name does not resolve to any active website. The Respondent gives no explanation of any proposed use of the disputed domain name besides a vague assertion that it is in development and not for profit. These circumstances give the Panel reason to find that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking
The Respondent alleges that the Complainant is seeking to acquire the disputed domain name illegally. However, the Panel does not find that the Complaint was brought in bad faith. On the contrary, the Panel has found in favor of the Complainant as regards all three elements of the Policy. 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.
Matthew Kennedy
Sole Panelist
Date: June 25, 2019
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