World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram AG v. wangjianliang

Case No. D2012-1915

1. The Parties

The Complainant is Osram AG of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is wangjianliang of Tianjin, China.

2. The Domain Name and Registrar

The disputed domain name <lightingosram.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2012, 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 October 1, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 4, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.

The Center received the Respondent’s email requesting for extending the response due date on October 31, 2012, and November 5, 2012. Considering all the circumstances, the Center declined to extend the period for Response. The Respondent filed a supplemental filing on November 8, 2012.

The Center appointed Douglas Clark as the sole panelist in this matter on November 15, 2012. 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, Osram AG, is one of the two largest lighting companies in the world. It is part of the Osram Group which was founded in 1919. The Complainant has sales in 150 countries around the world.

The Complainant has registered the trademark for lighting in numerous countries around the world including an International Registration designating China.

The Complainant also holds over 160 domain names which include “Osram” as part of their name.

The disputed domain name <lightingosram.com> was registered on February 25, 2012. The website to which the disputed domain name resolves is the website of a Chinese company “Boking” which deals in lighting products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered trademark OSRAM. It is composed of the Complainant’s trademark OSRAM and the generic term “lighting”.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and it is not a licensee.

The Complainant contends that the disputed domain name was registered and is being used in bad faith with the intention of diverting Internet users to its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions by the response due date.

As noted above, the Respondent did make a request for an extension of time to file a response which was rejected by the Center. The Respondent filed a further submission (in Chinese) on November 8, 2012 making a further request for an extension of time to file a response. This further submission did not provide any indication as to what the substance of the Response the Respondent intended to file was. It did however show that the main webpage of the Respondent was “www.bokinglighting.com” which was identical to the website that resolves to the disputed domain name.

The Panel has considered if it should grant an extension of time to file a Response. The Panel has determined in the circumstances of this case it is not appropriate to do so, particularly given that, as set out below the merits are very much in favour of the Complainant.

6. Discussion and Findings

Language of Proceedings

The language of the Registration Agreement is Chinese. The Complainant requested the language of proceedings be English on a number of grounds including that the disputed domain name used ASCII characters and that for convenience that to avoid extra time and costs in translating a complaint. The Respondent did not respond to the language request. The Respondent did, however, make a number of filings in Chinese seeking an extension of time to file a response. The Respondent did not state that it could not understand English. The website that the disputed domain name resolves to is in English and Chinese.

In the circumstances of this case the Panel decides that the language of proceedings shall be English. In any event, the Panel notes that the Center on October 11, 2012 provided the Notification of Complaint communication and materials in both English and Chinese language and indicated that it would accept a response in either English or Chinese. The Complaint was filed in English and the Panel will render its decision in English.

Substantive Decision

This is a relatively straightforward case which, in the Panel’s opinion, does not require detailed discussion.

A. Identical or Confusingly Similar

The disputed domain name <lightingosram.com> is composed of the Complainant’s registered trademark OSRAM and the generic word “lighting”. The Panel finds that the dispute domain name is confusingly similar to the Complainant’s registered trademark.

According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The first element of the UDRP is made out.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.

C. Registered and Used in Bad Faith

The Panel also finds that the disputed domain name <lightingosram.com> was, for the purposes of the Policy, registered in bad faith and is being used in bad faith.

Under the circumstances, this case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The third element of the UDRP is made out.

The Panel notes that the Respondent has made no attempt to hide its identity either in registering or using the disputed domain name. The Panel bases its finding of bad faith solely on paragraph 4(b)(iv) 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 <lightingosram.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: December 3, 2012

 

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