WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH. v. Jianfeng Wu, www.Juming.com
Case No. D2016-2500
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Jianfeng Wu, www.Juming.com, of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <jlosram.com> ("Disputed Domain Name") is registered with DropCatch.com 725 LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 2016, 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.
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 proceedings commenced on December 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. However, due to an administrative oversight, the Center re-notified the Complaint on January 9, 2017, and the due date for submission of the Response was extended to January 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on February 10, 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 is headquartered in Munich and is part of the Osram Licht Group which was founded in Germany in 1919. The Complainant has over 33,000 employees with operations in over 120 countries. The Complainant is one of the largest lighting manufacturers in the world. In 2015, the Complainant had about 6,400 employees in China. China contributed 13.6% of the Complainant's sales in 2015.
The Complainant has been trading under the name Osram since its foundation. The Complainant has registered over 500 trademarks in over 150 countries incorporating the word "osram". These include:
April 10, 1908
February 5, 1988
February 15, 1991
The Complainant is the registrant of more than 640 domain names incorporating the trademark OSRAM. These include <osram.com>, <osrambulb.cn>, <osram.asia> and <myosram.com>.
In 1937, the German Supreme Court (Reichsgericht) observed that OSRAM is "a trademark with international standing". The official government website of Shanghai Customs acknowledged in 2012 that the trademark OSRAM was the subject of "famous trademark Infringement cases" in conjunction with other trademarks such as "Benz", "Kodak", "Philips", "Galaxy" and "Diamond". The trademark OSRAM has been the subject of past UDRP cases (e.g., OSRAM GmbH v. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Enterprise Ltd., WIPO Case No. D2008-1032; OSRAM GmbH v. wwwosram.com / Privacy Protection Service / Pavol Icik, WIPO Case No. D2013-1571 and OSRAM GmbH v. LeAnhTuan, Le Tung – OBS, WIPO Case No. D2016-1971).
The Disputed Domain Name was registered on October 3, 2016. The Disputed Domain Name resolves to a substantially Chinese-language website which purportedly promoting online gambling platforms. By an email of November 28, 2016, the Complainant requested the Respondent to transfer the Disputed Domain Name to the Complainant. It is not known from the evidence whether the Respondent responded to the email, although the Complainant indicated that the request was unsuccessful.
5. Parties' Contentions
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark OSRAM in which the Complainant has rights, as well as the Complainant's company name. The dominant and distinctive feature of the Disputed Domain Name is the word "osram". The only difference of the Disputed Domain Name is the addition of "jl" at the beginning. The letters "jl" is part of the product description of OSRAM Opto Semiconductor LEDs. The addition of "jl" is not sufficient to outweigh the similarity between the Disputed Domain Name and the trademark OSRAM and is insufficient to prevent Internet user confusion;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not use the Disputed Domain Name with bona fide intent. The Respondent is not a licensee, authorized dealer or distributor of the Complainant. The Respondent is not associated with the Complainant. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark OSRAM is a famous trademark of the Complainant. The Respondent's website resolved from the Disputed Domain Name is a gambling-related website. The Respondent is trying to exploit the Complainant's famous trademark in order to attract potential clients. The Respondent is using the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant and the trademark OSRAM.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not submit a Response.
6. Discussion and Findings
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
i) The Disputed Domain Name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the trademark registrations in the evidence tendered, the Panel is satisfied that the Complainant owns rights in the trademark OSRAM. The Disputed Domain Name incorporates the trademark OSRAM in its entirety and differs only in the addition of the prefix "jl". It is unclear to the Panel what "jl" represents. Regardless of whether it is part of the Complainant's product code as submitted by the Complainant, or it has any other non-apparent meaning, the trademark OSRAM is dominant and highly recognisable in the Disputed Domain Name. Given this, the addition of the prefix "jl" to the trademark OSRAM in the Disputed Domain Name does not assist to distinguish the trademark OSRAM from the Disputed Domain Name. Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark OSRAM. The first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant bears the burden of establishing prima facie that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made out, the burden shifts to the Respondent to show otherwise.
The Complainant has asserted that the Respondent is not a licensee, authorized dealer or distributor of the Complainant and has denied any association with the Respondent. There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name or that the Disputed Domain Name is being used in a bona fide noncommercial manner. In fact, the resolution of the Disputed Domain Name to a gambling-related website demonstrates a commercial objective. The Panel notes that of words "osram" or "jlosram" do not exist in the content proper of the website. In the light of the circumstances, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. In the absence any Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy is accordingly established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitutes evidence of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) of the Policy provides as follows:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
The Panel is satisfied from the evidence that the trademark OSRAM is well-known. It is inconceivable that the Respondent was unaware of the Complainant's trademark rights in the OSRAM trademark at the time of registering the Disputed Domain Name. The gambling services offered on the website resolved from the Disputed Domain Name are clearly intended for commercial gain. It is obvious that the Respondent's selection of the Disputed Domain Name was for the purpose of directing traffic to its website. The Panel finds that the use of the Disputed Domain Name to attract traffic to the website for commercial gain must have been intended to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website within the meaning of paragraph 4(b)(iv).
By reason of the above, the Panel holds that the third limb of paragraph 4(a) of the Policy is also 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 <jlosram.com>, be transferred to the Complainant.
Kar Liang Soh
Date: March 9, 2017