The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Songguangtao, Sichuan, China.
The disputed domain name <jnosram.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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.
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”).
On November 27, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On November 29, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on January 12, 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 belongs to the OSRAM Licht Group which was founded in Germany in 1919. The Complainant is the operative company of OSRAM Licht AG which has its headquarters in Munich. The latter employs more than 34,000 people in over 120 countries. Its revenue in the financial year 2016 was about EUR 5.7 billion. The Complainant’s business expansion included the Asia Pacific market which made up 32% of its sales in the year 2016. In China, the Complainant had about 5,300 employees. On July 8, 2013 the stocks for OSRAM Licht AG were listed on the Frankfurt Stock Exchange.
The Complainant’s OSRAM trade mark is registered in more than 150 countries and regions. It has more than 100 International registrations for marks comprising the word OSRAM including German Trade Mark Registration No. DE86924 dating from 1906, French Trade Mark Registration No. 1455931 dating from 1987, United Kingdom of Great Britain and Northern Ireland Trade Mark Registration No. 330829 dating from 1911, and International Registration No. 321818 dating from 1966.
The Complainant has more than 640 domain names based on the denomination “osram”.
In many earlier UDRP panel decisions, the OSRAM trade mark was held to be a worldwide well-known trade mark (see, e.g., OSRAM GmbH v. Transure Enterprise Ltd, WIPO Case No. D2008-1032; OSRAM GmbH v. James Liang, WIPO Case No. D2012-1573; OSRAM GmbH v. Laurus Trading & Holdings , WIPO Case No. D2012-1547; OSRAM GmbH v. Liu Zhijun, WIPO Case No. DCO2013-0010; OSRAM GmbH v. To Hoang Tung, WIPO Case No. D2013-1453; OSRAM GmbH v. Rong Lei, WIPO Case No. D2014-2106). In Thailand, the OSRAM trade mark has been recognized as a well-known mark. In Germany, the OSRAM trade mark was considered by the German Supreme Court in a case in 1937 to be a famous trade mark. In China, the OSRAM trade mark has been considered to be famous (reference was made by the Complainant to an extract from the Customs webpage of the government in Shanghai). In the Republic of Korea, the OSRAM mark was found by the Korean Internet address Dispute Resolution Committee to be well known in the Republic of Korea (Case IDRC 2009/10/26).
The disputed domain name was registered on March 2, 2017. It resolves to an online shop where lighting products and projection lights are advertised and offered for sale.
The disputed domain name is confusingly similar to the OSRAM mark owned by the Complainant. The additional letters “jn” are insufficient to prevent Internet user confusion, being two meaningless letters. The OSRAM trade mark stands out and leads the public to think that the disputed domain name is somehow connected to the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is, to the best of the Complainant’s knowledge, not holding any rights or legitimate rights in the name “osram”. The Respondent is not a licensee of the Complainant nor is it commonly known by the disputed domain name. The Respondent is not an authorized dealer, distributor or licensor of the Complainant. It is not making any legitimate noncommercial or fair use of the disputed domain name. The Respondent does not explain on its website that the Respondent’s website is not related to the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent does not use the disputed domain name for personal non-commercial interests but, rather, is obviously trying to exploit the Complainant’s famous trade mark in order to attract potential clients. There is no other plausible reason why the Complainant’s OSRAM trade mark was chosen for the creation of the disputed domain name. The registration of a domain name incorporating a third party’s famous trade mark constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Registration Agreement in this case is Chinese. The Complainant, however, requested that English apply as the language of the proceeding. The Respondent did not file any response in this regard.
The Complainant based its request on the following: (i) the disputed domain name comprises letters from the Latin alphabet; (ii) the generic Top-Level Domain (“gTLD”) “.com” was chosen; (iii) the Complainant does not understand Chinese; (iv) the Respondent understands English since the website to which the disputed domain name resolves has a number of English words such as “product”, “contact”, “index”, “about” and “news”; and (v) the translation of the relevant case documents would cause undue costs and delay the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”
Paragraph 10(c) of the Rules stipulates that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel determines in this case that it would be appropriate for English to be applied as the language of the proceeding. The Respondent appears to have a sufficient level of understanding of the English language, and this is reflected in its choice of the disputed domain name and the appearance of English words on the website to which the disputed domain name resolves.
The Panel believes the Respondent would not be prejudiced if English were adopted as the language of the proceeding, having been given a fair and ample opportunity to be heard in the proceeding. Communications from the Center were sent to the Respondent in both Chinese and English. If the Complaint and supporting documents had to be translated into Chinese, there would invariably cause a delay in the proceeding, which has not been shown by the circumstances to be merited. The Respondent was given the opportunity to put forward its position on the issue of the language of the proceeding, but it did not.
On a balance of the interests, the Panel finds that it would be appropriate for English to be the language of the proceeding.
The Complainant has established it has trade mark rights in OSRAM.
The OSRAM trade mark has been incorporated in its entirety in the disputed domain name and is identifiable therein. The disputed domain name differs from the OSRAM mark only by the addition of the letters “jn” and the gTLD “.com”. The differences are insignificant in nature and do not serve to remove the confusing similarity with the OSRAM trade mark. The gTLD “.com” is a technical requirement of domain names, and the letters “jn” do not serve to create a distinctive and different impression from the immediate connection one can see, that the disputed domain one is linked or associated to the well-known OSRAM trade mark.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied.
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate its rights or legitimate interests to a domain name in dispute, namely by establishing any of the following (non-exhaustive) circumstances:
“(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.”
Although a complainant is required, per the Policy, to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panelists is that a complainant is only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case. The burden of production thereafter shifts to the respondent to come forward with evidence that it has rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is regarded as having satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of a relationship between the Complainant and the Respondent or that the Respondent has been commonly known by the disputed domain name. Neither is there evidence of the Respondent’s fair use of the disputed domain name or use for a legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers or to tarnish the OSRAM trade mark, given the Panel’s findings under the third element.
The Respondent failed to file a response or to demonstrate its rights or legitimate interests in the disputed domain name.
In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The Panel is persuaded that the Respondent knew of the Complainant and its well-known OSRAM mark when it registered the disputed domain name. The OSRAM brand name and mark had, by the time the disputed domain name was registered, achieved a high level of reputation and recognition across many countries. It is rather obvious that the Respondent deliberately targeted the Complainant’s well-known trade mark for profit. The Respondent’s website is essentially an online shop whereby lighting products and projection lights are advertised and offered for sale. It is not plausible for anyone in the lighting business to claim not to have heard of the OSRAM brand name.
The Panel finds that the disputed domain name was registered in an attempt to create confusion and to attract Internet users to a website for commercial gain (paragraph 4(b)(iv) of the Policy). Many earlier panel decisions under the Policy have held that the wholesale incorporation of a well-known trade mark into a domain name tends to support a finding of bad faith registration and use. Furthermore, the Panel notes that the website at the disputed domain name misleadingly creates the impression that it is sponsored or operated by the Complainant, without taking sufficient steps to clarify the Respondent’s relationship to the Complainant.
The Respondent failed to respond in the proceeding and therefore in the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established.
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 <jnosram.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: January 19, 2018