Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
Respondent is 覃显 (xian tan), 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 July 30, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, 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 Complainant on July 31, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on August 5, 2020. On July 31, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on August 5, 2020. 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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 11, 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 Complainant is OSRAM GmbH, an operational arm of 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 its revenue in 2019 was approximately EUR 3.5 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). Complainant has since expanded to become a global lighting manufacturer and indicates that it has registered more than 500 OSRAM trademarks and services marks in over 150 countries and regions, 100 international trademarks and over 640 domain names containing the name “Osram”. Respondent, who is located in China, registered the Domain Name Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the OSRAM marks and has rights in the domain name incorporating the OSRAM mark. Complainant contends that Respondent registered and is using the Domain Name to confuse and intercept Internet users looking for bona fide and well-known OSRAM products and services or authorized partners of Complainant and divert Internet users to Respondent’s website. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name and related website, when Respondent clearly knew of Complainant’s rights. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, 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. According to the information received from the Registrar, the language of the Registration Agreement is Chinese. Complainant submits in its communication to the Center on August 5, 2020 and in the Complaint that the language of the proceeding should be English. Complainant contends that the Domain Name was registered in ASCII characters using the Roman alphabet, that the generic Top-Level Domain (“gTLD”) “.com” was chosen, that the addressees of “.com” domain names are located everywhere around the world and they generally speak and understand English. Complainant also contends that it does not understand nor speak Chinese, that the translation of all case relevant documents would unfairly disadvantage Complainant, and that it would be too cost-intensive and the proceeding would be unnecessarily delayed if the proceedings were to be held in Chinese. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to respond to the Complaint or comment on the language of the proceeding. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2 Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Under the first element of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights (paragraph 4(a)(i) of the Policy). Complainant provided evidence of its rights in the OSRAM marks, which have been registered since at least as early as April 17, 1906, which predate the registration of the Domain Name on April 23, 2020, by more than a century. In particular, Complainant has submitted a selection of registration certificates for national trademarks that it owns for the mark OSRAM. Complainant has also submitted evidence which supports that OSRAM is an internationally well-known trademark and a distinctive identifier of Complainant’s products. Evidence includes numerous decisions of 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. Complainant has therefore proven that it has the requisite rights in the mark OSRAM. With Complainant’s rights in the OSRAM marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the gTLD or the country code Top-Level Domain (“ccTLD”) in which it is registered (in this case, “.net”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. 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 addition, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) ay however bear on assessment of the second and third elements (WIPO Overview 3.0) In this case, the Domain Name clearly contains the mark OSRAM, with the addition of the term “oshk”. Complainant contends that the term “os” is known and descriptive in its industry for “Opto Semiconductors”, and illustrated that Complainant additionally owns, for example, a domain name Here, the Domain Name is confusingly similar to Complainant’s OSRAM trademark. This mark, which is fanciful and inherently distinctive, is recognizable and dominant in the Domain Name. The addition of the term “oshk” in relation to the OSRAM mark in the Domain Name, Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the OSRAM trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, Respondent directed Internet traffic to webpages that offer gaming and betting services. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. 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). Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: (i) 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 consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) 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 corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online 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 your website or location. The historical WhoIs record provided by Complainant shows that Respondent registered the Domain Name on April 23, 2020. The Panel notes that Complainant’s earliest OSRAM trademark on record has been registered since April 17, 1906. Therefore, the Panel finds that Complainant’s registration and use of the OSRAM marks predate the registration of the Domain Name by Respondent by over a century. Complainant is also well established and known worldwide. Therefore, Respondent was likely aware of the OSRAM marks when Respondent registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Further, the Domain Name includes Complainant’s well-known OSRAM trademark in its entirety, with the addition of the term “oshk”, which suggests Respondent’s actual knowledge of Complainant’s rights in the OSRAM mark at the time of registration of the Domain Name and Respondent’s effort to opportunistically capitalize on the registration and use of the Domain Name. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. Moreover, Respondent used the Domain Name to divert Internet users to a website that offers gaming and betting. Such use and association of the Domain Name with offers of gaming and betting could result in causing confusion with Complainant’s business and activities. It may confuse Internet users who are looking for Complainant’s legitimate website and deceive Internet users. The Panel finds that by using the Domain Name, incorporating Complainant’s trademark in its entirety in connection with a website to offer gaming and betting, and induce users to engage in such activities, Respondent has intentionally attempted to attract Internet users to their websites for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Moreover, such use of the Domain Name causes disruption to Complainant’s business activities. In addition to the circumstances referred to above, Respondent appears to have provided false or incomplete information in their registration information. Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds in view of the above, that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Kimberley Chen Nobles
Sole Panelist
Date: September 22, 2020
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