WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. zhengyang, shenzhenshi jingmeixinkeji youxiangongsi

Case No. D2017-0961

1. The Parties

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

The Respondent is zhengyang, shenzhenshi jingmeixinkeji youxiangongsi of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <osram-china.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2017. On May 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2017, 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 May 17, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 18, 2017. The Respondent did not comment on the language of the proceeding by the specified 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 English and Chinese, and the proceedings commenced on May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 20, 2017. 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 belongs to the OSRAM Licht group, which was founded in Germany in 1919, and is the operative company of OSRAM Licht AG. OSRAM Licht AG employs more than 33,000 people and has operations in over 120 countries. It achieved a revenue of about EUR 5.6 billion in the 2015 financial year alone. Until recently, the Complainant was one of the three largest manufacturing companies around the world. In July 2016, the Complainant carved out and transferred part of its business to its fully owned subsidiary LEDVANCE GmbH, which is responsible for the distribution of OSRAM products in many countries. The LEDVANCE portfolio includes LED lamps and classic lamps and ballasts. The Complainant concentrates on technology development and innovation-led applications based on semiconductor technologies and addressing new trends in the lighting industry, including opto semiconductors, automotive and specialty lighting, and luminaries, among others.

The Complainant has traded under the name “Osram” since its foundation. On April 17, 1906, the OSRAM trademark was registered for use with “electrical incandescent and arc lamps” (Germany trademark registration no. 86924). Since that time, the Complainant has registered more than 500 OSRAM marks in over 150 countries and regions, and more than 100 International Registrations, including Nos. 567593 (registered on February 15, 1991), 666039 (registered on November 12, 1996), 676932 (registered on April 16, 1997), and 865615 (registered on June 4, 2005), among many others, designated for protection in dozens of countries, including China where the Respondent is located. Multiple national courts and intellectual property offices have acknowledged that the OSRAM marks are well-known. The Complainant is also the owner of over 640 domain names that include the OSRAM mark.

The disputed domain name was registered on February 24, 2017. At the time the Complaint was filed, the disputed domain name resolved to a website promoting and offering lighting technology and products. The website, though written largely in Chinese, prominently included many English words as well.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or at least confusingly similar to the Complainant’s well-known OSRAM mark. The disputed domain name includes the OSRAM mark. The term “china” in the disputed domain name is insufficient to prevent Internet user confusion because it is merely geographical wording. Additionally, the Top-Level Domain (“TLD”) “.com” is to be disregarded when determining confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not the holder of an OSRAM trademark. The Respondent has not registered the disputed domain name in connection with a bona fide intent. The Complainant has not granted the Respondent a license to and rights in the OSRAM mark or to register the disputed domain name. 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 Respondent does not explain on its website that it is not related to the Complainant.

The disputed domain name was registered and is being used in bad faith. The OSRAM mark is a famous mark of the Complainant, a lighting manufacturer. The disputed domain name points to a webshop through which lighting products are advertised and offered. The Respondent does not use the disputed domain name for personal noncommercial interests. The Respondent is obviously trying to exploit the Complainant’s famous mark to attract potential customers. The Respondent’s choice of the disputed domain name, which is virtually identical to the OSRAM mark, clearly indicates bad faith intent to register and use the disputed domain name. The sole purpose of this 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 the Respondent’s website and products. There is no other plausible reason for selecting the Complainant’s mark in creating the disputed domain name. Additionally, the Respondent has not attempted to make any bona fide use of the disputed domain name. The Respondent’s registration of a domain name that incorporates the Complainant’s famous mark without any legitimate interests in the domain name constitutes bad faith. Bad faith exists where 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.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. At the time the Complaint was filed, the disputed domain name resolved to a website containing English words. Substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.

A. Identical or Confusingly Similar

The Complainant has rights in the OSRAM mark. The Complainant has established that it is the registered owner of hundreds of trademark registrations for OSRAM marks, registered well before the registration of the disputed domain name, with the earliest registration dating back to 1906. The Complaint has operated under the name Osram since its founding in 1919. The panel accepts that the Complainant’s OSRAM mark is internationally well-known.

The disputed domain name is confusingly similar to the Complainant’s mark. The disputed domain name comprises the Complainant’s OSRAM mark and “china”, hyphenated, and the TLD “.com”. The addition of the geographically descriptive term “china” to the Complainant’s mark does not affect assessment of whether the disputed domain name is confusingly similar to the Complainant’s mark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414; see also Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093. A country name included in a disputed domain name is not distinguishing because it is likely to be recognized as indicating an overseas website of the disputed domain name. See Inter IKEA Systems B.V. v. Muhannad Mayyas, WIPO Case No. D2016-0067; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. Punctuation is irrelevant in the confusing similarity analysis and does not distinguish the disputed domain name from the Complainant’s mark. See, e.g., Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng,WIPO Case No. D2014-0714. Similarly, the TLD, being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the OSRAM mark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The OSRAM mark remains the dominant component of the disputed domain name and the disputed domain name is, therefore, confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:

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

(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

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

The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent used the disputed domain name to publish a website promoting goods and services that compete directly with the Complainant’s and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Additionally, the OSRAM mark is long-established and known globally, including in China, the location of the Respondent. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the OSRAM mark may be imputed to the Respondent at the time of registration of the disputed domain name. “The inevitable conclusion is that th[is] word[] [is] not one[] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.” See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant never authorized the Respondent to use the OSRAM mark or to register a domain name including the OSRAM mark.

The Respondent is not making any noncommercial or fair use of the disputed domain name. To the contrary, the evidence in the record indicates that the Respondent used the disputed domain name for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers.

C. Registered and Used in Bad Faith

The Respondent registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The Respondent registered the disputed domain name in bad faith. The Respondent was undoubtedly aware of the Complainant and its OSRAM mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its OSRAM mark are widely known throughout the world. Additionally, the Complainant owns hundreds of trademark registrations in more than 100 jurisdictions, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for OSRAM would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to direct Internet users to a website promoting goods that compete with the Complainant’s goods. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent also used the disputed domain name in bad faith. By using the disputed domain name to link to a website that promotes and offers competing lighting technology and products, the Respondent conveyed the impression that the Respondent’s website was affiliated with or created, endorsed or sponsored by the Complainant. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s OSRAM mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. See id.

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 <osram-china.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: June 29, 2017