WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. hgjh
Case No. D2002-0342
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., a public limited company incorporated in The Netherlands and having its principal place of business at Groenewoudseweg 1, Eindhoven, The Netherlands.
The Complainant is represented by Mr. J.J.E.C.G. Vandekerckhove, Eindhoven, The Netherlands.
The Respondent is hgjh, whose address is given as 23 Rehari, Delhi, MA, United States of America.
2. The Domain Name and Registrar
The domain name in issue is <philipselectronics.net>.
The Registrar with which the disputed domain is registered is Melbourne IT, Melbourne Victoria, Australia.
3. Procedural History
On April 10, 2002, a Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
On April 17, 2002, the Registrar responded to a request for verification of the disputed domain name <philipselectronics.net> confirming:
- That a copy of the Complaint had been sent to it by the Complainant.
- That the disputed domain name was registered with Melbourne IT.
- That the Respondent was the current registrant of the disputed domain name.
- The details of the Respondent.
- That the Policy applied to the disputed domain name.
- That the current status of the disputed domain name was "active".
- That the language of the Registration Agreement is English.
On April 17, 2002 a Notification of Complaint and Commencement of Administrative proceedings was sent to the Respondent, advising it that a Response to the Complaint was required within 20 calendar days (i.e., by May 7, 2002). No Response was received from the Respondent and on May 14, 2002, the WIPO Center issued a Notification of Respondent Default.
On May 22, 2002, the WIPO Center appointed a Sole Panelist. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules.
4. Factual Background
The Complainant is a Netherlands based corporation which owns and (through its predecessors) has used the PHILIPS trademark since 1891. The trademark PHILIPS is used for a wide spectrum of products from consumer electronics to domestic appliances and from security systems to semi-conductors. The Complainant has provided evidence of numerous trademark registrations for the trademark PHILIPS in more than 140 countries worldwide, including the United States of America where the Respondent claims to be located. The Complainant has also registered the mark PHILIPS as an international trademark in a number of classes.
On July 31, 2000, the Respondent registered the disputed domain name.
On November 3, 2000, the Complainant wrote to the Respondent in respect of its registration of the disputed domain name. (The Complainant states that it wrote to the Respondent via the Technical Contact and via e-mail as the residential/postal address and telephone contact number provided in the "Whois" information was false.)
No response was received to this letter, or to follow up letters sent on April 27, 2001, and August 9, 2001.
5. Parties Contentions
A. The Complainant
The Complainant contends its PHILIPS brand and trademark is one of the Complainants most important assets and that it has spent substantial sums of money in promoting the brand worldwide.
The Complainant states that the disputed domain name is confusingly similar to the PHILIPS trademark registered by the Complainant and that the Respondent has no rights or legitimate interest in the disputed domain name. It bases this contention on the following:
(a) The Respondent is not commonly known by the domain name <philipselectronics.net>;
(b) The Complainant had not licensed or otherwise permitted the Respondent to register the disputed domain name incorporating the trademark "PHILIPS";
(c) By providing false contact information regarding its residential/postal address and telephone contact number, the Respondent has demonstrated "disinterest" in the disputed domain name, and by concealing his/her identity ensured no direct communication with the Respondent was possible;
(d) The Respondent has not explained the intention behind the registration of the disputed domain name, even after the Complainant wrote to the Respondent;
(e) Before (and after) any notice of the dispute was communicated to the Respondent, there was no evidence that the Respondent had used, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; nor was the Respondent making a fair, non-commercial use of the disputed domain name.
The Complainant also contends that the registration of the disputed domain name was in bad faith, for the following reasons:
(a) The Respondent had no demonstrable plan to use the disputed domain name for a bona fide purpose prior to registration or acquisition of the disputed domain name;
(b) The Respondent registered the disputed domain name to intentionally create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainants trademark. The registration of the disputed domain name was a deliberate attempt to attract users to its website for commercial gain due to confusion with the Complainants mark;
(c) The Respondent has engaged in a pattern of conduct. The Respondent has also registered the domain name <addidasindia.com>, amongst a number of other domain names. None of these domain names resolve to active sites although all the domain names were registered from July August 2000. The lag time between the registration of the domain names and their use is not reasonable and a conclusion may be drawn that the domain names were registered for the primary purpose of selling them;
(d) The Respondent was obviously aware of the Complainants rights in the trademark PHILIPS prior to the registration of the disputed domain name and is not making fair use of the name;
(e) The Respondent has provided false contact information. This is a deliberate act by the Respondent to conceal his/her identity. The contact telephone number provided by the Respondent is incorrect, as well as the insertion of "MA" and "US" which do not correspond to the city "Delhi";
(f) The Respondent would not have registered the disputed domain name had the Respondent conducted a proper trademark search before registering the disputed domain name. In addition, the Respondent should have known of the existence of the trademark PHILIPS prior to registration of the disputed domain name, as the trademark PHILIPS is well-known internationally. It would be reasonable to expect the Respondent to be aware of the existence of this trademark;
(g) The registration of the disputed domain name creates confusion as to the source, affiliation and sponsorship of the domain name;
(h) The Complainant suspects that there is no real intent to use the disputed domain name. There has been no bona fide use of the disputed domain name to date.
The Respondent did not file a Response.
6. Discussion and Policy
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is identical to registered trademark
The Panel finds the disputed domain name <philipselectronics.net> is confusingly similar to the Complainants famous trademark PHILIPS, which is registered in a significant number of countries worldwide.
The Panel does not consider that the addition of the word "electronics" to the trade mark "PHILIPS" serves to differentiate the disputed domain name from the Complainants trademark. If anything, the likelihood of confusion between the disputed domain name and the Complainants trademark is increased by the fact that the disputed domain name contains both the Complainants trademark "PHILIPS" and the word "electronics", the latter being the industry in which the Complainant operates.
No legitimate rights or interest in the disputed domain name
The second burden on the Complainant is to establish that the Respondent has no rights or legitimate interest in the disputed domain name. The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents rights or legitimate interest in the domain name. These circumstances are:
(i) Before any notice to the Respondent of the dispute, the Respondents use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the 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 non-commercial 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.
There is nothing in the Complaint to suggest that paragraphs 4(c)(i) (iii) are applicable or that the Respondent otherwise has a legitimate right or interest in the disputed domain name. There has been no use of the site <philipselectronics.net> to date.
The Respondent has not responded to correspondence from the Complainant, nor has it filed a Response. The Panel finds it appropriate to draw an adverse inference from the fact that the Respondent has failed to provide a Response to the Complaint (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848).
The Panel therefore finds that the Respondent has no legitimate rights or interest in respect of the disputed domain name.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 complainants 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."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel finds that the disputed name was registered in bad faith for a combination of reasons:
(a) The Panel accepts the Complainants evidence that its mark PHILIPS has a global reputation in respect of electronics. It defies coincidence to suggest that the Respondent would have registered the mark "PHILIPS" as a domain name in conjunction with the word "electronics" without being aware of the Complainant and its well-known trademark in respect of electronic goods and services;
(b) The fact that the Respondent has provided a false name, address and telephone number and has failed to reply to correspondence sent by the Complainant to the Technical Contact and to the Respondent via email strongly points to the fact that this is not a bona fide registration of the domain name;
(c) The fact that the Respondent has registered another domain name comprising a misspelling of the well-known trade mark ADIDAS namely <addidasindia.com> demonstrates that this is not an isolated or innocent registration;
The motives of the Respondent cannot be ascertained because there has been no response to earlier letters or to this Complaint. The Panel cannot therefore find that the domain name was registered to prevent the Complainant from reflecting the mark in a corresponding domain name within paragraph 4(b)(ii). However, the registration of <addidasindia.com> by this Respondent does point to something of a pattern of conduct.
The instances of bad faith registration listed in paragraph (4)(b) are not exhaustive. For the combination of reasons given above, the Panel concludes that the disputed domain name was registered in bad faith.
The Policy requires a Complainant to demonstrate both that the disputed domain name was registered and that it is being used in bad faith. Despite the fact that the disputed domain name <philipselectronics.net> was registered on July 31, 2000, the Respondent has not made any use of the disputed domain name to date. However, a passive holding of a domain name, particularly in the context of strong evidence of bad faith registration, has consistently been found not to frustrate a Complainants allegation of bad faith registration and use. (Telstra Corp v Nuclear Marshmallows, WIPO Case No. D2000-0003)
The Panel therefore concludes that the Complainant has established that the disputed domain name has been registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Panel decides:
(a) that the disputed domain name registered by the Respondent is confusingly similar to the trademark PHILIPS in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the disputed domain name <philipselectronics.net> be transferred to the Complainant.
Dated: June 4, 2002