WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Nexperian Holding Limited / Wang Kang

Case No. D2017-2027

1. The Parties

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

The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Wang Kang, Tian Jin Jin Ying Xiang Mao Yi You Xian Gong Si of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <china-osram.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 October 19, 2017. The Complainant, under the referring to paragraph 11 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) (Rules stating the panel is given the authority to determine a language for proceeding other than the language of the registration agreement), requested and was accepted, that English to be the language of the proceedings.

On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2017, 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.

On October 24, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On October 25, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center sent an email communication to the Complainant on October 24, 2017 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 October 26, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 4, 2017. 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 ‘s company name is Osram OSRAM Gmbh (“OsramOSRAM”), a German limited liability company and belongs to the Osram OSRAM Licht group which was founded in 1919. The Complainant is the operative company Osram OSRAM Licht AG, and international joint stock company with operations in over 120 countries. Osram OSRAM is one of the largest lighting manufacturing companies around the world with a revenue of EUR 5.7 billion Euro in 2016. They sell LED lamps, lamps and ballasts and currently focusing on technology and innovation led applications based on semiconductors technologies, addressing new trends of the lighting industry market among others, opto semiconductors, automotive and specialty lighting, luminaires and solutions.

Osram OSRAM has made continued advancements since 1919 including in 1992 acquiring the second largest lighting manufacturer in North America, known as “SylvaniaSYLVANIA” to be combined with their advancement into the United States, and Canada and Puerto Rico. Osram OSRAM has expanded to the Asian/Pacific market where in 2016 made more than 32% of their sales. On July 8, 2013, they began on the Frankfurt Stock Exchange, trading under the name “OSRAM”.

The Complainant has traded under the name “OsramOSRAM” since its foundation, being among the most relevant recognizable of its trademarks. They obtained a registration for the mark “OSRAM” for “electrical incandescent and arc lamps” on April 17, 1906 (German registration no. DE86924). The Complainant has registered over 500 “OSRAM” trademarks and services marks in over 150 countries and regions.

The Complainant has extensive international use and has been successful in dozens of WIPO UDRP cases where the Panel confirmed that the name “OsramOSRAM” is a “very distinctive identifier” of the Complainant and its products and the marks are world-wide well known trademarks. In Thailand the OSRAM trademarks have been registered as well-known trademarks.

The Complainant has also registered over 640 domain names incorporating the OSRAM trademark, covering both generic Top-Level Domains (“TLD”) gTLD’s and ccTLDs.

The disputed domain name was registered on June 2, 2017. The disputed domain name is in use for a webshop in which lighting products and projection lights are advertised and available for purchase.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s OSRAM trademarks. The Complainant has rights in the OSRAM trademarks by virtue of its trademark registrations. When comparing the disputed domain name to the Complainant’s trademark, the comparison should be made to the second-level portion of the disputed domain name only. The Top-Level Domain (“TLD”) “.com” should not be considered. The disputed domain name consists of the OSRAM trademark plus the term “china-”, which is a geographical location. The addition of the generic term “china” does not negate the confusing similarity. Additionally, the Respondent’s use of the disputed domain name contributes to the confusion because the Respondent is using the disputed domain name to direct Internet users to a website featuring a modified version of the Complainant’s OSRAM logo. This indicates that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The WhoIs data for the disputed domain name identifies the registrant as “HiChina Zhicheng Technology Ltd.”, which does not resemble the disputed domain name in any way. The Respondent’s use of the Complainant’s mark in the Respondent’s domain name website is a direct attempt to take advantage of the fame and goodwill that the Complainant has built in its brand since 1919.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s OSRAM trademarks enjoy a substantial and widespread reputation and have been in use since 1919, well before the Respondent registered the disputed domain name. By registering a domain name that incorporates the Complainant’s OSRAM trademark in its entirety and adding the term “china”, the Respondent has created a domain name confusingly similar to the Complainant’s mark and domain name. The OSRAM mark is so associated with the Complainant that the Respondent’s use of it strongly implies bad faith. It defies common sense to believe that the Respondent coincidentally chose the disputed domain name without knowledge of the Complainant because the Respondent added the term “china” as it related to the Complainant’s business activities in the lighting venue worldwide including the Asia/Pacific region. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.

Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainant’s mark in a domain name where the mark is the main feature and attempting to profit from such confusion by using the website associated with the disputed domain name to sell similar products.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. In light of these circumstances, it is appropriate for the Panel to exercise its discretion and allow the proceeding to be conducted in English.

6.2. Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements.

(i) The disputed domain name 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has rights to the OSRAM trademark. The Complainant has established that it is the registered owner of trademark registrations of the OSRAM trademark in many jurisdictions, including in China where the Respondent is located.

The disputed domain name comprises the elements “china”, a hyphen “-”, and “osram” and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v George Latimer, WIPO Case No. D2002-0329. The addition of the word “china” as well as the hyphen does not distinguish the disputed domain name from the OSRAM mark to avoid confusing similarity. See Compagnie Generale des Etablissements v. Michelin-Michelin & Cie. Tgifactory, WIPO Case No. D2000-1414. In addition, China is a geographical location and the addition of the word may only reinforce the confusing similarity because the Complainant’s has operations and a high percentage of sales in the Asia Pacific region, specifically in China. OSRAM remains the dominant part of the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its OSRAM trademark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way.

The Respondent uses the disputed domain name to publish an online retail website that offers similar products as the Complainant’s and which could be confused with the Complainant’s website and goods. Additionally, the OSRAM mark is known globally, including in China, the location of the Respondent and where the Complainant and its services has presence. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the OSRAM mark may be imputed to the Respondent at the time of registration of the disputed domain name. See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. (“The inevitable conclusion is that th[is] word[ ] [is] not one[ ] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.”). Indeed, the Respondent’s addition of the term “osram”, which bears a direct connection to the goods offered by the Complainant under its OSRAM mark indicate that the Respondent was aware of the Complainant, its goods and the OSRAM marks.

The Respondent is not making any noncommercial or fair use of the disputed domain name. To the contrary, the evidence in the record indicates that the Respondent uses the disputed domain name for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers to the Respondent’s competing website.

Accordingly, the Panel finds that the record indicates that the Respondent has no rights or legitimate interest in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has 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 that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed 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) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.

The Respondent registered the disputed domain name in bad faith. The Respondent undoubtedly was aware of the Complainant and its OSRAM mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its OSRAM mark are widely known throughout the world. Additionally, the Complainant owns several trademark registrations worldwide. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering the disputed domain name, a simple Internet search for “osram” would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to direct Internet users to a website offering goods that compete with those of the Complainant. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831.

Moreover, the Respondent included the term “china” (“store”), a word that bears a direct connection to the Complainant’s region where their brand has high visibility and sales. The Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent also uses the disputed domain name in bad faith. By using the disputed domain name to link to a website that promotes and offers competing goods, the Respondent conveyed the impression that the Respondent’s website was affiliated with or created, endorsed or sponsored by the Complainant. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s OSRAM mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. See Dow Jones & Company, Inc. v. Down Johns Update, id.

For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain name is 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 <china-osram.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: December 18, 2017