WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. yangjun/WHOISAGENT, Domain Whois Protection Service

Case No. D2014-0552

1. The Parties

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

The Respondent is yangjun of Shenzhen, Guangdong, China and WHOISAGENT, Domain Whois Protection Service of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <dosram.com> 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 April 4, 2014. On April 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 11, 2014.

On April 9, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. The Complainant submitted its request that English be the language of the proceeding by email on April 11, 2014. The Respondent did not submit any comments within the specified due date.

The Center verified that the Complaint together with the amendment to 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 English and Chinese, and the proceedings commenced on April 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2014. The Response was filed with the Center on April 15, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 16, 2014. 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 belongs to the OSRAM group which was founded in Germany in 1919. It is an international company and is one of the two largest lighting manufacturing companies in the world.

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”. Presently, the Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions.

The Complainant also has an extensive Internet presence and is the owner of more than 160 domain names based on the denomination “Osram”, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).

The disputed domain name was created on March 13, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the OSRAM marks to which the Complainant has rights for the following reasons:

1. The disputed domain name is in its relevant distinguishing parts identical to marks owned by the Complainant and the Complainant’s company name.

2. The dominant and distinctive feature of the disputed domain name is the well-known element “osram”.

3. The only difference between the disputed domain name and the Complainant’s trademark resides in the adjunction of the letter “d”. The letter “d” however does not outweigh the strong similarity between the disputed domain names and the Complainant’s mark and its company name. It has been found in several UDRP decisions that a domain name which contains a common or obvious misspelling of a trademark normally is confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the disputed domain name.

4. The risk of confusion is even enhanced by the fact that the disputed domain name is being used for lighting products.

5. The “.com” element is a gTLD. The top-level suffix is to be disregarded under the confusing similarity test.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

1. In particular to the best of the Complainant knowledge, the Respondent is not holder of a trademark for OSRAM and has no rights in a personal name “Osram”.

2. The Respondent has not registered the disputed domain in connection with a bona fide intent as the Respondent is no licensee of the Complainant with regard to the trademark rights or the right to register the disputed domain name.

3. The Respondent is also not commonly known by the disputed domain name.

4. The Respondent is no authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant.

5. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name was registered in bad faith and has been used in bad faith for the following reasons:

1. The Complainant asserts that OSRAM is a famous trademark of the lighting manufacturer OSRAM GmbH.

2. The disputed domain name is in use for a webshop via which lighting products of competitors are sold and advertised. Bad faith exists where there can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name. It is obvious that the Complainant’s famous trademark is being used in order to attract potential buyers to the site of “SIMRAM Electronics Ltd.”. The website is easily reached through a typing error when someone searches for “Osram” products. The disputed domain name is therefore solely used in order to redirect the typo-traffic to this webshop. It has been found in several previous UDRP decisions that the registration of a typosquatting domain name demonstrates bad faith. Here, the Respondent certainly must have knowledge about the worldwide well-known Complainant’s mark OSRAM.

3. The Respondent uses the disputed domain name not for personal noncommercial interests. The Respondent’s selection of the disputed domain name <dosram.com> which is virtually identical to the well-known Complainant’s registered trademark OSRAM clearly indicates a bad faith intent as there is no plausible reason why the trademark was chosen for the disputed domain name.

4. The Respondent has not attempted to make any bona fide use of the disputed domain name. The registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the Respondents, but rather constitutes bad faith under paragraph 4(b) of the Policy. This again proves that the Respondent knows the Complainant well and thus registered the disputed domain name in bad faith.

5. The fact that the Respondent does not disclose its name and address also shows that the registration was made in bad faith.

7. The Respondent did not response to the warning letter dated March 18, 2014.

8. The Respondent uses the well-known trademark and company name of the Complainant to address Internet users to its own websites. Such use of the disputed domain name is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent provided an explanation of the choice of the disputed domain name. His company’s main business is the manufacture of integrated circuits (IC) of computer system processor and therefore, he has chosen to register a domain name that is made up of the first letters in the term “Disk Operation System Random Access Memory”. Accordingly, the disputed domain name comprises of two parts, “dos” and “ram”.

The Respondent further asserts that he has entered into the LED lighting device market through his companies Simram Semic Technology Co Ltd and ShenZhen Simram Electronics Co Ltd. His company’s domain names include <simram.com>, <simram.com.cn> and the disputed domain name <dosram.com> points to an auxiliary website.

The Respondent denies that he is in receipt of the Complainant’s warning letter dated March 18, 2014.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has decided to submit a request that English be the language of proceedings. The Respondent did not object to the Complainant’s request and has filed a Response in English.

After considering the circumstances of the present case, the submission of the Complainant’s request and the fact that the Respondent is able to file a Response in English in a timely fashion, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(ii) the 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the OSRAM mark since 1906 in relation to lighting device. The Panel finds that Complainant has rights and continues to have such rights in the relevant OSRAM mark.

The disputed domain name consists of the Complainant’s mark OSRAM in its entirety, the English letter “d” attached to it in the front and the suffix “.com”. In assessing the degree of similarity between Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s OSRAM mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.

The Panel finds that Complainant’s OSRAM mark is distinctive and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “osram” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the simple inclusion of the English letter “d” in front of the distinctive “Osram” term does not provide additional specification or sufficient distinction from the Complainant or its OSRAM mark. It is also an accepted principle that the addition of suffixes such as “.com” being the gTLD is not a distinguishing factor.

The Panel finds for Complainant on the first part of the test.

B. Rights or Legitimate Interests

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

1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or credible reasons to justify the choice of the term “dosram.com” in its business operations. The Panel finds the Respondent’s explanation of the choice of the disputed domain name weak as there is no evidence in support of the fact that the disputed domain name is indeed used in relation to the Respondent’s claimed integrated circuit business;

2. There is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the OSRAM trademark;

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4. On the contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s OSRAM branded products on its website without the consent of the Complainant. The Respondent is not an authorized agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use OSRAM marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.

5. The Complainant and its OSRAM trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with lighting device and is a registered trademark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the OSRAM trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.) Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

Taking into account the above, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interests in the disputed domain name.

The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adequately rebutted the Complainant’s prima facie case.

The Panel finds for the Complainant on the second part of the test.

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 domain name in bad faith, namely:

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

(ii) A respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or

(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its OSRAM trademark, as well as the market presence of the Complainant in numerous countries including China and considering the use to which the disputed domain name has been put, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

Furthermore, the Complainant has established a substantial presence on the Internet through the registration of over 160 domain names based on the denomination “Osram”, covering both gTLDs and ccTLDs. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Consequently, it would have been pertinent for the Respondent to provide a credible explanation of its choice for the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products. In this respect, the Panel finds the Respondent’s explanation of the choice of the disputed domain name weak as there is no evidence in support of the fact that the disputed domain name is indeed used in relation to the Respondent’s claimed integrated circuit business. On the contrary, the disputed domain name points to a webshop purporting to sell the Complainant’s OSRAM branded lightings. Consequently, the Panel finds that the Respondent has not rebutted the inference that the disputed domain name was registered with the intent to create an impression or association with the Complainant and its OSRAM brand of products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s OSRAM branded products on its website without the consent of the Complainant. The Respondent is not an authorized agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s OSRAM trademark, the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorization coupled with a less than plausible explanation of the choice of the disputed domain name is a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <dosram.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: June 6, 2014