The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Xue Chun, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 December 26, 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 amendment to the Complaint in English on December 27, 2019. On December 26, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 27, 2019. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amendment to 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 Chinese of the Complaint, and the proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 14, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 21, 2020. 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 a German company active in the lighting industry, and is the operative subsidiary of Osram Licht AG, an international joint stock company, with its headquarters in Munich. Osram Licht AG currently employs about 27,000 people and has operations in over 120 countries. The Complainant provides evidence that in financial year 2018, it achieved a global revenue of about EUR 4.1 billion. The Complainant focuses its business on technology and innovation applications based on semiconductor technologies, and has particularly expanded its activities in the Asia-Pacific market, where, in financial year 2018, it obtained 35.7 percent of its revenues. The Complainant owns a large, global portfolio of trademarks for OSRAM, including, for example, European Union trademark registration number 000027490, registered on April 17, 1998 and Mexican trademark registration number 350314, registered on July 13, 1988. The Complainant also has registered trademarks for OSRAM in China, where the Respondent resides (such as Chinese trademark registration number G1264994, registered June 7, 2018). The disputed domain name was created on August 16, 2019. The Complainant submits evidence that the disputed domain name directed to an active webpage, which was used as a registration page for online lottery and gambling services. However, on the date of this decision, the disputed domain name leads to an inactive webpage. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks OSRAM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are distinctive and used intensively, and submits several prior UDRP decisions and court judgments which have recognized that the Complainant’s trademarks for OSRAM are internationally well-known trademarks, for instance Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083. The Complainant particularly submits that that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. The Complainant request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, 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 Complainant states that it did not know the language of the Registration Agreement, and filed its Complaint in English, containing a request that language of the proceeding be English. On December 26, 2019, the Center notified the Parties that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of the proceeding be English on December 27, 2019. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Based on the evidence and arguments submitted, the Panel's findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has rights in the mark OSRAM based on its intensive use and registration of the same as a trademark in a large number of jurisdictions globally. Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark OSRAM, preceded by the seemingly arbitrary letter “y”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, states: “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 to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its clearly recognizable feature. The addition of the seemingly arbitrary letter “y” before the Complainant’s trademark does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain name directed to a registration page for online lottery and gambling services (before it was taken offline). This shows the Respondent’s intention to divert consumers for commercial gain to its website linked to the disputed domain name, by taking unfair advantage of the goodwill and reputation of the Complainant’s famous trademarks for OSRAM. Furthermore, the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in OSRAM and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the disputed domain name currently links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, and the fact that the Respondent had initially linked the disputed domain name to a registration page for online lottery and gambling services, for commercial gain (before it was taken offline). On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 Deanna Wong Wai Man
Sole Panelist
Date: March 6, 2020
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