WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osram GmbH v. Liuxue Zhu, Zhu Shang Shang
Case No. D2017-1630
1. The Parties
The Complainant is Osram GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Liuxue Zhu, Zhu Shang Shang of Nan Tong, Jiang Su, China.
2. The Domain Name and Registrar
The disputed domain name <tosram.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2017, 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 26, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On August 28, 2017, the Complainant requested that English be the language of the proceeding and filed an amendment to the Complaint. The Respondent did not comment on the language of the proceeding by 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on October 3, 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 belongs to the OSRAM Licht Group, a multinational lighting manufacturer which was founded in 1919. The OSRAM Licht Group is one of the largest lighting manufacturing companies in the world, and has more than 33,000 employees in over 120 countries.
The Complainant has traded under the name “OSRAM” since its foundation. The ORAM brand was registered as a trademark as early as April 17, 1906. The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and region, as well as 100 international OSRAM trademarks.
The Complainant is also the owner of more than 640 domain names based on the denomination “OSRAM”, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The Respondent is Liuxue Zhu, Zhu Shang Shang of Nan Tong, Jiang Su, China.
The disputed domain name <tosram.com> was registered on July 6, 2017. The disputed domain name resolves to a website for a company Shenzhen Tosram Optics Technology Co Ltd on which various lighting products are advertised.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant submits that the disputed domain name contains the registered trademark OSRAM in full which might mislead the public that the disputed domain name is somehow connected to the Complainant.
The Complainant also submits that the addition of the letter “t” in front of the registered trademark OSRAM in the disputed domain name <tosram.com> is insufficient to prevent Internet user confusion.
The Complainant further submits that the Top-Level Domain “.com” is to be disregarded under the confusing similarity test.
No rights or legitimate interests
The Complainant submits that the Respondent is not holder of a trademark “OSRAM”, has no rights or legitimate interests in the name “OSRAM”, and is not commonly known by the disputed domain name.
The Complaint also submits that the Respondent is not a licensee, authorized dealer, or distributor of the Complainant, nor is the Respondent in any way associated with the Complainant.
The Complainant further submits that the Respondent falsely listed OSRAM as a cooperative partner on the website.
Registered and is being used in bad faith
The Complainant submits that given its worldwide reputation the Respondent was or should have been aware of the OSRAM Mark prior to registering the disputed domain name and this constitutes bad faith.
The Complainant further submits that by using the disputed domain name to set up a webshop advertising and offering lighting products, the Respondent registered and used the disputed domain name in bad faith, since the sole purpose was to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s registered trademark to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and products on its websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceedings
The language of the Registration Agreement is in Chinese. However, Paragraph 11(a) of the Rules provides that:
“unless otherwise agreed by the parties, or specified 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.”
The Complainant requested the language of the proceeding be in English on the grounds that the Complainant is unable to communicate in Chinese – translating the Complaint would incur extra expense and delay; the disputed domain name was registered in ASCII characters using Roman alphabet; the gTLD “.com” is used globally by people who usually speak and understand English; and the Respondent’s website contains English words such as “lighting lens”, “about us”, “product categories”, “cooperative partner”, “LED”, etc.
The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English.
In the case of Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, the panel decided that the respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
Based on the fact that the website under the disputed domain name is predominantly in English and that the Respondent has not responded to the Center’s notification of a language request the Panel determines the language of proceedings to be English.
6.2 Substantive decision
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <tosram.com> is made up of the registered trademarks OSRAM, preceded by the letter “t” and succeeded by the gTLD “.com”. The disputed domain name is confusingly similar to the Complainant’s registered trademark OSRAM. The gTLD is disregarded and the addition of the alphabet “t” is insufficient to dispel any confusion.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark OSRAM. The Respondent is not a licensee of the Complainant. There is no evidence that the Respondent is commonly known by the disputed domain name. For purpose of the Policy, a Respondent cannot be commonly known by a disputed domain name if its intention was to capitalize off of a complainant’s mark, See Tinder, Inc. v. GhostMonitor, Inc., Registration Private, c/o Domains by Proxy, LLC / Peter Bodnar, WIPO Case No. D2017-1212. It, therefore, has no rights or legitimate interests in the disputed domain name.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
It is highly likely that the Respondent knew of the Complainant when the Respondent registered the disputed domain name as it comprises of the Complainant’s trademark in full, preceding it by the alphabet “t” and succeeded it with the gTLD “.com”. The page has been used to advertise and offer lighting products and the Respondent falsely listed OSRAM as a cooperative partner on the website. This indicates the Respondent’s intention was to cause confusion so that Internet users believe that the site was linked to the Complainant’s business.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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.”
Having examined all the circumstances of the case the Panel finds that the Respondent registered, used and is using the disputed domain name in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 < tosram.com> be transferred to the Complainant.
Date: October 13, 2017