WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. shidankj
Case No. D2016-1250
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is shidankj of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <osram.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2016. On June 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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.
On June 27, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 29, 2016, the Complainant confirmed its 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 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 in both Chinese and English, and the proceedings commenced on July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 26, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on August 3, 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 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 Osram Licht Group is a leading lighting manufacturing company. It currently employs more than 34,000 people and has operations in over 120 countries. In the financial year 2014, its revenue was about EUR 5.1 billion. Its operations have expanded to the Asia-Pacific market, which makes up about 16 percent of its sales. In China alone, the Complainant has over 7,000 employees.
The Complainant has traded under the name "Osram" since its foundation. The Complainant's trade mark, based on its company name, OSRAM, is protected as a trade mark in more than 150 countries and regions including in the United States of America, Australia, Canada, the United Kingdom of Great Britain and Northern Ireland, Germany, France and the European Union. The Complainant owns more than 100 International registrations incorporating the OSRAM trade mark. The OSRAM trade mark was first registered on May 30, 1906, in respect of "electrical incandescent and arc lamps", in the case of Danish trade mark VR 19060233.
The Complainant's OSRAM trade mark has been recognized as widely known in many earlier UDRP panel decisions, e.g., OSRAM GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004; OSRAM GmbH v. Ocean Grenier, WIPO Case No. D2008-0083; OSRAM GmbH v. Transure Enterprise Ltd, WIPO Case No. D2008-1032; OSRAM GmbH v. Sinclare Vabalon, WIPO Case No. D2008-1045; OSRAM GmbH v. Jae Gyu Park, WIPO Case No. D2008-1578.
The Complainant owns more than 640 domain names based on the trade mark, OSRAM.
The disputed domain name was registered on May 17, 2016. It does not resolve to any active website.
On June 8, 2016, the Complainant sent an email to the Respondent regarding its ownership of the OSRAM trade mark and to request a transfer of the disputed domain name. No reply was received.
5. Parties' Contentions
1. The disputed domain name is identical or confusingly similar to the OSRAM marks owned by the Complainant. It contains the famous mark, OSRAM, which leads to the public thinking that it is somehow connected to the owner of the OSRAM trade mark. The generic Top-Level Domain ("gTLD") ".vip" is to be disregarded as it is a technical requirement of registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2).
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. Firstly, the Respondent is not the holder of rights to the trade mark OSRAM, to the best of the Complainant's knowledge. Secondly, the Respondent has not registered the disputed domain name in connection with a bona fide intention as the Respondent is not a licensee of the Complainant nor an authorized dealer or distributor of the Complainant. Thirdly, the Respondent is not commonly known by the disputed domain name. Fourthly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith. The OSRAM mark is a famous mark of the Complainant. The Respondent registered the disputed domain name in bad faith per paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Even though the Respondent has not actively used the disputed domain name, the registration and the Respondent's choice thereof which contains the well-known trade mark, OSRAM, constitutes bad faith. The Respondent obviously knew of the Complainant and its trade mark when it registered the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that:
"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."
The language of the Registration Agreement is Chinese, but the Complaint was filed in English. The Complainant requested that English be adopted as the language of the proceeding for the following reasons: (i) The Complainant does not understand the Chinese language. The obligation to translate the Complaint and supporting documents would unfairly disadvantage the Complainant as it would be very costly and the proceeding would be unnecessarily delayed; (ii) the disputed domain name was registered in "ASCII characters using the Roman alphabet"; (iii) the new gTLD ".vip" was chosen, which is generally used as an acronym for the English phrase, "very important person".
The Respondent did not respond on the issue.
In the exercise of its discretion under paragraph 11(a) of the Rules, the Panel determines that English shall be the language of the administrative proceeding. The disputed domain name contains letters of the Roman alphabet and the English language gTLD, "vip". This combination as well as evidence as to how the Respondent's website appears, reflect that the Respondent is to some extent familiar and comfortable with the English language. It also reflects an intention of the Respondent to target English-speaking customers. Having evaluated the circumstances, the Panel finds it would unduly delay the proceeding if the Complainant were required to have the Complaint and exhibits translated into Chinese, which does not appear to be merited in light of the apparent familiarity of the Respondent with the English language. Paragraph 10(c) of the Rules provides that "The Panel shall ensure that the administrative proceeding takes place with due expedition". The Respondent would have been apprised of the requirements and relevant deadlines pertaining to the administrative proceeding since all communications from the Center to the Parties were in Chinese and English. If there were grounds to object to the Complainant's request for English to be the language of the proceeding, the Respondent had the opportunity to do so but did not take it up.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark OSRAM. The entire trade mark has been adopted without variation into the disputed domain name. The only difference with the disputed domain name lies in the fact that the gTLD ".vip" features therein. It is a well-established principle that the gTLD should typically be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy since it is a technical requirement of a domain name registration.
The Panel therefore finds that the disputed domain name is identical to the Complainant's trade mark, and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, for the purposes of paragraph 4(a)(ii) of the Policy that:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name … :
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] 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 Panel agrees that OSRAM is a long-established and widely-known trade mark. The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has the consequent burden of providing evidence of its rights or legitimate interests in the disputed domain name. WIPO Overview 2.0. The Respondent, however, did not respond and therefore none of the circumstances enumerated in paragraph 4(c) of the Policy have been established by the Respondent. The Panel has no basis to find for the Respondent on the issue of paragraph 4(a)(ii) of the Policy. The Panel has noted not only the Respondent's silence in this proceeding but also the failure to respond to the Complainant's email regarding its request for the disputed domain name to be transferred. This set of circumstances is indicative of the Respondent's lack of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
In view of the fact that OSRAM is a widely-known mark and has been incorporated in its entirety in the disputed domain name and the Respondent does not have appear to have any rights or legitimate interests in the disputed domain name, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Respondent has not rebutted the reasonable inference one may draw, that the Respondent must have been aware of the Complainant and its said trade mark when it registered the disputed domain name. The Respondent has no apparent connection with the name "Osram". The Respondent failed to respond to the Complaint. Moreover, the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant's long-established trade mark rights. In the circumstances of the present case, the Panel finds that the Respondent's passive holding of the disputed domain name amounts to use of the disputed domain name in bad faith for the purpose of the Policy. See paragraph 3.2 of the WIPO Overview 2.0.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been 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, <osram.vip>, be transferred to the Complainant.
Date: August 9, 2016