WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram GmbH v. 申朝永

Case No. DCN2020-0048

1. The Parties

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

The Respondent is 申朝永, China.

2. The Domain Names and Registrar

The disputed domain names <ams-osram.cn>, <amsosram.cn>, <ams-osram.com.cn> and <amsosram.com.cn> are registered with 杭州电商互联科技有限公司 (原杭州创业互联科技有限公司) (the “Registrar”).

3. Procedural History

The Complaint in English involving the disputed domain names <ams-osram.cn> and <amsosram.com.cn> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2020, 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 for the disputed domain names <ams-osram.cn> and <amsosram.com.cn>. Following subsequent correspondence disclosing the complete contact details of the Respondent, the Complainant filed an amendment to the Complaint in English on December 15, 2020.

On December 16, 2020, the Complainant forwarded the Respondent’s email of December 14, 2020 in English to the Center in which the Respondent indicated that he has registered four disputed domain names and he is willing to transfer these disputed domain names to the Complainant for USD 1,000. Accordingly, the Complainant requested to add the disputed domain names <ams-osram.com.cn> and <amsosram.cn> to the proceeding, and filed an amended Complaint in English on December 21, 2020.

On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names <ams-osram.com.cn> and <amsosram.cn>. On December 23, 2020, 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 for the additional disputed domain names <ams-osram.com.cn> and <amsosram.cn>.

The Center verified that the Complainant together with the amendment to the Complaint and the amended Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was January 26, 2021. On January 6, 2021, the Respondent sent an email in Chinese to the Center expressing his willingness to settle the dispute. On the same day, the Center informed the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. On January 8, 2021, the Complainant indicated that it would like to continue with the proceeding. On January 27, 2021, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed C. K. Kwong as the sole panelist in this matter on February 19, 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, Article 29.

4. Factual Background

A. Complainant

The Complainant belongs to the Osram Licht group which was founded in Germany in 1919. The Complainant is the operative company of Osram Licht AG, an international joint stock company, with its headquarters in Munich, Germany. The Complainant has registered many national, regional as well as international registrations of trademarks and service marks consisting of or embodying the word “osram”, including the International Trademark Registration No. 567593 for OSRAM, registered on February 15, 1991, designating, among others, China (Annexes 8 and 9 to the amended Complaint).

The Complainant is the owner of more than 600 generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) domain names consisting of or embodying the word “osram” (Annex 18 to the amended Complaint).

B. Respondent

The Respondent is 申朝永, China. The disputed domain names <ams-osram.cn>, <amsosram.cn>, <ams-osram.com.cn> and <amsosram.com.cn>were all registered by the Respondent on November 17, 2019 (Annex 1 to the amended Complaint). Each of the disputed domain names resolves to a website offering it for sale.

5. Parties’ Contentions

A. Complainant

“Osram” as a part of the Complainant’s company name is protected as a trademark in various countries and regions around the world. AMS is the trademark of AMS AG, which is the majority shareholder of the Complainant (Annex 3 to the amended Complaint). The disputed domain names are identical or confusingly similar to the OSRAM trademark. Furthermore, the disputed domain names are also identical or confusingly similar to the Complainant’s company name. Still further, the combination of the trademarks of the Complainant and its majority shareholder shows the knowledge of the Respondent about the Complainant and his bad faith in registering the disputed domain names.

The aforesaid OSRAM Licht AG currently employs approximately 23,500 people and has operations in over 120 countries. In the 2019 financial year, it has a revenue of about EUR 3.5 billion.

The Complainant has traded under the name “Osram” since its foundation. On April 17, 1906, the OSRAM brand was registered as a trademark for “electrical incandescent and arc lamps”. A few years later, the Complainant successfully expanded its international presence and established offices in the European Union, Rio de Janeiro, Brazil and Shanghai, China.

Due to its extensive and international use, the OSRAM trademark has become distinctive, famous or well known as recognized or acknowledged in the decisions issued under the Uniform Domain Name Dispute Resolution Policy and by courts and customs internationally.

The Complainant has regularly prosecuted against violations of its OSRAM trademark in China and its mark has been recognized by the Shanghai Customs in 2012 as famous (Annex 10 to the amended Complaint).

The disputed domain names contain the famous trademark OSRAM which stands out and leads the public to think that the disputed domain names are somehow connected to the owner of the registered trademark OSRAM.

The TLDs “.cn” and “.com.cn” in a domain name are disregarded under the first element confusing similarity test.

The Respondent is not the holder of the trademark OSRAM and has no rights or legitimate interests in the name “Osram”. The Respondent is not commonly known by the disputed domain names.

The Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

By registering and using the disputed domain names, the Respondent primarily aims at disrupting the business of the Complainant.

The Respondent’s choice of the disputed domain names, which combine the Complainant’s well-known registered trademark OSRAM with the trademark AMS of the Complainant’s majority shareholder, clearly indicates bad faith intent to register and use the disputed domain names. The Respondent is not using the disputed domain names for personal noncommercial interests.

The registration of a domain name incorporating another’s famous mark proves that the Respondent knows the Complainant well and therefore registered the disputed domain names in bad faith. There can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain names. There is no plausible explanation why the Respondent would register a domain name virtually consisting of the Complainant’s famous and distinctive mark OSRAM.

The Complainant received the email communication from the Respondent on December 14, 2020 in which the Respondent offered to sell the disputed domain names to the Complainant. The Respondent’s behavior shows once more that the Respondent has registered the disputed domain names in bad faith with clear intention to sell them to the Complainant for commercial gain.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

However, as indicated in the Procedural History, the Respondent offered to transfer all the disputed domain names to the Complainant for the price of USD 1,000 in his email communication to the Complainant dated December 14, 2020, and the Respondent expressed his willingness to settle the dispute on January 6, 2021.

6. Discussion and Findings

6.1. Notice of the Proceeding

Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under Article 5 of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.

6.2. Language of the Proceeding

Article 8 of the Rules provides that the language of the proceedings shall be Chinese unless otherwise agreed by the Parties or decided by the Panel in exceptional cases.

In support of its request to use English as the language of the proceeding, the Complainant has argued that: a) the disputed domain names are registered in ASCII characters using English alphabets; and b) the Respondent will not be prejudiced by using English as the language of the proceeding. On the other hand, it would be disproportionate to put the Complainant to the time and costs of translating and submitting its Complaint in Chinese, and the proceeding would be unnecessarily delayed.

Article 31 of the Rules provides, inter alia, that in all cases, the Panel shall ensure that the Parties be treated with equality. It also provides that the Panel shall ensure that the proceedings take place with due expedition.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ abilities to understand and use the proposed language, time and costs.

The Panel has taken into consideration the following facts:

(a) the disputed domain names consist of a combination of the English alphabets comprising (i) the Complainant’s trademark OSRAM and the trademark AMS which belongs to the Complainant’s majority shareholder, being a skillful combination process apparently with considerable knowledge of the English names and trademarks of the Complainant and its majority shareholder;

(b) the Center has communicated with the Respondent in both Chinese and English as well as advised the Respondent of his rights to make representation on choice of the language of the proceeding but the Respondent has not responded;

(c) the Respondent communicated with the Complainant in English on December 14, 2020 acknowledging receipt of email from the Center and making certain proposals to the Complainant; and

(d) the websites at the disputed domain names include some texts in English.

Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for the proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

6.3. Substantive Issues

In rendering its decision, the Panel must adjudicate the dispute in accordance with Article 31 of the Rules which provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Article 35 of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions of these Rules and Supplemental Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Article 34 of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions established by these Rules and Supplemental Rules or any of the time periods fixed by the Panel, the Panel shall proceed to a decision on the complaint.

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

(i) The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name;

(iii) The Respondent has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy provides that the Complainant and the Respondent shall bear the burden of proof for their own claims. Having considered the Complaint and the annexes thereto, as well as the Respondent’s email communications, the Panel has made the following findings.

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark OSRAM by reason of its long established use and extensive registrations as recited in Section 4. above.

Furthermore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark OSRAM despite the addition of (i) the prefix “ams” in the cases of <amsosram.com.cn> and <amsosram.cn> or (ii) “ams-” in the cases of <ams-osram.cn> and <ams-osram.com.cn> and the addition of the suffixes “.cn” and “.com.cn”.

The addition of the prefix “ams” or “ams-” and its combination with the Complainant’s trademark OSRAM may assert such confusing similarity because AMS is the trademark and trade name of the Complainant’s majority shareholder.

After removing the suffixes “.cn” and “.com.cn”, effectively the word “osram” is seen entirety. The Complainant’s trademark is clearly recognizable in the disputed domain names.

Earlier panels have disregarded the TLD part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark in issue.

The Panel therefore holds that the Complaint has fulfilled the first condition of Article 8 of the Policy in respect of all the four disputed domain names.

B. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Once such prima facie case is made, the burden will shift to the Respondent to produce evidence that he has rights or legitimate interests in the disputed domain names.

In the present case, the Complainant has asserted registration and use of the registered trademark OSRAM long before the Respondent’s registration of the disputed domain names <ams-osram.cn>, <amsosram.cn>, <ams-osram.com.cn> and <amsosram.com.cn> on November 17, 2019. Further, the Panel notes that the name of the Respondent “申朝永” does not correspond in anyway with the disputed domain names. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <ams-osram.cn>, <amsosram.cn>, <ams-osram.com.cn> and <amsosram.com.cn>. There is also no evidence available to demonstrate the legitimate noncommercial or fair use of the disputed domain names by the Respondent nor a bona fide offering of goods or services on the websites to which the disputed domain names resolve. The Complainant has confirmed that it has not licensed or otherwise authorised the Respondent to use any of its trademarks whether by incorporation in a domain name or otherwise.

The Panel can see no plausible explanation as to why it was necessary for the Respondent to adopt the trademarks OSRAM and AMS in his disputed domain names.

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names.

The Panel accordingly finds that the Complaint has fulfilled the second condition of Article 8 of the Policy in respect of all the four disputed domain names.

C. Registered or Used in Bad Faith

Article 9 of the Policy sets out four circumstances which shall be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) The purpose of registering or acquiring the disputed domain name is to sell, rent or otherwise transfer the disputed domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;

(b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;

(c) The disputed domain name holder has registered or acquired the disputed domain name for the purpose of damaging the complainant’s reputation, disrupting the complainant’s normal business or creating confusion with the complainant’s name or mark so as to mislead the public;

(d) Other circumstances which may prove the bad faith.

The Panel finds that the Complainant enjoys an extensive worldwide reputation in the OSRAM mark for its goods and services as a result of its long and well established business history in many countries worldwide including China.

The Panel is satisfied that at the time when the Respondent registered the disputed domain names on November 17, 2019, a date much later than the Complainant’s extensive worldwide registration and use of its trademark OSRAM, it was done with knowledge of the Complainant’s business and the Complainant’s use of the OSRAM trademark. This is so particularly when all the disputed domain names have their distinctive parts comprising a combination of the trademarks, OSRAM and AMS respectively belonging to the Complainant and its majority shareholder. It appears to be a deliberate choice to combine the Complainant’s mark OSRAM with the mark AMS. These signal an intention on the part of the Respondent to confuse users seeking the Complainant.

All the disputed domain names are being offered for sale on the corresponding websites (Annex 2 to the amended Complaint). Furthermore, the Respondent offered to transfer all the disputed domain names to the Complainant for the price of USD 1,000 in his email communication to the Complainant dated December 14, 2020.

On the basis of the evidence adduced, the Panel finds that the purpose of registering the disputed domain names is to sell or otherwise transfer the disputed domain name registrations to the Complainant, and to obtain potential unjustified benefits.

The Panel concludes that the disputed domain names were registered and have been used by the Respondent in bad faith.

The Panel accordingly finds that the Complaint has fulfilled the third condition of Article 8 of the Policy in respect of all the four disputed domain names.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain names <ams-osram.cn>, <amsosram.cn>, <ams-osram.com.cn> and <amsosram.com.cn> be transferred to the Complainant.

C. K. Kwong
Sole Panelist
Date: March 5, 2021