The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Zhou Weimin of Shanghai, China.
The disputed domain name <osramshanghai.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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 submitted its comment on the language of the proceeding. 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 both English and Chinese, 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 20, 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.
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. 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 5, 2018. The disputed domain name currently resolves to an inactive page.
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 geographical location “shanghai” does not impact on the confusingly similarity assessment.
The Complainant further contends that the Respondent is not a licensee 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 the OSRAM is a famous trade mark and the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has not made any attempt to make bona fide use of the disputed domain name. 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 fame of the OSRAM trade mark, including in China.
The Respondent did not reply to the Complainant’s contentions.
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:
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 followed by “shanghai”, a word with two meanings, but more instantly recognizable as a municipality of China. Due to Shanghai’s status as a global financial and transport hub, in this context, the word would be understood by Internet users as referring to the local contact of a business in this city. It is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case, “.com”. 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.
The Complainant contends that the Respondent is not an authorized dealer, distributor or licensee of the Complainant. The disputed domain name currently resolves to an inactive page. The Respondent has not rebutted the allegations of the Complainant, nor submitted any evidence to prove prior rights to the name “Osram”. Consequently, the Panel has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
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, previous 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. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of the OSRAM trade mark, and its business activities.
It is accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See, paragraphs 10 and 12 of the Rules. In this case, the Respondent is an individual named Zhou Weimin, the registrant organization is a Shanghai registered company named Shanghai Weixu Lighting Co., Ltd (“the Company”), and the Respondent’s email address is “[…]@vip.163.com”. An Internet search by the Panel revealed that the Respondent’s email is associated with the Company, from which it can be inferred that the Respondent and the Company are closely connected. The Panel’s check of the official company records confirms that the scope of the Company’s business includes “lighting”.
Based on the above, the Panel can validly infer that the Respondent, who appears to be involved in the lighting industry, knew or should have known of the Complainant, its trade marks and business activities, at the time of registration of the disputed domain name. Thus, the decision to combine the OSRAM trade mark with the Chinese geographical location “shanghai” (the postal address of the Respondent and the Company), to form the disputed domain name, cannot be a coincidence but rather one that was made in bad faith.
The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Given that the Respondent is closely linked to a company operating in the lighting industry based in Shanghai, it can be contemplated that the primary purpose of registering the disputed domain name is to disrupt the Complainant’s business, or to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source or endorsement of its website.
The Respondent has failed to respond to the Complaint. There is no evidence of any actual or contemplated good faith use by the Respondent of the disputed domain name.
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 and, by continuing to hold the disputed domain name, 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.
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 <osramshanghai.com> be transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: May 5, 2018