WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OSRAM GmbH v. 李磊 (Li Lei), 漳州市一禾众腾贸易有限公司 (Zhang Zhou Shi Yi He Zhong Teng Mao Yi You Xian Gong Si)

Case No. D2020-2816

1. The Parties

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

The Respondent is李磊 (Li Lei), 漳州市一禾众腾贸易有限公司 (Zhang Zhou Shi Yi He Zhong Teng Mao Yi You Xian Gong Si), China.

2. The Domain Name and Registrar

The disputed domain name <osramb2c.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2020, 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 the Complainant on December 3, 2020 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 in English on December 7, 2020.

On December 3, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 7, 2020, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on 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 in English and Chinese of the Complaint, and the proceedings commenced on December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021. On the same day, the Center received a Respondent’s informal communication by email.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 28, 2021. 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 headquartered in Germany in the lighting industry, and is the operative subsidiary of Osram Licht AG, an international joint stock company, with its headquarters in Munich. Osram Licht AG claims to employ about 23,500 people and has operations in over 120 countries. The Complainant provides evidence that in financial year 2019, it achieved a global revenue of about EUR 3.5 billion. The Complainant’s business is in technology and innovation applications based on semiconductor technologies, and has activities in the Asia-Pacific market. In the financial year 2019, it claims these applications to be 35.6 percent of its revenues. In particular, the Complainant also illustrates it has business operations in the Respondent’s home jurisdiction China, where the Complainant has established a subsidiary, based in Shanghai.

The Complainant owns a large, international portfolio of trademarks for OSRAM, including, for example, European Union Trade Mark registration number 000027490, registered on April 17, 1998 and French trademark registration number 1455931, registered on June 25, 1987. The Complainant also has registered trademarks for OSRAM in China, where the Respondent resides, such as Chinese trademark registrations number G567593, registered on February 15, 1991 and number G1264994, registered on June 7, 2018. The Complainant also claims it owns more than 640 domain names containing OSRAM.

The disputed domain name was created on January 3, 2020. The Complainant submits evidence that the disputed domain name directed to an online store promoting its car light upgrading service with unauthorized use of the Complainant’s mark OSRAM and its Chinese equivalent 欧司朗. On the date of this decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademarks for OSRAM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and used intensively, and submits several prior UDRP decisions and court judgments, which have recognized that the Complainant’s trademarks for OSRAM are internationally recognized well-known trademarks, for instance Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083. The Complainant also provided evidence that the Complainant’s trademarks for OSRAM are also famous in the Respondent’s home jurisdiction China. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the fact that the Respondent has been using the disputed domain name to promote its car light upgrading service is proof that he has registered and is using the disputed domain name in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions substantively. However, the Respondent, after the deadline for filing a Response, did send an email to the Center requesting the Center to stop communicating with her and claimed that her previous company had resolved and surrendered the disputed domain name.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 language of the Registration Agreement is Chinese, and the Complaint is filed in English. On December 3, 2020, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on December 7, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of Latin scripts; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

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

(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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark OSRAM based on its extensive use and registration of the same as a trademark globally.

As to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark OSRAM in its entirety, followed by the letters “b2c”. The applicable generic Top-Level Domain (“gTLD”) “.com” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark OSRAM, as its only distinctive feature. It is the Panel’s view that the addition of the letters “b2c” after the Complainant’s registered trademark OSRAM does not avert the confusing similarity between the disputed domain name and the trademark OSRAM. Moreover, the Panel notes that the added letters “b2c” are an abbreviation for the common English term “business to consumer”, which refers to the process of selling products and services directly between a business and consumers. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark OSRAM. The Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and prior registration of the Complainant’s trademarks, and composition of the disputed domain name related to the Complainant’s products, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s trademarks, was obtained in bad faith.

Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the registered trademarks for OSRAM and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name links to an online store promoting the Respondent’s car light upgrading service, and that indicates its intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. Moreover, this website explicitly uses the Complainant’s trademark OSRAM, its Chinese equivalent 欧司朗and introduces the Complainant’s company history without authorization, which has infringed upon the Complainant’s trademark right and misled the relevant public. It further shows the Respondent knows the Complainant, its products and its trademarks, and the Respondent intends to mislead consumers that the Respondent is somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks; the high degree of distinctiveness and fame of the Complainant’s trademarks; the fact that the Respondent linked the disputed domain name to a website promoting car upgrading service for commercial gain; the fact that the Respondent used the Complainant’s registered trademarks without authorization, to promote its service, which infringed upon the Complainant’s trademark right; and the fact that the website also displays the Complainant’s company history, which clearly aims to mislead the consumers. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish her good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 name <osramb2c.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: February 11, 2021