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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Bill Liu

Case No. D2014-2113

1. The Parties

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

The Respondent is Bill Liu of Shenzhen, China.

2. The Domain Name and Registrar

The disputed domain name <osram-os.mobi> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. of China (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2014. On December 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Complainant filed an amendment to Part C of the Complaint on December 11, 2014.

On December 11, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 12, 2014, the Complainant submitted a 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 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 both Chinese and English, and the proceeding commenced on December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2015.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 4, 2015. 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 an international company, operating under the company name “OSRAM GmbH”, with its headquarters in Munich, Germany. The Complainant’s company name “Osram” is protected as a trademark in several countries and regions around the world, including Asia. The Complainant provided evidence of over 500 registrations for OSRAM as a trademark or service mark in over 150 countries and regions in Annex 7 to the Complaint. The evidence shows that the Complainant’s registrations of the OSRAM marks began at least as early as 1911. The Complainant is also the owner of more than 160 domain names based on the OSRAM mark. The Complainant offered evidence of its ownership of these domain names in Annex 15 to the Complaint.

The Respondent is Bill Liu of Shenzhen, China.

The Disputed Domain Name <osram-os.mobi> was registered on April 16, 2009. The Complainant has submitted evidence showing that the disputed domain name is passively held.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to the Complainant’s OSRAM marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Complainant has requested that English be recognized as the language of the proceeding. The Complainant bases its request on the assertion that the Disputed Domain Name was registered in ASCII characters using the Roman alphabet, which is used by English speakers. Further, the Complainant asserts that is does not understand nor speak Chinese and conducting the proceeding in Chinese would unfairly disadvantage the Complainant due to the cost of translation and the delay in the proceeding.

The Respondent has not commented regarding the language of the proceeding. However, the amendment to the Complaint of December 11, 2014, which contains an email communication from the Respondent written in English, evidences that the Respondent understands English.

Taking the foregoing into account, along with the Respondent’s default, the Panel concludes that English should be the language of the proceeding. Translation of the Complaint and other materials would cause unnecessary expense and delay.

Where a party fails to present evidence of facts in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is one of the largest lighting manufacturing companies in the world. The Complainant asserts that it belongs to the OSRAM group, which was founded in Germany in 1919. The Complainant further asserts that it currently employs more than 43,000 people, supplies customers in about 150 countries, and manufactures at 46 sites in 17 countries. Further, the Complainant asserts that it has traded under the name “Osram” since its foundation. As stated above, the Complainant is the registered owner of numerous OSRAM marks in a number of jurisdictions. The record shows the Complainant owned rights in the OSRAM marks before the Disputed Domain Name’s registration. The Panel finds that the OSRAM marks are distinctive and well-known by the public as indicating the Complainant’s goods, and that the Complainant has rights in the OSRAM mark. Previous UDRP panels have made similar findings. See OSRAM GmbH v. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Entrprise Ltd., WIPO Case No. D2008-1032; OSRAM GmbH v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1033.

The Complainant asserts that the Disputed Domain Name is confusingly similar to its OSRAM marks. The Panel agrees. The Disputed Domain Name incorporates the OSRAM mark in its entirety. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, b/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (“In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Complainant further asserts that the inclusion of “-os” to its OSRAM marks is insufficient to overcome the similarity to its OSRAM marks. The Panel Agrees. The inclusion of generic content is insufficient to overcome a finding of confusion, particularly where, as here, the dominant feature of the Disputed Domain Name is a well-known mark. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. Further, the Respondent has not offered any argument to show that this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that is was chosen with the Complainant’s marks in mind. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181.

Further, the addition of the “.mobi” Top-Level Domain suffix is insufficient to overcome a finding of confusing similarity. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, previous UDRP panels have typically disregarded the generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) portion of the URL address. See Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Moataz Mohsen, YAHO, WIPO Case No. DME2014-0003. Further, previous UDRP Panels have held that the addition of the Top-Level Domain suffix “.mobi” does not prevent a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the trademarks of the Complainant. Adidas AG v. Zhifang Wu, WIPO Case No. D2007-0032. Thus, the Panel finds that the use of the terms “-os” and “.mobi” in the Disputed Domain Name does not serve to distinguish the Disputed Domain Name from the Complainant’s OSRAM marks. Thus, it is likely that consumers would be confused by the use of the OSRAM mark in the Disputed Domain Name.

In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered marks and that paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “Osram”. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

As discussed above, it is clear that the Complainant’s OSRAM marks are distinctive and famous. Given this, the Panel finds that the Respondent was likely aware of or should have known of the Complainant’s rights in the OSRAM marks when registering the Disputed Domain Name. The record shows that the Complainant owns trademark rights in the OSRAM marks that predate the creation of the Disputed Domain Name and that the Disputed Domain Name contains the Complainant’s mark in its entirety. Further, there is no evidence that the Respondent has any rights in the term “Osram”. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to show that this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that it was chosen with the Complainant’s marks in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., supra. The Panel finds that the Respondent registered the Disputed Domain Name in bad faith.

The Complainant submits that the Respondent is using the Disputed Domain Name in bad faith. The Panel agrees. There is no evidence that the Respondent has used or intends to use to the Disputed Domain Name for purposes of a bona fide offering of goods and services over the Internet. Paragraph 4(b)(i) of the UDRP provides that “the following circumstances […] shall be evidence of the registration and use of a domain name in bad faith: […] circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark […] for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. There is evidence which shows that the Respondent has registered the Disputed Domain Name for the purpose of reselling it to the Complainant or its competitor at a price which is higher than their registration fees. In particular, the Complainant has submitted evidence of the Respondent’s attempt to sell the Disputed Domain Name to the Complainant for “10,000 Europen (sic) dollars”. (See Annex 18) Thus, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the 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 Disputed Domain Name under paragraph 4(b)(i) of the Policy.

In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <osram-os.mobi> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: February 18, 2015

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