WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Cai Ankie,OSRAM INC /Whois-protect, YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)

Case No. D2014-2222

1. The Parties

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

Respondent is Cai Ankie, OSRAM INC of Foshan, Guangdong, China; Whois-protect, YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <osrambath.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 December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 Complainant on December 23, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to Complaint on December 30, 2014.

On December 23, 2015, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On December 30, 2014, Complainant submitted its request that English be the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2015.

The Center appointed Yijun Tian as the sole panelist in this matter on February 9, 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

Complainant, OSRAM GmbH, is a company incorporated in Munich, Germany. It was funded in Germany in 1919. It is one of the two largest lighting manufacturing companies in and well-known around the world. It employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures at 46 sites in 17 countries.

Complainant has exclusive rights in the OSRAM Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally (see Annex 10 to the Complaint). Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, including Australia since 1908 (see Annex 9 to the Complaint). It also owns more than 160 domain names based on the denomination “OSRAM” (see Annex 19 to the Complaint).

Respondent is Cai Ankie, OSRAM INC / Whois-protect, YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service). The disputed domain name <osrambath.com> was registered on October 14, 2014, long after the OSRAM Marks became internationally famous (Annex 8 to the Complaint).

5. Parties’ Contentions

A. Complainant

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

Complainant is one of the two largest lighting manufacturing companies in and well-known around the world. It employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures at 46 sites in 17 countries.

Compliant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, including Australia since 1908 (see Annex 9 to the Complaint).

Due to the extensive international use of the distinctive OSRAM trademarks they have become internationally “well-known”.

Various UDRP decisions, and various national courts and offices have acknowledged the OSRAM marks as being well-known.

Since in China Complainant has regularly prosecuted trademark violations, the OSRAM mark virtually has also become famous, see the extract of the customs webpage of the government in Shanghai where it is explained “Such famous trademark infringement cases as “Benz”, “Kodak”, “Philips”, “Osram”, “Galaxy” and “Diamond” have been seized in succession.” (Annex 16 to the Complaint). Complainant also owns more than 160 domain names based on the denomination “OSRAM” (see Annex 19 to the Complaint).

The disputed domain name in its relevant distinguishing parts is identical to Complainant’s trademarks and company name.

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

The only difference between the disputed domain name and Complainant’s trademark resides in the adjunction of the word “bath” which is descriptive of the products with Respondent is offering on the website to which the disputed domain name resolves.

Respondent offers bathroom appliances on the said website (see Annex 5 to the Complaint). The addition of the descriptive term “bath”, however, does not outweigh the strong similarity between the disputed domain name and Complainant’s marks and its company name.

Complainant also uses the trademark and company name “OSRAM” for bathroom lighting (see Annex 11 to the Complaint), even enhances the impression that the disputed domain name <osrambath.com> is connected to Complainant’s business.

(b) Respondent has no rights or legitimate interests in the disputed domain name.

The elements set forth in Policy, paragraph 4(c) are not fulfilled.

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

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

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

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

(c) The disputed domain name was registered and is being used in bad faith.

OSRAM is a famous trademark of Complainant.

The disputed domain name is currently used for the sale and offering of bathroom appliances such as sinks faucets and so on (see Annex 5 to the Complaint).

Respondent does not use the disputed domain name for personal noncommercial interests. It rather sustains an online store for the sale of bathroom products.

Respondent’s choice of the disputed domain name <osrambath.com> which is virtually identical to the well-known Complainant’s trademark OSRAM clearly indicates bad faith intent to register and use the disputed domain name.

Despite selling bathroom appliances and products, Respondent uses Complainant’s worldwide well-known trademark in the disputed domain name.

Due to the well-known status of Complainant’s trademark in the disputed domain name is to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location. There is no other plausible reason why Complainant’s trademark was chosen for the creation of the disputed domain name.

In the case at issue Respondent reflected in the public WhoIs data did not reply to Complainant’s attempt to contact it before the UDRP Complaint was filed. This supports the finding of bad faith.

Respondent concealed its identity over a privacy service which can also be evidence of bad faith registration or use of a domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 3.9.).

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 trademark does not confer any rights or legitimate interests in the domain name to Respondent, but rather constitutes bad faith udder paragraph 4(c) of the Policy.

Respondent knows or at least should have known Complainant well and thus registered the disputed domain name in bad faith.

Taking into account all the afore-mentioned factors, Respondent has to be found to have acted in bad faith when registering and using the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name was registered in ASCII characters using the Roman alphabet.

(b) The generic Top-Level Domain (“gTLD”) “.com” was chosen. The addressees of “.com” domain names are everywhere around the world and they usually speak and understand English.

(c) The content of the website at the disputed domain name is also available in English (there is a button for “English” on the upper right hand corner of the website) and that relevant parts of the website to which the disputed domain name resolves are in English, such as the terms “COMPANY LOGO”, “HOME”, “FEEDBACK” et.al. on top of the page, the copyright notice, and contact details on the bottom of the page.

(d) The contact details on the bottom of the page refer to an address in California, USA, where the official language is English. It is therefore clear that Respondent speaks and understands English.

(e) Respondent never replied to Complainant’s warning letter and did not try to prevent this proceeding. Complainant therefore requests the procedural language to be English.

(f) In accordance with prior UDRP decisions, where Respondent fails to participate in the proceedings, the language of the proceedings shall be English, in particular with regard to time and cost effectiveness.

(g) Complainant does not understand nor speak Chinese. The obligation to translate all case relevant documents would unfairly disadvantage Complainant. It would be too cost-intensive and the proceeding would be unnecessarily delayed.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.) WIPO Overview 2.0 further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585.)

The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “osram” and English word “bath”. (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047.)

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <osrambath.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) although the website at the disputed domain name is mainly an Chinese-based website, the content of the website is also available in English. There is a button for “English” on the upper right hand corner of the website, and even the Chinese-version website contains many English words, such as the terms “COMPANY LOGO”, “HOME”, “FEEDBACK” et. al. on top of the page, the copyright notice, and contact details on the bottom of the page. The contact details on the bottom of the page refer to an address in California, USA, where the official language is English; (c) the website appears to have been directed to users worldwide both Chinese and English speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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.

On the basis of the evidence introduced by Complainant 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 Panel finds that Complainant has rights in the OSRAM Marks acquired through registration. The OSRAM Mark has been registered worldwide, and Complainant has a widespread reputation as one of the two largest lighting manufacturing companies in and well-known around the world. It employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures at 46 sites in 17 countries.

The disputed domain name <osrambath.com> comprises the OSRAM Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the final word “bath” to the mark OSRAM. This does not seem to eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.)

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.)

The mere addition of the descriptive term “bath” as a suffix to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Complainant does produce the “bath” related products. For example, Complainant uses the trademark and company name OSRAM for bathroom lighting (see Annex 11 to the Complaint). Internet users who visit <osrambath.com> are likely to be confused and may falsely believe that name <osrambath.com> is operated by Complainant for selling OSRAM-branded products, particularly bath-related products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the OSRAM Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel 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. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the OSRAM Mark globally. Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions, such as registration in Australia since 1908 (see Annex 9 to the Complaint), which long precedes Respondent’s registrations of the disputed domain name (October 14, 2014).

According to Complainant, Complainant was funded in Germany in 1919. It is one of the two largest lighting manufacturing companies in and well-known around the world. It employs currently more than 43,000 people and supplies customers in about 150 countries. It manufactures at 46 sites in 17 countries.

Moreover, Respondent is not an authorized dealer of OSRAM branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

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

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “osram” in its business operation or the use of the OSRAM Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the OSRAM Mark or to apply for or use any domain name incorporating the OSRAM Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <osrambath.com> on October 14, 2014. The disputed domain name is identical or confusingly similar to Complainant’s OSRAM Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported OSRAM products at <osrambath.com> (Annex 5 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

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 disputed domain name in bad faith, namely:

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

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the OSRAM Marks with regard to its products. Complainant has registered its OSRAM Marks internationally. Moreover, the Website advertises for sale various purported OSRAM products. Respondent would likely not have advertised products purporting to be OSRAM products on the website if it was unaware of OSRAM’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the OSRAM Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.)

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.) Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s OSRAM-branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s OSRAM-branded products and services without authorization. Complainant claimed that “due to the well-known status of Complainant’s trademark in the disputed domain name is to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location”.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the OSRAM Marks (as well as the content on Respondent’s website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 5 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the OSRAM Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <osrambath.com> is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 at <osrambath.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: March 10, 2015