WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics v. Kurapa C. Kang
Case No. D2001-0163
1. The Parties
The Complainant is Koninklijke Philips Electronics, a Netherlands corporation with its principal place of business at Eindhoven, Netherlands. The Complainant is represented by Mr J.J.E.C.G. Vandekerckhove.
The Respondent is Mr Kurapa C. Kang, of 75-15 Kupadal-dong, Unpyong-qu, Seoul, 122-110, Republic of Korea. The Respondent is not represented and has not filed a Response.
2. The Domain Name and Registrar
The domain name at issue is <antiphilips.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").
3. Procedural History
The Complaint submitted by Koninklijke Philips Electronics, was received on January 30, 2001 (electronic version) and January 30, 2001 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On February 2, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with NSI.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- 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 name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated February 5, 2001, NSI advised WIPO Center as follows:
- NSI had received a copy of the Complaint from the Complainant.
- NSI is the Registrar of the domain name registration <antiphilips.com>.
- Kurapa C. Kang at the address shown for the Respondent is shown as the "current registrant" of the domain name.
- Chunun Kang at the same address is the billing, administrative and technical contact.
- The domain name registration <antiphilips.com> is currently in "Active" status.
NSI has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 7, 2001, transmitted by post-courier and by email a notification of Complaint and Commencement of Administrative Proceeding to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN. The Respondent did not file a Response. The WIPO Center issued a Notice of Default on February 27, 2001.
The Complainant elected to have its Complaint resolved by a single member panel: it has duly paid the amount required of it to the WIPO Center.
On March 2, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC 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 March 5, 2001, the Honorable Sir Ian Barker QC 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 March 7, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on March 12, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by March 20, 2001.
The Panel requested further submissions from the Complainant which had in its original complaint supplied little argument on whether the domain name was confusingly similar to the Complainantís mark. Although requested to file this submission by March 19, 2001, the Complainant did not do so until March 26, 2001. Consequently, the decision date has had to be extended because of the Complainantís delay.
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 Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The trademark Philips has been registered by the predecessors of Koninklijke Philips Electronics N.V. (KPENV), in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide. The trademark Philips is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, and from security systems to semiconductors. Philips brand name is the companyís most important asset. It has spent substantial sums in supporting its brand worldwide.
(a) Offered to sell the domain name to the Complainant, suggesting a price of US$150,000.00;
(b) Has not developed a web site for the domain name;
(c) Is a registrant in bulk of domain names, some of which incorporate other well-known marks (e.g. <antipanasonic.com>).
5. Partiesí Contentions
1. The domain name in question is confusingly similar to its Philips mark registered by the Complainant in which it has worldwide rights and which has acquired a worldwide reputation.
2. The Respondent has no rights or legitimate interests to the domain name, which has been registered primarily for the following reasons:
(a) For the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the domain name registrantís out-of-pocket costs;
(b) For the purpose of displaying a pattern of conduct by registering a domain name containing another well-known trademark, where a corresponding web site has not been developed as well.
3. Registration of the domain name has been effected and is being used in bad faith for the following reasons:
(a) The registration of the domain name in question causes unfairness and is detrimental to the business of the Complainant;
(b) The registration was for the purpose of domain name speculation without any real intent to use the name legitimately;
(c) The registration took place with an intention to sell or transfer the name to the Complainant for profit;
(d) The Respondent had no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name, but rather sought to force the Complainant to buy the name.
The Respondent has made no submissions.
6. Discussion and Findings
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;
- 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 in bad faith.
The domain name <antiphilips.com> is, in the judgment of the Panel, confusingly similar to the Complainantís marks. The addition of the Ďantií does nothing to deflect the impact on the viewer of the mark. Because of the worldwide nature of the internet, it does not matter that the trademark registration is in a country other than that of the domain name registrant. Philips is a well-known mark throughout the world.
The addition of the prefix Ďantií is a crude attempt to tarnish the mark. Although the prefix Ďantií could make an English speaker consider that the name does not promote the Complainant or its products, not every user of the internet is well-versed in the English language. Consequently, a user could be led to believe that any name using the world-famous mark is associated with the Complainant. In some WIPO cases, a domain name which adds a pejorative term to a well-known mark has been ordered to be transferred to the owner of the mark. For example, in D2000-0583, Direct Line Group Ltd & Ors v Purge I.T. Ltd, a distinguished Panelist, Professor W R Cornish, ordered the transfer to the Complainant of the domain name <directlinesucks.com>. He held the name confusingly similar to the mark Direct Line. His rationale, which this Panel adopts with respect, is as follows:
"The Respondentís registration, consisting of the Complainantsí name with the suffix, "sucks" (plus ".com"), is not identical to the Complainantsí marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the targetís name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panelís opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainantsí name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally, others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com))."
The Panel is aware that there are other decisions by WIPO panelists which have taken a similar approach and others where panelists have concluded that a derogatory word like "sucks" when added to a registered mark does not make the resulting domain name confusingly similar. Unless and until there is some appellate tribunal, this difference of opinion will endure. Although this Panelist can see the contrary arguments, the approach cited above is considered appropriate by him.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make 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.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest but seems to be a registrant of names of well-known marks. There is no suggestion that paragraph 4(c) of the Policy can possibly apply. The Respondent is just indulging in crude cyber-squatting.
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 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.
The Panel considers that the Respondent has registered and used the domain name <antiphilips.com> in "bad faith" for the following reasons:
(a) The Philips mark is universally known and must have been known to the Respondent at the time of registration;
(b) The Respondent is speculating as a cyber-squatter seeking to utilize well-known marks;
(c) The Respondent has not developed a website;
(d) The Respondent has offered to sell the name to the Complainant for a vast profit.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the Respondentís domain name has been 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 domain name <antiphilips.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: March 27, 2001