The Complainant is Osram GmbH, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is 汪秀琳, 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 May 25, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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. The Center sent an email communication to the Complainant on May 26, 2021 providing the completed registrant contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint in English on May 28, 2021. The Center verified that the Complaint together with 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 May 31, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021. The Center appointed C. K. Kwong as the sole panelist in this matter on June 29, 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, 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”, including the International Trademark Registration No. 567593 for OSRAM, registered on February 15, 1991, designating, among others, China (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” (Annex 17 to the Complaint). B. Respondent The Respondent is 汪秀琳, China. 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. CONTINENTAL is the trademark of Continental AG, which is a party to a joint venture with the Complainant (Annex 2 to the Complaint). 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. Still further, the combination of the trademarks of the Complainant and its business partner shows the knowledge of the Respondent about the Complainant and the Respondent’s bad faith in registering the disputed domain 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 in the decisions issued under the Uniform Domain Name Dispute Resolution Policy and by courts and customs internationally. The Complainant has regularly prosecuted against violations of its OSRAM trademark in China and its mark has been recognized by the Shanghai Customs in one article as famous (Annex 9 to the Complaint). 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 TLDs “.cn” and “.com.cn” in a domain name are disregarded under the first element confusing similarity test. The Respondent is not the holder of the trademark OSRAM and has no rights or legitimate interests 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. By registering and using the disputed domain name, the Respondent primarily aims at disrupting the business of the Complainant. The Respondent’s choice of the disputed domain name, which combines the Complainant’s well-known registered trademark OSRAM with the trademark CONTINENTAL of the Complainant’s business partner, 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. There is no plausible explanation why the Respondent would register a domain name virtually consisting of the Complainant’s famous and distinctive mark OSRAM. The Complainant received email communications from the Respondent earlier on March 1 and May 3, 2021 in which the Respondent offered to sell the disputed domain name to the Complainant. The Respondent’s behavior shows once more that the Respondent has registered the disputed domain name in bad faith with clear intention to sell it to the Complainant for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions during the proceeding. However, prior to the filing of the Complaint, the Respondent sent email communications on March 1 and May 3, 2021 offering to sell the disputed domain name to the Complainant for USD 3,000 and USD 2,000 respectively. 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 registered in ASCII characters using English alphabets; and b) the Complainant does not understand nor speak Chinese so it would be disproportionate to put the Complainant through the time and costs of translating and submitting its Complaint in Chinese, and the proceeding would be unnecessarily delayed. 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. The Panel has taken into consideration the following facts: (a) the disputed domain name consists of a combination of the English alphabets comprising (i) the Complainant’s trademark OSRAM and the trademark CONTINENTAL which belongs to the Complainant’s business partner, being a skillful combination process apparently with considerable knowledge of the English names and trademarks of the Complainant and its business partner; (b) the Respondent communicated with the Complainant in English on March 1 and May 3, 2021 respectively making certain proposals to the Complainant; and (c) the Center has communicated with the Respondent in both Chinese and English as well as advised the Respondent of her rights to make representation on choice of the language of the proceeding but the Respondent has not responded. 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. 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 (i) a hyphen “-”, (ii) the word “continental”, and (iii) the suffix “.com.cn”. After removing the suffix “.com.cn”, effectively the words “osram-continental” are left. The Complainant’s trademark OSRAM is clearly recognizable in the disputed domain name. The Panel notes that the addition of the word “continental” refers to CONTINENTAL which is the trademark and trade name of the Complainant’s business partner. The addition of the hyphen “-” and “continental” does not prevent a finding of confusing similarity. Earlier 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 in respect of the disputed domain name. 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 the Respondent has rights or legitimate interests in the disputed domain name. 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 can see no plausible explanation as to why it was necessary for the Respondent to adopt the trademarks OSRAM and CONTINENTAL in the 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 in respect of the disputed domain name. 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 disputed domain name is to sell, rent or otherwise transfer the disputed 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 disputed 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 including China. The Panel is satisfied that at the time when the Respondent registered the disputed domain name on February 25, 2021, a date much later than the Complainant’s extensive worldwide registration and use of its trademark OSRAM, it was done with knowledge of the Complainant’s business and the Complainant’s use of the OSRAM trademark. This is so particularly when the disputed domain name has its distinctive parts comprising a combination of the trademarks, OSRAM and CONTINENTAL respectively belonging to the Complainant and its business partner. It appears to be a deliberate choice to combine the Complainant’s mark OSRAM with the mark CONTINENTAL. These signal an intention on the part of the Respondent to confuse users seeking the Complainant. Furthermore, the Respondent offered to sell the disputed domain name to the Complainant for the prices of USD 3,000 and USD 2,000 in her email communications to the Complainant dated March 1 and May 3, 2021 respectively. On the basis of the evidence adduced, the Panel finds that the purpose of registering the disputed domain name is to sell or otherwise transfer the disputed domain name registration to the Complainant, and to obtain potential unjustified benefits. The Panel concludes that the disputed domain name was registered and has been 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 in respect of the disputed domain name. 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
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.
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, as well as the Respondent’s email communications, 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
Sole Panelist
Date: July 12, 2021
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