WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Cong Ty Co Phan Chieu Sang Khai Quang

Case No. D2016-1424

1. The Parties

The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Cong Ty Co Phan Chieu Sang Khai Quang of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <caoaposram.com> (the “Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name.

On July 20, 2016, 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 July 20, 2016, the Center informed the Parties that the Registration Agreement is in Vietnamese and requested them to comment on the language of the proceeding.

The Complainant submitted a request for English to be the language of the proceeding on July 22, 2016. The Respondent did not comment on the language of the proceeding, but submitted a request to transfer the Disputed Domain Name to the Complainant on July 22, 2016. On July 22, 2016, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by July 27, 2016. The Complainant did not request for suspension by the specific due date.

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 English and Vietnamese, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent submitted a further communication of intent to transfer the Disputed Domain Name on August 1, 2016. On the same day, the Complainant submitted a request for suspension. Accordingly, on August 2, 2016, the Center notified that the proceeding will be suspended until August 31, 2016.

On August 17, 2016, the Complainant submitted a request to reinstitute the proceeding as it failed to receive any answer from the Respondent following its request to sign the settlement form. Accordingly, the Center informed the Parties that the proceeding was reinstituted and the Response due date would be September 4, 2016. The Respondent did not submit any Response by the specific due date. The Center notified the commencement of panel appointment on September 5, 2016.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 9, 2016. 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, OSRAM GmbH, is a Germany-based company, belonging to the OSRAM Licht Group (the “OSRAM Group”), which was founded in 1919 and became the largest European light bulb manufacturer. The OSRAM Group’s portfolio comprises LED Lamps & Systems, Classic Lamps & Ballasts, Luminaries & Solutions, Speciality Lighting and Opto Semiconductors. The Complainant is the operative company of OSRAM Licht AG, headquartered in Munich, Germany.

The OSRAM Group employs more than 34,000 people and has operations in over 120 countries. In the financial year 2014, its revenue was about EUR 5.1 billion. The Complainant is one of the three largest lighting manufacturing companies and well known around the world.

The OSRAM trademark was registered on as early as April 17, 1906 for “electrical incandescent and arc lamps” in Class 11 in Germany.

The Complainant owns over 100 international registrations and more than 500 national registrations for OSRAM trademarks and service marks in more than 150 countries and regions around the world.

The Complainant’s OSRAM trademark has been recognized as well-known in many earlier UDRP panel decisions (e.g., OSRAM GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004; Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Azat Seitmuhamedov, WIPO Case No. D2015-1192; OSRAM GmbH v. Shin Uk Kang, WIPO Case No. D2015-1349; OSRAM GmbH v. shidankj, WIPO Case No. D2016-1250). Also, various national courts and offices have acknowledged the OSRAM trademarks as being well-known.

The Complainant also owns numerous domain names under generic Top-level Domains (“gTLD”) and country-code Top-level Domains (“ccTLD”) containing the term “osram”, one of which is the domain name < osram.com> that was created on March 25, 1999.

The Respondent registered the Disputed Domain Name <caoaposram.com> on May 5, 2016. As of the date of this Decision, the website under the Disputed Domain Name is being used for promoting the Respondent’s goods of electric lighting equipments, electric cables and other electric appliances under the OSRAM brand and other brands.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the Complainant is the operative company of the OSRAM Group, which has been for many years the right holder of the OSRAM trademarks and services marks in numerous countries and regions worldwide. The OSRAM trademark well predates the Respondent’s registration of the Disputed Domain Name.

The Complainant further contends that the Disputed Domain Name is identical, or at least confusingly similar to the Complainant’s trademarks and company name, as it comprises 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 trademarks.

The addition of the term “caoap”, which means “electronic potential” in Vietnamese, would normally be insufficient to prevent Internet user confusion.

Finally, the Complainant submits that the addition of the gTLD suffix “com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Respondent is not holder of a trademark OSRAM and has no rights or legitimate interests in the name “osram”.

Second, the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as the Respondent has no license from the Complainant with regard to the trademark rights or the right to register the Disputed Domain Name. The Respondent is also not commonly known by the Disputed Domain Name.

Third, the Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Fourth, the Respondent does not explain that the website is not related with the Complainant.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant submits that the OSRAM mark is famous in relation to the Complainant, a reputed lighting manufacturer and the Disputed Domain Name is in use for a web shop of the Respondent, via which lighting products of diverse producers are advertised and offered.

The Complainant further submits that the Respondent does not use the Disputed Domain Name for personal noncommercial interests. The Respondent is obviously trying to exploit the Complainant’s famous trademark in order to attract potential clients.

The Complainant contends that the Respondent’s choice of the Disputed Domain Name, which is virtually identical to the well-known OSRAM trademark of the Complainant, clearly indicates bad faith intents to register and use of the Disputed Domain Name. The Respondent’s sole purpose is to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and products on its website.

Finally, the Complainant argues that the registration of a domain name incorporating a well-known mark of another does not confer any rights or legitimate interests in the Disputed Domain Name. The Respondent knew or should have known about the Complainant’s trademark rights in OSRAM before registering the Disputed Domain Name.

B. Respondent

On July 22, 2016 and August 1, 2016, the Respondent sent to the Center two emails stating its intention to transfer the Disputed Domain Name to the Complainant. However, the Respondent did not respond directly to the issues as raised by the Complainant in the Complaint. Accordingly, the Panel draws inference from the two aforesaid emails by the Respondent in the below decision.

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement used was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated July 20, 2016 in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding. On July 22, 2016, the Complainant submitted its confirmation of request that English be the language of the proceeding. The Respondent did not submit any request.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003‑0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the nationality of the Parties;

(ii) the fact that the Complainant, a German entity, does not appear to be able to communicate in Vietnamese; and

(iii) the fact that the Respondent is obviously capable of understanding and using English as its own website “www.khaiquang.com” is available in English, and also, the email of July 22, 2016 by the Respondent is written in both English and Vietnamese.

Hence, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. For the purpose of easy comprehension of the Complainant (the only Party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English.

(ii) The Respondent’s Failure to Respond

As said above, the Respondent has not replied to the Complainant’s contentions, but rather indicated its willingness to transfer the Disputed Domain Name to the Complainant. Notwithstanding the Respondent’s indication of its intent to transfer the Disputed Domain Name to the Complainant, the Respondent has failed to return a signed settlement form in accordance with the Rules, paragraph 17(a)(iii). For completeness, the Panel proceeds to a decision on its merits.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent 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.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it or the OSRAM Group which the Complainant belongs to has registered trademark rights to OSRAM, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer products in lighting industry for both consumers and professional users worldwide.

Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known OSRAM mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “caoap”, which is written with accent marks as “cao áp” in Vietnamese and means “high electric potential” in English. Despite the fact that “caoap” itself has no meaning in English, Vietnamese customers are likely to perceive it as “cao áp” (“high electric potential” in English) and thus, “caoaposram” is likely to indicate or remind the consumers to OSRAM Group’s high electric potential products/lights. Thus, this prefix should be considered as a descriptive term in this instant case. The Panel finds that “osram” remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as “caoap”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see e.g.,AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp, WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien, WIPO Case No. D2012-2320).

Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s OSRAM trademark, and the first element, paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the OSRAM trademark.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”):

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see e.g., National Association forStock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007‑1524).

However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria. In the website under the Disputed Domain Name, the Respondent is selling a variety of lighting products, including both those under the OSRAM trademarks and those from other manufacturers. Hence, there is a possibility that the Respondent is using the OSRAM trademark in the Disputed Domain Name to bait consumers and then switch them to other goods.

In addition, on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of a relationship with the Complainant, but a misleading statement (as scrolling texts) that it is “Chào mừng quý khách đến với website Đèn Cao Áp Osram. Chúng tôi chuyên cung cấp và lắp đặt các sản phẩm chiếu sáng dân dụng và công nghiệp của Hãng chiếu sáng Osram CHLB Đức…Chúng tôi luôn mong muốn đem đến sự hài lòng cho quý khách” (English translation: “Welcome to the website of Osram’s high electric potential lights. We are specialized in provision and installment of consumers and professional lighting products from Osram Lighting company of Germany…We wish to bring you pleasure.”) may be further evidence of the Respondent’s intention to create an impression that the Respondent is somehow in association with the Complainant. In addition, the Respondent adds a copyright text “Copyright © Website Osram vietnam”, which creates an impression that it has rights in the name “Osram” or “Osram vietnam” when none of such rights exists.

For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services.

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the OSRAM trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Additionally, the respondent’s willingness to transfer the Disputed Domain Name to the Complainant is further indicative of the lack of rights and legitimate interests.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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) you have 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an evidence of registration and use of a domain name in bad faith.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s OSRAM trademarks have been registered on a worldwide basis.

The Disputed Domain Name comprises the OSRAM trademark in its entirety, adding only the descriptive word “caoap” which is a Vietnamese term for “high electric potential”. “Osram” is being used in the Complainant’s OSRAM trademarks, trade name, and domain names, which all well predate the registration of the Disputed Domain Name.

Also, the Panel finds that given the fact that the Complainant’s OSRAM trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment, WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment, Supra.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and its OSRAM trademark before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

The Panel finds that, similar to numerous previous UDRP decisions, the use of a Complainant’s mark to attract visitors to such a for-profit site constitutes bad faith (See e.g., Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285;

Further, the Panel finds that in addition to the adoption of the Complainant’s well-known trademark as a distinctive part in the Disputed Domain Name, the Respondent placed a statement and a copyright text on a misleading relationship with the Complainant as above-mentioned. Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Name to mislead consumers into believing that the website under the Disputed Domain Name is in somehow associated, fostered or recommended by the Complainant.

Moreover, the Panel finds that on the date of this Decision, the Disputed Domain Name resolves to an active website selling lighting and other electronic products not only of the Complainant, but also of the Complainant’s competitors, along with the provision of installment services of such products. This creates a likelihood of confusion as to sponsorship, affiliation with, and endorsement by the Complainant of the site to which the Disputed Domain Name resolves, to the online retailers to which that site links, and to the products of other competitors that are sold on those sites. The Panel finds that the likelihood of confusion as said is an indication of bad faith use of the Disputed Domain Name.

Last but not least, in the email of July 22, 2016, the Respondent stated its intention to transfer the Disputed Domain Name to the Complainant and also undertook that “From now on we will not use the domain name ‘caoaposram.com’.” However, as mentioned in the letter dated August 17, 2016 by the Complainant, the Respondent did not reply to the Complainant’s request for signing the Standard Settlement Form. Further, the website under the Disputed Domain Name is still under operation as of the date of this Decision. As such, the Panel finds that the Respondent does not comply with its statements in its correspondence to the Center, making the proceeding prolonged, and indeed, attempts to gain commercial benefits from running the website under the Disputed Domain Name even after being notified of the Complaint and the respective proceeding. These facts are indicative of bad faith from the side of the Respondent.

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see in the same way Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031).

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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 <caoaposram.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: September 22, 2016