WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. Li Yun, Guang Zhou Lian Xiang Qi Che Yong Pin You Xian Gong Si / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)

Case No. D2016-1214

1. The Parties

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

The Respondent is Li Yun, Guang Zhou Lian Xiang Qi Che Yong Pin You Xian Gong Si of Guangzhou, Guangdong, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China, self‑represented.

2. The Domain Names and Registrar

The disputed domain names <bullbatosram.com>, <cobraosram.com>, <conquerosram.com> and <lcosram.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2016. On June 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2016 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 June 22, 2016.

On June 21, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 22, 2016, the Complainant confirmed its request that English be the language of the proceeding. On June 27, 2016, the Respondent requested that Chinese be the language of the proceeding.

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 July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. On July 19, 2016, the Center received Respondent’s email communication requesting for the Response template in Chinese. On July 23, 2016, the Respondent sent an email to the Center requesting extension to the Response due date. The Center granted an extension in accordance with paragraph 5(b) of the Rules and the Response due date was extended to July 28, 2016. The Response was filed with the Center on July 28, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on August 4, 2016. 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 company incorporated in Germany with its headquarters in Munich and is one of the world’s leading lighting manufacturing companies. The Complainant belongs to the OSRAM group of companies which was founded in 1919.

The Complainant has operations in over 120 countries and employs more than 30,000 people. For the financial year 2014, the Complainant achieved a revenue in excess of EUR 5 billion.

The Complainant owns numerous trade mark registrations for its company and brand name “Osram” in several countries and jurisdictions around the world, including in China where the Respondent is based. Among which trade mark registrations is International Registration No. 676932 designating, inter alia, China which attained registration on April 16, 1997.

The Complainant also owns numerous registrations for domain names that include its registered trade mark, including <osram.com>, <osram.biz>, <aosram.com>, <aosram.com.cn>, <osramled.com>, <osram‑led.com>, <osramled.cn> and <osram-lighting.asia>. The Complainant uses these domain names to connect to a website through which it informs potential customers about its products and services.

The Respondent appears to be a company based in the Guangzhou city of China. The disputed domain names were all registered on November 27, 2015, long after the Complainant has registered its trade mark OSRAM in China and other countries. The disputed domain names all resolve to similar/identical websites offering automotive lighting products and related services, among others, of Liancheng International Group (HK) Co., Ltd.

5. Parties’ Contentions

A. Complainant

As a result of extensive international use, the Complainant’s trade mark OSRAM has become internationally “well-known”. The International Economic and Trade Arbitration Commission (CIETAC) of China has declared the OSRAM mark to have a high level of fame and reputation in China.

The Complainant contends that the disputed domain names are confusingly similar or identical to the Complainant’s trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent contends that the disputed domain names have been registered lawfully in order to promote the Respondent’s products and services, and are not meant to have any association with the Complainant’s business or trade mark. It also states that there is no intention to sell the disputed domain names to the Complainant or third parties, as these have been registered for the purpose of promoting the Respondent’s business.

The Respondent claims that the letters “lc” in the disputed domain name <lcosram.com> is the acronym for its company name “Lian cheng”. The Respondent also claims that the words “bullbat”, “cobra” and “conquer” added to the disputed domain names <bullbatosram.com>, <cobraosram.com> and <conquerosram.com> respectively are in fact its product brand names. The Respondent also claims that the term “osram” in the disputed domain names are in fact made up of two acronyms, namely “os” (for “operating system”) and “ram” (for “album”).

As such, the Respondent asks that the transfer request of the Complainant be denied.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language of the proceeding. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding and has filed its Response in Chinese.

On the record, the 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 the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script;

(b) three of the four disputed domain names contain ordinary English words, namely “bullbat”, “cobra” and “conquer” respectively;

(c) in trying to justify the adoption of “osram” in the disputed domain names, the Respondent refers to the technical meaning of English words represented by the acronyms “os” and “ram”;

(d) the websites to which the disputed domain names resolved are available in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding; and

(c) the Center informed the Respondent that it would accept a Response in either English or Chinese, and the Respondent has duly filed its Response in Chinese.

Considering the above 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. To require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would also be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) it shall accept the Response as filed in Chinese; and (iii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2. Substantive Issues

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

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the OSRAM mark by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names incorporates the Complainant’s trade mark OSRAM in its entirety. The trade mark OSRAM is clearly identifiable and is the prominent element of each of the disputed domain names. The addition of the words “bullbat”, “cobra” and “conquer” (which are generic English terms) and the letters “lc” (whether or not they convey the meaning of “lighting certified” as asserted by the Complainant) respectively does not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact on the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

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

(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trade mark or service mark rights; or

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

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant confirms that it has not authorised, licensed, or permitted the Respondent to register or use its trade mark OSRAM. The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.

In its Response, the Respondent claims that term “osram” in the disputed domain names is in fact made up of two acronyms, namely “os” (for “operating system”) and “ram” (for “album”). It further claims that “lc”, “bullbat”, “conquer” and “cobra” are its product house brands. In this regard, the Panel finds the Respondent’s explanation for the choice of name for the disputed domain names to be unconvincing. The terms “operating system” and “album” do not appear related to the Respondent’s lighting business. Furthermore, apart from mere assertions, the Respondent has not provided any concrete evidence of its ownership of trade mark rights over the terms “lc”, “bullbat”, “conquer” and “cobra”, or evidence of their use in connection with any products of the Respondent.

The Panel therefore determines that the Respondent has failed to provide evidence to support a finding that it has any rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under 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 names in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark 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 names; or

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark 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 names primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant and its trade mark enjoy a worldwide reputation and a strong Internet presence. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the OSRAM trade mark and its extensive use by the Complainant.

Moreover, the Panel notes that the Complainant has a long-established business presence in China and accepts that its OSRAM trade mark enjoys a high level of fame in China. Thus a presumption arises that the Respondent was well aware of the Complainant’s OSRAM trade mark and related domain names when it registered the disputed domain names. Registration of a domain name that incorporates a complainant’s long-established and widely-known trade mark suggests opportunistic bad faith.

As stated above, the Panel is unconvinced by the Respondent’s explanation for its basis for registration of the disputed domain names. In fact, the Panel notes that on the websites to which the disputed domain names resolve, the Respondent claims to “cooperate with three famous brands which are OSRAM, PHILIPS and GE”.

In light of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, the Panel determines that the Respondent’s intention in registering the disputed domain names is to unfairly attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent has intention to use the disputed domain names for mala fide purposes and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 names, <bullbatosram.com>, <cobraosram.com>, <conquerosram.com> and <lcosram.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: August 21, 2016