The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is CharlesLee (黄登通), China, self-represented. 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 August 3, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2020, 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 August 5, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 7, 2020, the Complainant confirmed its request that English be the language of the proceeding. On August 7 and 17, 2020, the Respondent requested that Chinese be the language of the proceeding. On August 10 and 11, 2020, the Respondent sent emails offering for sale the disputed domain name and indicating willingness to settle. On August 12, 2020, the Complainant rejected the Respondent’s offer. 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 in English and Chinese of the Complaint, and the proceedings commenced on August 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2020. The Respondent repeatedly requested for extensions of the Response due date on September 6, 14, and 24, 2020, and the Response due date was extended twice until September 27, 2020. The Respondent sent an informal email on October 6, 2020. No formal Response was filed with the Center. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 14, 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 company headquartered in Germany 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 claims to employs about 23,500 people and has operations in over 120 countries. The Complainant provides evidence that in financial year 2019, it achieved a global revenue of about EUR 3.5 billion. The Complainant’s business is in technology and innovation applications based on semiconductor technologies, and has activities in the Asia-Pacific market. In the financial year 2019, it claims these applications to be 35.6 percent of its revenues. In particular, the Complainant also illustrates it has business operations in the Respondent’s home jurisdiction China, where the Complainant has established a subsidiary, based in Shanghai. The Complainant owns a large, international portfolio of trademarks for OSRAM, including, for example, European Union trade mark registration number 000027490, registered on April 17, 1998 and French trademark registration number 1455931, registered on June 25, 1987. The Complainant also has registered trademarks for OSRAM in China, where the Respondent resides, such as Chinese trademark registration number G1264994, registered on June 7, 2018. The disputed domain name was created on June 22, 2020. The Complainant submits evidence that the disputed domain name directed to an active webpage on domain name sales platform “DAN”, where the disputed domain name was offered for sale to third parties for USD 400. On the date of this decision, the disputed domain name still directs to a page on the sales platform, which now states that the domain name has been deleted. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical to its trademarks for 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 recognized well-known trademarks, for instance Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083. The Complainant also provided evidence that the Complainant’s trademarks for OSRAM are also famous in the Respondent’s home jurisdiction China. The Complainant particularly submits that that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the fact that the Respondent is attempting to sell the disputed domain name for profit is proof that he has registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Panel notes that the Respondent did not submit any Response, despite the fact that he requested and obtained several extensions of the due date for his Response. The Panel also notes that the Respondent’s informal email of October 6, 2020, contains mostly includes insults to both the Complainant and the Center, notably after the Complainant rejected his offer to sell the disputed domain name at USD 400 and after the Center’s rejection of his request for a third extension of the Response due date. In terms of substantive arguments, the Respondent appears to only argue that trademarks are different from domain names and that trademark rights should not automatically be extended to domain names, which are independent in nature. 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 August 5, 2020, the Center notified the Parties that the language of the Registration Agreement is Chinese. On August 7, 2020, the Complainant confirmed its request that English be the language of the proceeding. On August 7 and 17, 2020, the Respondent requested that Chinese be the language of the proceeding. 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 Respondent’s request for Chinese to be used though the Respondent did not submit a Response on the merits (while he was notified that he had the right to do so in Chinese or English); the fact that the website linked to the disputed domain name is partly in German, partly in English and does not contain any Chinese. In the Panel’s view, since the Respondent did not file any substantive defence in any language and using Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these factors, the Panel rules that the language of the proceeding shall be English. However, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel accepts and has reviewed all the Respondent’s communications in Chinese in this proceeding. 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. As to the Respondent’s argument in its informal email of October 6, 2020 that trademark rights should not automatically be extended to domain names, which are said to be independent in nature, the Panel considers this a manifestly groundless argument. The Panel refers to the Policy and the Rules, to which the Respondent agreed through the Registration Agreement, which explicitly give the Complainant standing to bring a UDRP procedure based on its registered trademarks. On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by 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, the Respondent did not provide any Response or evidence in this administrative proceeding. Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain name was not used by the Respondent to offer any goods or services, but instead directs to a webpage on a domain name sales platform, where the disputed domain name was offered for sale. The Panel finds that using the disputed domain name in this way merely to offer it for sale cannot be considered a bona fide offering of goods or services, and does not create any rights or legitimate interests in the disputed domain name (see in this regard also Bayerische Motoren Werke AG v. James Vergis, Stressfree Driving School Pty Ltd,WIPO Case No. D2017-0071). 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 finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in the disputed domain name to sell it for a profit. Given the distinctiveness and fame of the Complainant’s trademark, including in the Respondent’s home jurisdiction China, the Panel finds 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 by the Respondent, The Respondent offered the disputed domain name for sale for USD 400 via the website linked to the disputed domain name, which is an offer that the Respondent has also repeated in this administrative proceeding, namely via its communications on August 10 and 11, 2020. This leads the Panel to conclude that the Respondent is using the disputed domain name to seek to sell it in excess of the out-of-pocket costs related to the disputed domain name. In this regard, paragraph 4(b) of the Policy states that registering a domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name” constitutes direct evidence of bad faith. On the basis of the foregoing, 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
Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, the Panel notes that the disputed domain name only consists of the Complainant’s registered trademark OSRAM. The applicable generic Top-Level Domain (“gTLD”) (“.group” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests
Sole Panelist
Date: October 22, 2020
Full & Egal Universal Law Academy