WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics NV v. Gopan P.K.
Case No. D2001-0171
1. The Parties
The Complainant is Koninklijke Philips Electronics NV ("Philips"), a public company incorporated in the Netherlands. Its principal place of business is at Eindhoven, The Netherlands. It is represented by Mr JJECG Vandekerckhove of Eindhoven.
The Respondent is a Mr Gopan, PK, an individual whose name is given according to Network Solutions WHOIS database as having a postal address of Pallimukku, Cochin, Kerala, India, together with a telephone number and email address.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <philipsindia.net>.
The Registrar with which the domain name is registered is TotalNic.net, care of Capital Networks Pty Ltd, PO Box 383, Dickson, ACT 2905, Australia. The Registrar states that the disputed domain name is current and active and that the respondent is described as "of Syam Net". The date of first registration is not disclosed.
3. Procedural History
On January 31, 2001 the Complaint by Philips was received by email.
On February 5, 2001 the Complaint was received in hard copy.
On February 7, 2001 Registrar Verification was requested and on February 9, 2001 the Registrar responded to the request.
On February 13, 2001 a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On March 7, 2001 a Respondent Default Notification was issued.
On March 20, 2001 a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Panel having accepted the appointment and having considered the papers delivers the following Administrative Panel Order.
4. Factual Background
Philips is a company incorporated in the Netherlands. It can truly be regarded as an international company. It has secured trade mark registrations for the name "Philips" in more than 150 jurisdictions worldwide including India. The Trade Mark Registry Register Sheets from India disclose a current registration for trade mark 81808 "Philips" in class 9.
The evidence from Complainant is that Philips has a worldwide reputation as a manufacturer of electronic appliances and has been using the trade mark Philips for over 100 years. It claims that the name is synonymous with a spectrum of products. The name is registered for the use of promoting Philips as a company as well as its key products via the worldwide web.
The Respondent is registered as the owner of the disputed domain <philipsindia.net>. The Registrar confirms that the respondent a Mr Gopan is of Syam Net also described as Shyam Net of Pallimukku, Cochin, Kerala, India. The Registrar further confirms that the status of philipsindia is production and that the domain is current and active.
Nothing else is known of the Respondent other than what is apparent from the email traffic between the Complainant and the Respondent.
5. The Parties' Contentions
The Complainant claims that it is the owner of all rights to the mark PHILIPS which is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances and from security systems to semi conductors. The name "Philips" is the company's most important asset and the company has spent substantial amounts on supporting the brand worldwide.
The Complainant claims that the disputed domain name is confusingly similar to the PHILIPS trade mark as registered by the Complainant throughout the world including India.
The Complainant further claims that the Respondent has no rights or legitimate interests to the domain name as it has been registered by the Respondent primarily for the reasons of selling or transferring the domain name to the Complainant for an amount in excess of the Respondent's out of pocket costs. It is further claimed that the Respondent is misleading the Complainant into believing that the domain name was registered for a client despite the fact that the WHOIS database shows the Respondent as the owner of the domain name. It is therefore alleged by the Complainant that the inference should be drawn that the Respondent registered the domain name for the purposes of acquiring a personal benefit by seeking to negotiate terms and conditions presumably for agreeing to transfer the domain name to the Complainant.
Finally it is alleged by the Complainant that the domain name has been registered by the Respondent in bad faith, such bad faith being evidenced by the fact that the registration is unfair and detrimental to the business interests of the Complainant. It is further alleged that the Respondent has no real intent to use the domain name and has registered it with the intention of selling it for a profit and the Respondent has no bona fide interest in the domain name and did not seek registration for a genuine purpose.
The Respondent has defaulted and not provided a response to the Complaint. Nevertheless, following a cease and desist letter from the Complainant the Respondent did reply electronically and the email traffic is in evidence (see Annex 6 to the Complaint).
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has elected to place no evidence nor any submissions before the Panel.
Notwithstanding any default by the Respondent, it is still incumbent on the Complainant to make out its case.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by the Complainant to warrant relief.
As to the first ground, the Complainant alleges that the Respondent's domain name is confusingly similar to a trade mark in which the Complainant has rights. The domain name is <philipsindia.net> and the trade mark as registered in India and presumably elsewhere in the world is PHILIPS. Philips would also have common law rights to the name. It is clear that the domain name is not identical but it is equally clear that the domain name is similar. The only difference is the addition of the geographical indicator to the domain name. That relevantly adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of Philips as utilised in India. The Panelist therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. Ground (i) is accordingly made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the domain name.
As the Respondent has defaulted he has provided no evidence nor any submissions in justification of any claim that he has any rights to or legitimate interests in the domain name.
It is apparent however from the email traffic following the Complainant's cease and desist letter that the Respondent is seeking to profit from the registration by extracting a payment from the Complainant. It is notable that in the email traffic from the Respondent he made no claim to any rights to or legitimate interests in the domain name. What he in fact claimed in the last email was that he was doing website designing, hosting and domain name registrations in India and as there were no information technology rules regarding the matter in India, in accordance with a request from a client he had registered the name and the client is now interested in selling the domain name for US$5000.The so called client was not identified.
According to the ICANN Policy the rights to or legitimate interests in a domain name may be established if the Respondent can show that it had prior to notification of the dispute a corresponding name to that of the disputed domain name or was known by that domain name or was alternatively making some legitimate non commercial use of the domain name. None of these matters could be established on the available evidence. The Panelist accordingly finds that ground (ii) is made out.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. In respect of clause (iii) both of these heads must be made out – see Telstra Corp Ltd v Nuclear Marshmallows, Case D2000-0003.
The Complainant alleges that the Respondent registered the domain name and used it solely for the purposes of causing unfairness and detriment to the business of the Complainant without any real intention to use it. Moreover the Complainant alleges that the Respondent's real intention was to sell the domain name for an amount in excess of that required reasonably to compensate the Respondent for the costs of the registration.
The Policy provides that evidence of registration and use in bad faith may be provided where it can be shown that the Respondent registered the domain name primarily for the purpose of selling or transferring it to the Complainant who is the owner of a trade mark for valuable consideration in excess of the Respondent's documented out of pocket costs directly related to the domain name. Additionally evidence of bad faith can be established by showing that the registration was primarily for the purposes of disrupting the business of a competitor. Further, evidence of bad faith may be established by showing that the Respondent has used the domain name intentionally to attract for commercial gain internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. The Panelist is not persuaded that the evidence shows registration for the purposes of disrupting the business of the Complainant or that in using the domain name the Respondent has intentionally attempted to attract internet users to his website.
However, the email traffic makes it clear beyond any doubt that the Respondent has sought to sell or transfer the disputed domain name to the Complainant as the owner of a similar trade mark for an amount in excess of the Respondent's out of pocket expenses directly related to the domain name.
A cease and desist letter was sent to the Respondent. It was followed a short time thereafter by email traffic from the Respondent in reply to the cease and desist letter. The response simply stated that the Respondent needed US$5,000 for transferring the ownership of the domain name. No basis for this amount was given. The subsequent email traffic merely demonstrates the Respondent's intentions beyond any doubt. The Complainant asked whether or not the Respondent thought US$5,000 was too much for a transfer. The Respondent's evidence is telling. He stated "nope it is a small amount in the industry. (considering the reputation!?)". To this the Complainant asked if the Respondent had registered the domain name in order to secure a payment from the Complainant. It was only at this point that the Respondent replied indicating he was doing website designing, hosting and domain name registrations in India and following a request from a client had registered the disputed name but that the client or the Respondent was now interested in selling the domain name for US$5,000.
It seems unlikely in the extreme that the claim put up by the Respondent has any factual foundation to it. Having regard to the fact that the mark PHILIPS could truly be regarded as an internationally famous mark the Panelist is prepared to draw the inference in the absence of any evidence to the contrary that the registration of the disputed name by the Respondent was for the purposes of commercial gain either by the Respondent directly or on behalf of an unnamed third party.
The Registrar confirms that the name and site is active and accordingly the Complainant has established ground (iii) that the domain name has been registered and is being used in bad faith.
For the reasons set out above the Panel finds:
(a) The domain name registered by the Respondent is confusingly similar to trade marks to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondent's domain name was registered and is being used in bad faith.
Accordingly, pursuant to clause 4(i) of the Policy, the Panel requires that the registration of the domain name <philipsindia.net> be transferred to the Complainant.
John Katz QC
Dated: March 30, 2001