The Complainant is OSRAM GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is JamesJames, James, Republic of Korea.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2021, 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 for the disputed domain name.
On July 6, 2021, the Center notified the Parties in both Korean and English that the language of the registration agreement for the disputed domain name is Korean. On July 7, 2021 and July 11, 2021, the Respondent requested for Korean to be the language of the proceeding. On July 9, 2021, the Complainant requested for English to be 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 both Korean and English, and the proceedings commenced on July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. On July 16, 2021, the Respondent sent several email communications to the Center, but did not file a formal response.
On July 28, 2021, the Complainant filed a supplemental filing with the Center. On August 25, 2021, the Respondent sent an email to the Center. The Center informed the Parties of its commencement of Panel appointment on September 1, 2021.
The Center appointed Moonchul Chang as the sole panelist in this matter on September 6, 2021. 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. On September 21, 2021, the Panel issued the Panel Order No.1 in both Korean and English requesting the Respondent to submit a supplemental filing. The Respondent did not reply to the Panel Order No.1.
4. Factual BackgroundThe Complainant OSRAM GmbH belongs to the Osram Licht group which was founded in Germany in 1919. The Complainant is the operative company of Osram Licht AG, an international joint stock company, with its headquarters in Germany. The Complainant is the owner of more than 500 trademarks consisting of or containing the mark OSRAM in over 150 countries, including the International Trademark Registration No. 567593 for OSRAM, registered on February 15, 1991.
According to the Registrar, the disputed domain name
The Complainant contends that:
(1) The disputed domain name is identical or confusingly similar to the Complainant’s trademarks OSRAM.
It contains the mark OSRAM with the addition of the letters “ams” which is the trademark that belongs to AMS AG, the majority shareholder company of the Complainant.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has the exclusive right to use the OSRAM trademarks. On the contrary, the Respondent has not been authorized in any way to use the Complainant’s mark and has no rights or legitimate interests in respect of the disputed domain name. Further, the Respondent is not commonly known by the disputed domain name.
(3) The disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, since the disputed domain name is identical to the Complainant’s well-known trademark OSRAM, the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name. Secondly, the Respondent does not use the disputed domain name for personal or non-commercial interests. It is considered to be evidence of bad faith that the Respondent has not attempted to make any bona fide use of the disputed domain name. Thirdly, the registration of a domain name incorporating a third party’s well-known mark constitutes bad faith registration and use of the disputed domain name.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions, but submitted several emails in Korean.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean and the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons: i) the disputed domain name is registered in ASCII characters using English alphabets; ii) it would unfairly disadvantage the Complainant if it is required to translate and submit the Complaint in Korean and the proceeding would be unnecessarily delayed; iii) the Respondent will not be prejudiced by using English as the neutral language of the proceeding. On the other hand, the Respondent requests to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and he does not understand English.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
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’ abilities to understand and use the proposed language, time and costs.
The Panel has also taken into consideration of the following facts. Firstly the disputed domain name consists of a combination of the English alphabets comprising the Complainant’s trademark OSRAM and the trademark AMS of the Complainant’s majority shareholder. This is the Respondent’s skillful combination process apparently with considerable knowledge of the English names and trademarks of the Complainant and its majority shareholder. Secondly, the Center has communicated with the Respondent in both Korean and English as well as advised the Respondent of his rights to submit a response in his choice of the language but the Respondent did not submit a response. In addition the Panel also issued the Panel Order No.1 with a brief Korean translation of the Complaint while allowing the Respondent to reply in Korean. However, the Respondent did not reply to the Panel’s Oder as well.
Under these circumstances, the Panel considers that there is no prejudice or unfairness to the Respondent for the proceeding to be conducted in English and for its decision to be rendered in English.
6.2. Substantive IssuesTo succeed, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
The disputed domain name consist of the Complainant’s mark OSRAM with the addition of the letters “ams”. AMS is the trademark of the Complainant’s majority shareholder. The dominant feature of the disputed domain name is “osram” which is entirely identical to the Complainant’s trademark. The added letters does not prevent a finding of confusing similarity. Previous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make a finding that the domain name is confusingly similar to the Complainant’s trademark within the meaning of the Policy (Section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In addition, the generic Top-Level Domain (“gTLD”) “.com” can be disregarded under the confusing similarity test (See DHL Operations B.V. v. zhangyl,WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. (Section 2.1 of the WIPO Overview 3.0)
Firstly, the Complainant contends that it has never licensed or authorized the Respondent to use the Complainant’s trademark or to register any domain name incorporating the OSRAM mark, but that the Respondent has registered and used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case.
Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In the meantime, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate non-commercial or fair use of the disputed domain name. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, the Panel notes that the disputed domain name has distinctive part comprising a combination of the trademarks, OSRAM and AMS respectively belonging to the Complainant and its majority shareholder. It appears to be a deliberate choice to combine the Complainant’s mark OSRAM with the mark AMS. This signals an intention on the part of the Respondent to confuse Internet users seeking the Complainant.
Secondly, since the Complainant’s trademark OSRAM is well known in many countries, including Germany and the Republic of Korea, it is most likely that the Respondent registered the disputed domain name with previous knowledge of the Complainant’s trademark. Thus, the Respondent in all likelihood registered the disputed domain name with the expectation of taking advantage of the reputation of the Complainant’s trademark.
Finally, the Respondent does not use the disputed domain name for personal or non-commercial interests. The non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. (Section 3.3 of the WIPO Overview 3.0) Having considered the reputation of the Complainant’s mark OSRAM and the failure of the Respondent to submit a response or to provide any evidence of bona fide use, the Panel finds the Respondent’s bad faith use of the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
7. DecisionFor 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
Moonchul Chang
Sole Panelist
Date: October 4, 2021