The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is 尚弦 (xian shang), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 the same day, the Center informed the Complainant of the Respondent’s contact details provided by the Registrar. On August 5, 2020, the Complainant submitted an amendment to the Complaint in English to the Center. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”). In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, Articles 17 and 49, the due date for Response was September 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2020. The Center appointed C. K. Kwong as the sole panelist in this matter on September 15, 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, Article 29. 4. Factual Background A. Complainant The Complainant 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 Munich, Germany. The Complainant has registered many national, regional as well as international registrations of trademarks and service marks consisting of or embodying the word “osram”, e.g., Chinese trademark registration No. G567593 for OSRAM, registered on February 15, 1991 (see Annexes 7 and 8 to the Complaint). The Complainant is the owner of more than 600 generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) domain names consisting of or embodying the word “osram” (see Annex 17 to the Complaint). B. Respondent The Respondent is 尚弦 (xian shang), China. According to the Registrar’s verification response, the disputed domain name “Osram” as a part of the Complainant’s company name is protected as a trademark in various countries and regions around the world. The disputed domain name is identical or confusingly similar to the OSRAM trademark. Furthermore, the disputed domain name is also identical or confusingly similar to the Complainant’s company name. The aforesaid OSRAM Licht AG currently employs approximately 23,500 people and has operations in over 120 countries. In the 2019 financial year, it has a revenue of about EUR 3.5 billion. The Complainant has traded under the name “Osram” since its foundation. On April 17, 1906, the OSRAM brand was registered as a trademark for “electrical incandescent and arc lamps”. A few years later, the Complainant successfully expanded its international presence and established offices in the European Union, Rio de Janeiro, Brazil and Shanghai, China. Due to its extensive and international use, the OSRAM trademark has become distinctive, famous or well known as recognized or acknowledged by UDRP panels, courts and customs internationally. The addition of the expression “oled” to the mark OSRAM is insufficient to prevent the public from confusing the disputed domain name with the Complainant’s OSRAM trademark. The letter “o” has no recognizable meaning. The letters “led” are known to be the abbreviation of the commonly known English term “light-emitting diode” which describes the goods and services of the Complainant. The disputed domain name contains the famous trademark OSRAM which stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark OSRAM. The ccTLD “.cn” in a domain name is disregarded under the first element confusing similarity test. The Respondent is not the holder of the trademark OSRAM and has no rights or legitimate interest in the name “Osram”. The Respondent is not commonly known by the disputed domain name. The Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The website to which the disputed domain name resolves is used for offering and selling lighting products of the Complainant’s competitors. By registering and using the disputed domain name, the Respondent primarily aims at disrupting the business of the Complainant. The Respondent uses the disputed domain name to intentionally attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. The Respondent trades on the Complainant’s reputation and goodwill to generate traffic to its online shop or the online shop of a third party. The Respondent’s choice of the disputed domain name, which is virtually identical to the Complainant’s well--known registered trademark OSRAM, clearly indicates bad faith intent to register and use the disputed domain name. The Respondent is not using the disputed domain name for personal noncommercial interests. The registration of a domain name incorporating another’s famous mark proves that the Respondent knows the Complainant well and therefore registered the disputed domain name in bad faith. There can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Notice of the Proceeding Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under Article 5 of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center. 6.2. Language of the Proceeding Article 8 of the Rules provides that the language of the proceedings shall be Chinese unless otherwise agreed by the Parties or decided by the Panel in exceptional cases. In support of its request to use English as the language of the proceeding, the Complainant has argued that: a) the disputed domain name is composed of Latin characters, and contains the word “led” which is a common abbreviation for the English term “light-emitting diode”, and b) the Respondent will not be prejudiced by using English as the language of the proceeding. On the other hand, it would be disproportionate to put the Complainant to the time and costs of translating and submitting its Complaint in Chinese. Article 31 of the Rules provides, inter alia, that in all cases, the Panel shall ensure that the Parties be treated with equality. It also provides that the Panel shall ensure that the proceedings take place with due expedition. 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 taken into consideration the following facts: (a) the disputed domain name consists entirely of English letters (being a combination by its deliberate choice of (i) the English mark of the Complainant, and (ii) the English expression “oled” which means “organic light-emitting diode” in the industry; and (b) the Center has communicated with the Respondent in both Chinese and English as well as advised the Respondent of its rights to make representation on choice of the language of the proceeding but the Respondent has not responded; and (c) contents of the website to which the disputed domain name resolves, refer to (i) various “Philips” products with some descriptions in the English words, and (ii) approval of acquisitions by CFIUS (which means 美国外资投资委员会 (Committee on Foreign Investment in the United States of America)). Taking all circumstances into account, the Panel is satisfied 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. Accordingly, the Panel determines that the language of this administrative proceeding should be English. 6.3. Substantive Issues In rendering its decision, the Panel must adjudicate the dispute in accordance with Article 31 of the Rules which provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Article 35 of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions of these Rules and Supplemental Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Article 34 of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions established by these Rules and Supplemental Rules or any of the time periods fixed by the Panel, the Panel shall proceed to a decision on the complaint. Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled: (i) The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests; (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; (iii) The Respondent has registered or has been using the disputed domain name in bad faith. Article 7 of the Policy provides that the Complainant and the Respondent shall bear the burden of proof for their own claims. Having considered the Complaint and the annexes thereto, the Panel has made the following findings. A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark OSRAM by reason of its long established use and extensive registrations as recited in Section 4 above. Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark OSRAM despite the addition of the word “oled” and the ccTLD “.cn”. The distinctive feature of the disputed domain name is “osram”, being also the distinctive feature of the Complainant’s trademark. The additional word “oled” means “organic light-emitting diodes” in the industry. After removing the ccTLD and the said additional word, only the word “osram” is left in its entirety. Therefore, the Complainant’s trademark is clearly recognizable in the disputed domain name. The previous panels have disregarded the TLD part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark in issue. The Panel therefore holds that the Complaint has fulfilled the first condition of Article 8 of the Policy. B. Rights or Legitimate Interests The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once such prima facie case is made, the burden will shift to the Respondent to produce evidence that it has rights or legitimate interests in the disputed domain name. 塞维斯马斯特有限责任公司 (The Servicemaster Company, LLC) and 特敏尼克斯国际合股有限公司 (The Terminix International Company Limited Partnership) v. 孙启峰,WIPO Case No. DCN2019-0005. In the present case, the Complainant has asserted registration and use of the registered trademark OSRAM long before the Respondent’s registration of the disputed domain name The Panel sees no plausible explanation as to why it was necessary for the Respondent to adopt the word “osram” in its disputed domain name. The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel accordingly finds that the Complaint has fulfilled the second condition of Article 8 of the Policy. C. Registered or Used in Bad Faith Article 9 of the Policy sets out four circumstances which shall be evidence of the registration or use of the disputed domain name in bad faith, namely: (a) The purpose of registering or acquiring the domain name is to sell, rent or otherwise transfer the domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits; (b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names; (c) The disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating confusion with the Complainant’s name or mark so as to mislead the public; (d) Other circumstances which may prove the bad faith. The Panel finds that the Complainant enjoys an extensive worldwide reputation in the OSRAM mark for its goods and services as a result of its long and well established business history in many countries worldwide. The Panel is satisfied that at the time when the Respondent registered the disputed domain name on May 21, 2020, a date much later than the Complainant’s extensive worldwide registration and use of its trademark rights OSRAM, it was done with knowledge of the Complainant’s business and the Complainant’s use of the OSRAM trademark. The disputed domain name resolves to the “www.oledosram.cn” website operated by a company named 广州爱傲亿帝科技有限公司 (Guangzhou Ai Ao Yi Di Technology Limited), where goods bearing the mark PHILIPS (one of the Complainant’s competitors) are purportedly offered for sale. There was also reference to the Chinese name or mark of the Complainant “欧司朗” in the contents of the website to which the disputed domain name resolves. The Complainant has confirmed that (a) it has no business relationship with the Respondent, and (b) it has never granted the Respondent the right to use its trademarks. The Respondent has registered the disputed domain name and allowed it to be used for the purpose of operating a website selling goods in a way which disrupts the business of the Complainant. By using the disputed domain name in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. On the basis of the evidence adduced, the Panel finds that the presumption under Article 9(c) of the Policy has been invoked. From the materials presently presented to the Panel, it is also not possible to foresee any plausible good faith use of the disputed domain name by the Respondent or the operator of the website in question. The Panel concludes that the disputed domain name was registered and is being used by the Respondent in bad faith. The Panel accordingly finds that the Complaint has fulfilled the third condition of Article 8 of the Policy. 7. Decision For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name C. K. Kwong
Sole Panelist
Date: September 29, 2020
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