WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Samil Company
Case No. D2015-1386
1. The Parties
The Complainant is Osram GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Samil Company of Daejeon, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <osramdirect.com> is registered with Koreacenter.com co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2015. On August 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2015, 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 August 10, 2015, the Center informed the Parties that the language of the Registration Agreement for the disputed domain name is Korean, inviting the Complainant to submit a Complaint translated into Korean, submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or submit a request for English to be the language of the administrative proceeding; and inviting the Respondent to make submissions in this regard. On August 11, 2015, the Complainant filed a request that English be the language of the administrative proceeding, to which the Respondent has not replied.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on September 15, 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 a part of the OSRAM Group, a multinational lighting manufacturer founded in Germany in 1919. The OSRAM Group is one of the largest lighting manufacturing companies in the world, and has more than 34,000 employees in over 120 countries. The Complainant owns numerous trademark registrations for OSRAM dating back to 1966.
The Respondent appears to be a Korean entity with an office in the Republic of Korea.
According to the WhoIs information, the disputed domain name was registered on June 9, 2015.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the OSRAM trademark in which the Complainant has rights. Namely, the Complainant asserts that it has continuously and extensively used the mark since its foundation in 1919, and that it has more than 500 trademark registrations for OSRAM and the OSRAM family of marks in over 150 jurisdictions. The additional portion “direct” in the disputed domain name is descriptive in connection with the sale of goods and need not be considered.
The Complaint also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant explains that the disputed domain name is linked to a website which advertises and sells lighting and other electronic products of the Complainant’s competitors. Such use is likely to cause confusion as to the source of the goods, and shows the Respondent’s intent to benefit commercially from the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a Response.
Given the fact that the Complainant is based in Germany and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this Decision. Besides, both parties were given the opportunity to submit arguments in the language of their preference, but the Respondent neither raised an objection as to the Complainant’s choice of English as the language of the proceeding nor submitted any arguments whatsoever in this proceeding.
Under these circumstances, the Panel finds it proper and fair to render this Decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds numerous trademark registrations for OSRAM in various jurisdictions, including in the Republic of Korea. The disputed domain name entirely incorporates the Complainant’s mark, and simply adds the additional portion “direct”. As the term “direct” is weak in distinctiveness in connection with sales activities, it does not influence the similarity test.
Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
For the reasons mentioned above, the Panel finds that the first element has been established.
C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no Response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above and in light of the elements discussed below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
D. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith registration and use of the disputed domain name in this case.
For one, “osram” is a coined term, and the Respondent’s registration for a domain name containing the exact same term should be viewed as more than mere coincidence.
Further, the disputed domain name is linked to an online shopping mall which offers for sale lighting products which are the exact goods associated with the OSRAM mark. Additionally, the online shopping mall even displays the logo form of the Complainant’s trademark without any clarification as to the lack of any relationship with the Complainant. Therefore in the Panel’s opinion, the Respondent is clearly aware of the Complainant, its products and the asserted trademarks. Moreover, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products or services on its website, in accordance with paragraph 4(b)(iv) of the Policy.
For the reasons given above, the Panel finds that the third and final element has been sufficiently established.
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 <osramdirect.com> be transferred to the Complainant.
Date: September 29, 2015