WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. 李军云 (Lijunyun)

Case No. DCN2020-0012

1. The Parties

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

The Respondent is 李军云 (Lijunyun), China.

2. The Domain Name and Registrar

The disputed domain name <iot-osram.cn> is registered with 阿里云计算有限公司（万网）(Alibaba Cloud Computing Limited) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2020, 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 China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on May 26, 2020. In accordance with the Rules, Articles 17 and 49, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 24, 2020. 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, Article 29.

4. Factual Background

The Complainant is a company in Munich, Germany, and belongs to the Osram Licht group which was founded in Germany in 1919. The Complainant is the operative company of Osram Licht AG, which employs currently approximately 23,500 people and has operations in over 120 countries. The Complainant concentrates its business in technology and related on semiconductor technologies, including the lighting industry market. The distribution of OSRAM LED lamps and classic lamps and ballasts is carried out by an independent company Ledvance GmbH as a licensee since 2016.

The Complainant has traded under the name “Osram” since its foundation, having become the most relevant of its trademarks. On April 17, 1906, the OSRAM brand was registered as a trademark for “electrical incandescent and arc lamps”. The Complainant has established offices in European countries, Rio de Janeiro, Brazil, Shanghai, China, and elsewhere.

The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, e.g., Chinese trademark registration no. G567593, registered on February 15, 1991. Moreover, the Complainant owns over 100 international OSRAM trademarks.

The international use of OSRAM trademarks is widespread and in addition, the Complainant has taken intellectual property enforcement actions in China.

The disputed domain name was registered on October 25, 2019 and does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademark OSRAM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

The Complainant essentially claims that its trademark is famous and well regarded in the lighting industry market, and provides evidence of its marketing materials, including the Wiki search in respect of Osram, the previous UDRP decisions, the certificates of trademark registration showing that the Complainant owns OSRAM trademarks in many jurisdictions, which emphasized that the OSRAM marks are worldwide well-known trademarks and OSRAM is a very distinctive brand.

In this case the disputed domain name is linked to an inactive webpage. The Complainant claims that it does not allow licensees to register domain names containing the OSRAM brand. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes registration and use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to Article 8 of the Rules, unless otherwise agreed by the Parties, or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese.

The Complainant filed its Complaint in English, including a request that the language of the proceeding be English. On May 26, 2020, the Center formally notified the Respondent in Chinese and English of the Complaint, including about the language of the Complaint, and about the Respondent’s right to reply in either Chinese or English. The Center also indicated that it would appoint a Panel who would be familiar with both Chinese and English. Nevertheless, the Respondent did not respond regarding the language of the proceeding and also did not respond on the merits of the proceeding.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English, the lack of comment on the language of the proceeding, and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese). The Center’s communications were sent in both Chinese and English but no response was received in any language. Bearing in mind the composition of the disputed domain name in English letters rather than Chinese transcripts, the added expenses and burden to the Complainant and unwarranted delays to the proceeding, in view of these circumstances, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; and

(iii) the Respondent has registered or has been using the disputed domain name in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar to the Complainant’s name or mark in which the Complainant has civil rights or interests

The Panel finds that the Complainant has shown that it has valid rights in the sign OSRAM based on its intensive use and registration of the same as a trademark in several jurisdictions, including China.

Moreover, as to identity or confusing similarity of the disputed domain name, the disputed domain name consists of the Complainant’s registered trademark OSRAM in its entirety. There are letters “iot” in front of “osram” which are known to be the abbreviation of the commonly known English term “internet of things”, together with a hyphen “-”. The Panel finds that the letters “iot” and a hyphen “-”does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name, in the Panel’s view, is considered as confusingly similar to the Complainant’s mark OSRAM in which the Complainant has civil rights or interests.

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademark. The website currently does not offer any goods and services and does not show a bona fide offering of goods or services. Furthermore, the Respondent is not commonly known by the disputed domain name. The Respondent also has not submitted materials to rebut the Complainant’s prima facie case, and to support his rights or legitimate interests in the disputed domain name.

The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by Article 10 of the Policy apply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.

C. Registered or Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademark, was obtained in bad faith.

Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in OSRAM and used these extensively. But the Respondent still registered the disputed domain name. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name resolves to an inactive website. The Panel holds that the non-use of a domain name under the circumstances of this case would not prevent a finding of bad faith. See Siemens AG 诉黄志鸿（Huang Zhi Hong）, WIPO Case No. DCN2020-0003.

The Panel has reviewed all elements of this case, in particular, the confusing similarity between the disputed domain name and the Complainant’s trademark and the high degree of distinctiveness and fame of the Complainant’s trademark. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <iot-osram.cn> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: July 8, 2020