World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram AG v. Domain Whois Protection Service / Ecosram LED Technology Limited

Case No. D2012-2076

1. The Parties

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

The Respondent is Domain Whois Protection Service of Beijing, China / Ecosram LED Technology Limited of Shanghai, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <ecosram.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 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 November 2, 2012, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On November 2, 2012, the Complainant confirmed its request that English be 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on November 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. The Respondent sent email communications regarding the language of the proceedings and requested to extend the Response due date on November 27 and 28, 2012. The Response was filed with the Center on November 29, 2012.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 6, 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 is a lighting manufacturing company based in Germany.

The Complainant manufactures lighting products including optical semiconductors products, such as light emitting diodes (LED) for consumer, commercial, and industrial applications.

The Complainant is the proprietor of many trademarks and service marks throughout the world incorporating OSRAM.

The Complainant is also the registrant of domain name <osram.com> and many others based on the denomination “osram”.

The Respondent is based in China and is also engaged in the business of selling LED lighting products.

The Disputed Domain Name was registered on May 30, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights:

(i) The Complainant is one of the largest lighting manufacturing companies in the world, having been founded in Germany in 1919;

(ii) The Complainant is the proprietor of more than 100 OSRAM international trademarks. The OSRAM brand was registered as a trademark for lamps as early as April 17, 1906;

(iii) The Complainant’s trademarks have become well-known internationally and the Complainant’s trademarks have been recognized as famous trademarks by governments and legal communities around the world;

(iv) The Complainant is the registrant of more than 160 domain names based “osram”, including <osram.com>;

(v) The Disputed Domain Name is identical to the Complainant’s trademark in the dominant and distinguishing part of the Disputed Domain Name;

(vi) The addition of “ec” at the beginning of the Disputed Domain Name is not sufficient to outweigh the strong similarity between the Disputed Domain Name and the Complainant’s trademark;

(vii) The Respondent has created a likelihood of confusion with the Complainant’s trademark; and

(viii) Consumers may be misled into that “ecosram” is associated with the Complainant’s ECO lamp line of products.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:

(i) The Respondent has no rights in the trademark OSRAM;

(ii) The Respondent does not use the trademark OSRAM and the Disputed Domain Name in connection with a bona fide offering of goods or services;

(iii) The Respondent is not associated with, authorized by, or otherwise affiliated with the Complainant; and

(iv) The Disputed Domain Name is not used for a legitimate noncommercial use or fair purpose.

(c) The Disputed Domain Name was registered and is being used in bad faith:

(i) The Respondent must have been aware of the Complainant and the Complainant’s famous trademark when the Respondent registered the Disputed Domain Name;

(ii) The Respondent intended to mislead consumers searching for the Complainant’s products to the Respondent’s website in order to sell competing products.

(iii) The Respondent uses the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The Respondent’s contentions can be summarized as follows:

(a) The Disputed Domain Name is not identical or confusingly similar to the Complainant’s trademark:

(i) The Disputed Domain Name is comprised entirely of generic terms. The “ec” prefix has no meaning;

(ii) The Respondent did not intend to copy the Complainant’s trademark or products when selecting the Disputed Domain Name;

(iii) The Disputed Domain Name does not relate to any products from the Complainant; and

(iv) The Complainant cannot claim rights to any name incorporating the Complainant’s trademark.

(b) The Respondent has rights and legitimate interests in respect of the Disputed Domain Name:

(i) The Respondent performed due diligence prior to the registration of the Disputed Domain Name to ensure that the Disputed Domain Name would not create conflict with any domain names;

(ii) Prior to notice of the dispute, the Respondent had been using the Disputed Domain Name in connection with a bona fide offering of goods and service; and

(iii) Prior to the notice of the dispute, the Respondent had been known by the Disputed Domain name and had used search engines and various B2B platforms to promote its products.

(c) The Disputed Domain Name was not registered and is not being used in bad faith:

(i) The Respondent did not register the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or any of its competitors;

(ii) The Respondent is using the Disputed Domain Name in connection with promoting and selling the Respondent’s own line of products;

(iii) The Respondent is using the Disputed Domain Name to sell different products and to present different contents from those of the Complainant. The website of the Disputed Domain Name has a different trademark, different logo, and different icon;

(iv) The Respondent does not sell the Complainant’s products or use the Complainant’s trademark;

(v) The Respondent does not attract Internet users to links that compete with the Complainant;

(vi) The Disputed Domain Name and the Complainant’s trademark do not appear together in any search results presented by Internet search engines;

(vii) The Respondent and the Complainant do not appear together in any search results when a user searches using either the Respondent or the Complainant’s name.

(viii) Users searching for the Complainant’s trademark do not see the Disputed Domain Name in the search results and will not be attracted to the Disputed Domain Name; and

(ix) Analysis of visitors to the Disputed Domain Name indicates that 98.7% of visitors enter the Respondent’s website after searching directly for the Respondent’s Disputed Domain Name or for the Respondent’s products.

6. Discussion and Findings

Language of the Proceeding

The Complainant was submitted in English. The language of the Registration Agreement is Chinese. The Complainant has requested that English be the language of the proceeding. The Respondent has submitted informal email communications in Chinese. The record shows that the Respondent comprehends English specifically the content of the website at the Disputed Domain Name is in English. Therefore, according to paragraph 11(2) of the Rules, this Panel concludes that it is acceptable to proceed in English.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights to the OSRAM trademark on the basis of its ownership of over 100 international trademarks. The Complainant’s trademarks are well-known and famous, particularly in connection with lighting manufacturing. The Disputed Domain Name incorporates the OSRAM trademark in its entirety and only adds “ec” to the front of the trademark. In determining the issue of identical or confusingly similar name between the Disputed Domain Name and the trademark, “panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark”. Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.

The Respondent does not offer any explanation of why it selected the Disputed Domain Name other to argue that it’s generic. However, it may be safely assumed that the Respondent had knowledge of the Complainant on the basis of the Complainant’s famous mark and that the Respondent was competing against the Complainant. The Respondent admits that “ec” has no meaning. The Panel is of the view that the addition of “ec” to the trademark is insufficient to distinguish the Disputed Domain Name from the Complainant’s trademark. The evidence also shows that the Complainant produces a line of ECO LED lamps. In addition, the Complainant is also the registrant of the <osram.ec> and <osram-ec.com> domain names.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the OSRAM trademark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. It is the Panel’s view that it is precisely because of this association with the Complainant’s marks that the Respondent registered the Disputed Domain Name.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of production to demonstrate it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contents that the Respondent is not connected or associated with the Complainant's business and is not on any other basis licensed or authorised to use its OSRAM trademark. Further, the Complainant submits that the Respondent is not known by the Osram name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of proving that it does possess such rights or legitimate interests.

The Respondent argues that it has a legitimate interest in the Disputed Domain Name because prior to notice of the dispute, the Respondent had been using the Disputed Domain Name in connection with a bona fide offering of goods and service. However, the Respondent registered the Disputed Domain Name only after Complainant had long established rights in the OSRAM family of trademarks. Moreover, the Respondent specifically chose its domain name to be almost identical or confusingly similar to the Complainant’s well-known name worldwide to gain a foothold in the LED lighting market. In this Panel’s view, the Complainant’s trademarks and name are so well-known and so widely recognized, and have been used in connection with lighting manufacturing for so long that there can be no legitimate use in this case by the Respondent of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent uses the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s company name and its trademark.

The Respondent argues that there is no possibility of consumer confusion because the Respondent sells different products. The Respondent also argues that the contents and structure of the Respondent’s website using the Disputed Domain Name are different from those of the Complainant, and that that there is no overlap in search results when Internet users enter the Complainant’s name or the Respondent’s name into a search engine. However, a comparison of the product offerings by the Complainant and the Respondent shows that virtually all the products sold by the Respondent, such as “LED tubes”, “LED downlights”, “LED lamps”, “LED flexible strip modules”, and other “LED product lines”, are also offered by the Complainant. It may be assumed that the Respondent directly competes with the Complainant. It may also be safely assumed that the Respondent knew of the fame of the Complainant’s trademarks when the Respondent registered the Disputed Domain Name.

It is the Panel’s view that the Respondent selected the Disputed Domain Name for the express purpose to trade on the similarity of the Disputed Domain Name to the Complainant’s well-known trademark. Accordingly, the Panel finds that the Respondent uses the Dispute Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source of products on the website as per paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.

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 <ecosram.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: December 25, 2012

 

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