WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics NV v. Park Kyoung Seok

Case No. DPH2000-0001

 

1. The Parties

The Complainant is Koninklijke Philips Electronics NV, a public limited company incorporated in the Netherlands and having its principal place of business at Eindhoven, The Netherlands.

The Respondent is Mr. Park Kyoung Seok of 748-1 Hwajob5-ri, byulnae-myon

Namyangju-shi, Kyounggi-do South Korea, Korea.

 

2. The Domain Name and Registrar

The domain names in issue are "philips.com.ph" and "philips.ph". These domain names are registered with dotPHone, Inc., 11/F Strata 100 Building, Emerald Ave, Ortigas Center, Pasig City, 1600 Philippines. The domain names were acquired by the Respondent on May 2, 2000.

 

3. Procedural History

The Complaint submitted by Koninklijke Philips Electronics NV was received on December 15, 2000 (email) and December 18, 2000 (hardcopy), by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On December 21, 2000, a request for Registrar verification was transmitted by the WIPO Center to dotPHone, Inc., requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain names at issue are registered with dotPHone, Inc.

Confirm that the person identified as the Respondent is the current registrant of the domain names.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.

Confirm that the dotPHone, Inc. Uniform Domain Name Dispute Resolution Policy applies to the domain names.

Indicate the current status of the domain names.

By email dated December 26, 2000, the Registrar advised WIPO Center as follows:

dotPHone, Inc. had received the Complaint sent by the Complainant.

DotPHone, Inc. is the Registrar of the domain name registrations "philips.com.ph" and "philips.ph".

The Respondent is shown as the "current registrant" of the domain names "philips.com.ph" and "philips.ph". The Registrantís contact details are as above.

The administrative and billing contact is: Park Kyoung Seok, Cinekids, 748-1 Hwajob5-ri Byulnae-myon Namyangju-shi Kyounggi-do, South Korea, ph: 82-11-389-1094, email: lcdweb@digitelone.com.

The technical and zone contact is: Domingo, Leander C., LCD Web Services, 1F ACSFI Building, 100P. Zamora St., Bambang Neuva Vizcaya 3702, ph: 078-803-354, email: leander@digitelone.com.

The dotPHone, Inc. Uniform Dispute Resolution Policy is applicable to "philips.com.ph" and "philips.ph" domain names.

The domain name registrations "philips.com.ph" and "philips.ph " are registered for [i.e. have a registration period of] two years, have no active websites but are currently pointed to name servers.

The advice from dotPHone, Inc. that the domain names in question are still "active", indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with dotPHone, Inc. Accordingly, the Respondent is bound by the provisions of

dotPHone, Inc. Uniform Dispute Resolution Policy, which largely reflects the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the dotPHone, Inc. Policy and Rules, the WIPO Center on December 27, 2000, transmitted by postal courier and e-mail a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent.

The Complainant elected to have its Complaint resolved by a single panel member; it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by January 15, 2001). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by an original and four sets in hard copy and by email. No response was received from the Respondent by January 15, 2001.

On January 24, 2001, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 25, 2001, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 26, 2000, WIPO Center forwarded to Andrew Brown by email some of the relevant record. The remainder of the record was received by him on or about January 31, 2001. Pursuant to paragraph 15 of the Rules, in the absence of exceptional circumstances, the Panel was required to forward its decision by February 7, 2001.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the dotPHone, Inc. Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the Netherlands based multinational corporation which owns (and through its predecessors) has used the PHILIPS trademark since 1892. The trademark PHILIPS is used for a wide spectrum of products varying from consumer electronics to domestic appliances and from security systems to semi-conductors. The Complainant states that it has registered the PHILIPS trademark in 145 countries worldwide.

The Complainant is the registered proprietor of the PHILIPS trademark in the Philippines in Classes 7, 8, 9,10,11,14 and 16.

The Complaint refers to email correspondence from the Respondent to his technical contact for the domain names on August 26, 2000 in which the Respondent stated:

"I very much appreciate your email message regarding "philips.com.ph" domain name. As far as I am concerned, I have both philips.com.ph and philips.ph for this domain.

I am not willing to resell these domain (sic) names yet, but would like to know exactly about the condition and the proposition of those who are interested in these domain names.

If they really would like to get this domain, please let me know their conditions."

The Complainant claims that it can be deduced from this that the Respondentís intent in obtaining registration of the domain name was to extort financial gains from the Complainant.

 

5. Partiesí Contentions

The Complainant

The Complainant contends that:

The domain names are identical or confusingly similar to the PHILIPS trademark registered by the Complainant;

The Respondent has no rights or legitimate interest in the domain names and that they were registered in an attempt to extort financial gains, to prevent the Complainant from reflecting its trademark in a domain name and for the purpose of disrupting the Complainantís business;

The registration of the domain names was in bad faith.

In this latter regard reference is made to similar fact evidence that the Respondent has registered a number of domain names with well-known trademarks. The Complainant also refers to a letter from the Respondent dated November 23, 2000 which stated (in part):

"It is my viewpoint that the word "philips" in the Philippines is at least a very "common and general" word which enables to express a very diverse and peculiar meaning or sense. Please try to imagine under what "Name" you would like to conduct your business if you have a plan to start an "Internet Business" in the Philippines.

It is my thought that the word "philips" would be the best word to reflect the Internet Business (Philippines Information Providing Service = Phil.i.p.s) in a very symbolic and perfect way which I will conduct in the Philippines.

Also, Philippines could be abbreviated to philips, together with various uses for the business.

I have never proposed to sell the domains "philips.com.ph" and "philips.ph" to your company and have never demanded anything for the domains from your company. It is my clear intention that I will use the domains only for my future business in the Philippines and I would not use the domains to damage your company. Therefore, you should clarify this point correctly if you insist continuously that you resolve the situation legally.

Please kindly be informed that you have many possible ways for your company domains by registering such as "iphilips.com.ph", "ephilips.com.ph" or by using another words (sic)."

Respondent

The Respondent has not filed any formal response or challenge to the Complaint apart from the communication to the Complainant quoted above.

 

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 dotPHone, Inc. 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 domain names "philips.com.ph" and "philips.ph" are identical to the Complainantís famous trademark PHILIPS which is registered not only in the Philippines in six classes but is also registered worldwide in a total of 145 countries.

No legitimate rights or interest in "philips.com.ph" and "philips.ph".

The Panel finds that the Respondent has no legitimate rights or legitimate interests in relation to the trademarks PHILIPS. The November 23, 2000 email written by the Respondent provided no legitimate reason for adoption of "philips.com.ph" or "philips.ph" or any prior association on the part of the Respondent with the trademark PHILIPS.

The suggestion that "Philips would be the best word to reflect the internet business (Philippines Information Providing Service)" is not supported by any evidence showing any use of the mark or preparation to use that mark. The further suggestion that the word Philippines could be abbreviated to Philips is far-fetched. There is no evidence of the name of the country having been abbreviated to this term. Reference to the Shorter Oxford Dictionary, for example, does not disclose any such accepted abbreviation.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the dotPHone, Inc. 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 complainantís 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.

Further enquiries of the Registrar have revealed that the Respondent did not in fact register the domain name but acquired it from "Park, Simon (Kwang-ho) of JAD Corporation" on or about May 2, 2000. The Policy, however, appears to regard registration of a domain name as also incorporating acquisition. Paragraph 4(b)(i) refers to "circumstances indicating you have registered or you have acquired the domain name primarily for the purposes of". This accords with commonsense because otherwise it would be easy to evade the Policy by arranging one person to register a contentious domain name and then immediately transfer this to another associate.

The Panel finds that the domain name was acquired and used in bad faith for the following reasons in combination:

The email of August 26, 2000 from the Respondent indicates that although he was "not willing to resell these domains yet, he was certainly interested to know about the proposal from someone who wanted the domain names". The use of the phrase "I am not wanting to sell these domains yet" suggests that it was also part of the Respondentís intention to sell the domain names at some time for valuable consideration. It is true that the email was not written to the Complainant so this is not evidence of intention to sell to the trademark owner. Nevertheless, the email does indicate an intention to trade in the domain name.

The later email from the Respondent dated November 23, 2000 denies that he ever had an intent to sell the domain names and in particular states that no demand had ever been made of the Complainant. The August 26, 2000 email contradicts this because, although the Respondent was not overtly looking to sell, he was certainly interested in receiving a proposal to do so.

The similar fact of evidence of other domain names registered in the name of the Respondent serves to cast suspicion on the motives and bona fides of the Respondent in registering "philips.com.ph" and "philips.ph". The domain names registered in the name of the Respondent include "toshiba.ph", "nike.ph", "nike.com.ph", "nec.ph", "nec.com.ph", "benz.ph", "benz.com.ph", "sanyo.ph", and "sanyo.com.ph". These well known and famous trademarks are not connected with the Respondent, an individual living in South Korea. The registrations show a pattern of registering famous marks as domain names in the Philippines. The suggestion made by the Respondent that Philips would "be the best word to reflect the internet business (Philippines Information Providing Service = phil.i.p.s)" stretches credulity. There is no evidence that the Respondent has ever had a business by that name and the Respondent has never attempted to use the domain names for any such business despite owning them since May 2000.

It is a fair inference from the evidence and the above points that the Respondent acquired these domain names in order to prevent the Complainant from reflecting its trademark in corresponding domain name. There is certainly a pattern of such behavior given the other domain names the Respondent has registered. These actions come within clause 4(b)(ii) of the Policy as demonstrating bad faith.

The Policy requires that the Respondent has registered/acquired and is using the domain name in bad faith. The fact that the domain names are available for sale has been taken as evidence of bad faith registration and absence of use in such circumstances has, since the decision (in Telstra Corporation v. Nuclear Marshmallows, WIPO Case D2000-0003) been consistently found not to frustrate the requirement of showing bad faith registration and use. The concept of a domain name being used in bad faith is not limited to positive action: CUX, Inc. v. DomainNamesAvailable, WIPO Case D2000-0972. In this case the August 26, 2000 email from the Respondent shows that the domain names were likely to be available for the right price.

The Panel therefore concludes that the Complainantís claim that the domain names have been registered and are being used by the Respondent in bad faith has been made out.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain names registered by the Respondent are identical to the PHILIPS trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) the Respondentís domain names have been registered and used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names " philips.com.ph" and "philips.ph" be transferred to the Complainant.

 


 

Andrew Brown
Panelist

Dated: February 12, 2001