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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Yang Wo

Case No. D2017-2266

1. The Parties

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

Respondent is Yang Wo of Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <osramos.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November15, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 8, 2017.

The Center appointed Yijun Tian as the sole panelist in this matter on December 14, 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

A. Complainant

Complainant, OSRAM GmbH, is a company incorporated in Munich, Germany. Founded in 1919, Complainant is an international joint stock company. It employs currently more than 34,000 people and has operations in over 120 countries. In the 2016 financial year, a revenue of the about EUR 5.7 billion was achieved. OSRAM has expanded to the Asian/Pacific market, which, in the year 2016 made more than 32percent of its sales. In the same year, OSRAM had about 5,300 employees in China (see Annex 5 to the Complaint).

Complainant has exclusive rights in the OSRAM marks. Complainant is the exclusive owner of numerous OSRAM trademarks, including the Chinese trademark registered since June 2, 1977 (the Chinese trademark registration number 75842) (Annex 15 to the Complaint), the United States of America ("US") trademark registered since August 22, 1989 (the US trademark registration number 1,552,573) and International trademarks registered since April 16, 1997 (the International trademark registration number 676932) (Annex 8 to the Complaint). Complainant also owns and operates domain names, which contain OSRAM mark in its entirety, such as <osram.ca> and <osram.ge> (Annex 18 to the Complaint).

B. Respondent

Respondent is Yang Wo, apparently an individual residing in Guangdong, China. The disputed domain name <osramos.com> was registered on August 29, 2017, currently resolving to a website which is offering online lotto service in Chinese language.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name <osramos.com> is identical to Complainant's OSRAM trademarks. The suffix "os" and the addition of the generic Top-Level Domain ("gTLD") ".com" do not change the overall impression of the designation as being connected to the trademark OSRAM of Complainant.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <osramos.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the OSRAM marks acquired through registration. The OSRAM marks have been registered in China since 1977 and in the US since 1989.

The disputed domain name <osramos.com> comprises the OSRAM mark in its entirety. The disputed domain name only differs from Complainant's trademarks by the suffix "os", and the gTLD suffix ".com" to the OSRAM marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it" (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 citing General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

WIPO Overview 3.0 further states:

"The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that the suffix "os", and the gTLD suffix ".com" are not sufficient to negate the confusing similarity between the disputed domain name and the OSRAM marks. Based on the information provided in the Complaint, "os" is the abbreviation of the Opto Semiconductors ("OS"), which is one of Complainant's most innovative products. Internet users are likely to be confused and may falsely believe that the disputed domain name <osramos.com> is operated by Complainant for providing products or services in relation to Opto Semiconductors.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

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

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

(iii) 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 Complainant's trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant, founded in 1919, is an international joint stock company, with its headquarters in Munich, Germany. It employs currently more than 34,000 people and has operations in over 120 countries, including China. Complainant has rights in the OSRAM marks in China since 1977, which long precede Respondent's registration of the disputed domain name (2017).

Moreover, Respondent is not an authorized dealer of OSRAM-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "osram" in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the OSRAM marks or to apply for or use any domain name incorporating the OSRAM mark.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <osramos.com> on August 29, 2017, long after the OSRAM marks became widely known. The disputed domain name is identical or confusingly similar to Complainant's OSRAM marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently offering online lotto service in Chinese language.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pock et costs directly related to the disputed domain name; or

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that Complainant has a widespread reputation in the OSRAM marks with regard to its products and services. Complainant, founded in 1919, is an international joint stock company, which employs currently more than 34,000 people and has operations in over 120 countries. In 2016, it had about 5,300 employees in China. Complainant has rights in the OSRAM marks in China since 1977. It is not conceivable that Respondent would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain name (in 2017).

Moreover, Respondent has chosen not to respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith" (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith.

Moreover, Respondent is using the website resolved by the disputed domain name to offer online lotto services and the links to online lotto service websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to "attract, for commercial gain, Internet users to Respondent's websites." (BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-104 1).

To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the reputation of the OSRAM Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the OSRAM Marks. Moreover, as mentioned above, Respondent offered the links to online lotto websites via the website to which the disputed domain name resolves. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant's internationally known trademarks, intended to disrupt Complainant's business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <osramos.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 25, 2017

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