WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Wu Yi Zhe

Case No. D2018-0471

1. The Parties

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

The Respondent is Wu Yi Zhe of Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <ledosram.site> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2018, 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 March 7, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 8, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2018.

The Center appointed Rachel Tan as the sole panelist in this matter on April 26, 2018. 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 is the operating company of Osram Licht AG, a multi-national lighting manufacturer headquartered in Munich, Germany. Osram Licht AG currently has around 26,000 employees and operates in over 120 countries. In the financial year 2017, Osram Licht AG achieved revenue of EUR 4.1 billion, with 35 percent of its sales originating from the Asia-Pacific region.

The Complainant owns numerous registrations for the OSRAM trade mark on a global basis (e.g. No 567593 registered on February 15, 1991). The Complainant has successfully enforced the OSRAM registrations in previous UDRP proceedings as well as court and registry actions around the world.

The disputed domain name was registered by the Respondent on February 10, 2018. The disputed domain name resolves to a website with links to entertainment, news, political and video content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its prior registered OSRAM trade mark which enjoys a high reputation worldwide. The addition of the prefix “led” does not impact on the similarity assessment because this term is descriptive in the lighting industry.

The Complainant further contends that the Respondent is not a licensor of the OSRAM trade mark, nor one of its authorized dealers or distributors. The Respondent is not authorized to register the disputed domain name nor owns rights in the name “Osram”.

The Complainant finally contends that OSRAM is a famous trade mark and the Respondent has registered and is using the disputed domain name in bad faith. The Complainant contents that the disputed domain name is used to redirect traffic to the Respondent’s website “www.mfzne.com”, which contains sports and adult content. In particular, the use of the disputed domain name in connection with pornographic material amounts to tarnishment of the Complainant’s OSRAM trade mark. Bad faith also exists because the Respondent knew or should have known about the Complainant’s trade mark rights before registering the disputed domain name, given the worldwide reputation of the OSRAM trade mark, including in China.

B. Respondent

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

6. Discussion and Findings

6.1. Language of Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.

The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:

(a) The Complainant is a company from Germany. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) English is not the native language of either Party;

(c) If the Respondent does not possess a sufficient command of English to understand the Complaint, the Respondent had ample opportunities to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

6.2. Analysis of the Complaint

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced sufficient evidence to demonstrate its established rights in the OSRAM trade mark claiming a broad range of goods, including electric lamps and lighting apparatus.

The Panel notes that the disputed domain name fully encompasses the Complainant’s OSRAM trade mark prefixed by “led”. The OSRAM trade mark is a coined word and possesses a high degree of inherent distinctiveness. The term “led” is an industry acronym for “light emitting diode”, a two lead semiconductor light source. When used in conjunction with “OSRAM”, Internet users are likely to bestow a descriptive meaning to the term “led”. It is permissible for the Panel to ignore the generic Top-Level-Domain suffix, in this case, “.site”. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Therefore, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and the cases cited therein.

In this case, the Complainant has established registered rights in the OSRAM trade mark which well predate the registration of the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the terms “led” or “osram”;

(b) There is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to the terms “led” or “osram”;

(c) The Respondent is not an authorized dealer, distributor or licensee of the Complainant; and

(d) The disputed domain name previously resolved to a website showing sports articles and graphic adult content, and currently contains links to articles on politics, entertainment and video content. Such behavior on the part of the Respondent manifestly demonstrates that the disputed domain name is not being used in connection with a bona fide offering or goods or services.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The first use in trade of the Complainant’s “Osram” name began over a century ago, as did the first registration of the OSRAM trade mark. Since then, the OSRAM trade mark has been widely and extensively registered and used around the world, including in China. The disputed domain name was registered well after the registration of the Complainant’s OSRAM trade mark, and decades after it first entered the Chinese market. By 2017, the Complainant had substantial commercial operations in China and would have acquired a high degree of fame in the country.

Where the Complainant’s mark is so widely known that a respondent cannot credibly claim to have been unaware of the mark, UDRP panels have been prepared to hold that the domain name was registered in bad faith. See LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByProxy.com / DBA David Inc., WIPO Case No. D2011-1839 (<legoninjagospinjitzu.com> and <legoninjagozane.com>). A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of the OSRAM brand, and its business activities. Thus, the choice of the descriptive term “led” to prefix the trade name and trade mark of an established lighting manufacturer, to form the disputed domain name, cannot be a coincidence but rather one that was made in bad faith.

The Complainant contends that the disputed domain redirects Internet users to a website “www.mfzne.com” which contains sports and adult content as evidenced by Annexes 2a and 2b of the Complaint. The disputed domain name currently resolves to a website with links to various articles on politics, entertainment as well as video content. The Respondent has failed to rebut the allegations of the Complainant despite having ample opportunity to do so. The current use of the disputed domain name does not indicate any intention by the Respondent to make noncommercial fair use of the disputed domain name. The past uses leads the Panel to infer that the Respondent misused the disputed domain name to redirect traffic for its own gain and in the process tarnish the Complainant’s trade mark.

Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name. Moreover, the manner in which the Respondent continues to hold and use the disputed domain name leads to the conclusion that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

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, <ledosram.site> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: May 10, 2018