WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. Baguley

Case No. D2001-0885

 

1. The Parties

The Complainant in these Administrative Proceedings is a public limited company, Koninklijke Philips Electronics N.V. of Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands. The Complainant is incorporated in the Netherlands where it has established its principal place of business.

The Respondent is Baguley. There is no information regarding the status of the Respondent but it is assumed that the Respondent is a natural person. The postal address of the Respondent, provided as contact information for the purposes of the domain name registrations in issue in these proceedings is 105 Ledbury Road, Baldwin, NY 11578, USA. This information would appear to be incorrect.

 

2. The Domain Names and Registrar

The domain names in issue in these Administrative Proceedings are <forphilipsindia.com>, <microphilipsindia.com> and <electrophilipsindia.com>.

The registrar with which the domain names are registered is: Tucows.com Inc. (hereinafter the "Registrar")

 

3. Procedural History

On July 12, 2001, the Complaint was filed by the Complainant by e-mail with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The hard copy was received by the Center on July 16, 2001.

On July 13, 2001, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant by e-mail.

On July 13, 2001, the Center sent a Request for Registrar Verification to the Registrar. On July 17, 2001, the Registrar responded to the Center by e-mail and confirmed that the Registrar had received a copy of the Complaint, that said registrations were registered by the Registrar, that the Respondent was the current registrant of said domain names and provided details of the administrative contact, the technical contact and the billing contact in respect of each of the said registrations. Furthermore the Registrar confirmed that the Policy applied to said registrations and that said registrations were currently on hold.

The Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On July 18, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain names to the Respondent (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact) by courier (with enclosures) and by e-mail (Complaint without attachments). The documentation sent by courier was returned undeliverable. Additionally a fatal error occurred in the transmission of the e-mail communications sent to the Respondent at the addresses provided by the Respondent to the Registrar at the time of registration for the administrative contact and billing contact viz. <parvinder_0_0_7@yahoo.com>. Service however was successful on the Respondentís technical contact.

On the same date a copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to ICANN and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia stated that the Administrative Proceedings had commenced on July 18, 2001, and that the Respondent was required to submit a Response to the Center on or before August 7, 2001.

On August 10, 2001, as no Response had been filed by the Respondent, the Center sent by e-mail, a Notification of Respondent Default to the Respondent. On this occasion, once again the e-mail sent to the Respondent at the address provided by the Respondent to the Registrar viz. <parvinder_0_0_7@yahoo.com>, was not delivered and the Center was advised that this failure was due to a "permanent fatal error". A copy of said Notification was at the same time sent to the authorized representative of the Complainant.

On August 16, 2001, having invited James Bridgeman to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member.

On August 16, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties by e-mail and advised that absent exceptional circumstances, the Administrative Panel was required to forward its decision to the Center by August 30, 2001.

On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant submits that the trademark "PHILIPS" has been registered by the predecessors of the Complainant in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide. The Complainant has submitted a list of major countries, including India, in which the trademark is registered worldwide together with a copy of the certificate of registration of the trademark in India.

 

5. Partiesí Contentions

A. Complainant

The Complainant requests this Administrative Panel to issue a decision that the contested domain names <forphilipsindia.com>, <microphilipsindia.com> and <electrophilipsindia.com> be transferred to the Complainant because it is alleged that

(1) said domain names are confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) said domain names were registered and are being used in bad faith.

The Complainant submits that the trademark "PHILIPS" is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, and from security systems to semiconductors. The "Philips" brand name is the Complainantís most important asset as it has spent substantial sums supporting this brand worldwide.

The Complainant submits that the said domain names are confusingly similar to the Complainants "PHILIPS" trademark.

The Complainant further submits that the Respondent has no rights to or legitimate interests in said domain names.

The Complainant submits that the said domain names have been registered primarily for the purpose of speculating on the profitability of the domain names. The domain names were not used by the Respondent. Furthermore the Respondent was not commonly known by the said domain names. In support of these submissions the Complainant refers to the decision of the administrative panel in ICANN case Space Imaging LLC v. Stephen J. Brownell (AF 0298a-0298d).

The Complainant further submits that the Complainant has not licensed or otherwise permitted the Respondent to register the domain name incorporating the word "PHILIPS" within the domain name and in support of this submission the Complainant refers to the decisions of the administrative panels in Nokia Corporation v. Nokiagirls.com a.k.a. IBCC (WIPO Case No. D2000-0102) and Veuve Clicquot Ponsardin v. Net-Promotion, Inc. (WIPO Case No. D2000-0347).

The Complainant further states that the Respondent has failed to provide evidence pertaining to the preparations or use of said domain names for bona fide offering of goods/services between the date of registration and commencement of these Administrative Proceedings which sufficed to show lack of legitimate interest.

The Complainant further submits that the Respondent failed to provide any evidence pertaining to preparations to use said domain names for a bona fide offering of goods or services even after receipt of a cease and desist letter from the Complainant dated February 8, 2001, and sent as an e-mail attachment on February 26, 2001. The Complainant states that said cease and desist letter was sent by the Complainant to the Respondent as an e-mail attachment, because the original letter, sent by post to the address provided by the Respondent to the Registrar, had been returned undelivered. The reason for failure to deliver was stated to be that it had been sent to an unknown address. The Complainant has submitted a copy of the said letter together with a copy of the e-mail sent to the Respondent by the Complainant to which said the cease/desist letter was attached.

The Complainant refers to the decisions of administrative panels in LG Chemical Ltd v. Changwan, OH (WIPO Case No. D2000-0889); Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises and J.D. Sallen Enterprises (WIPO Case No. D2000-0461) and notes that the Respondent in the present Administrative Proceedings has provided incorrect contact information.

Additionally the Complainant submits that:

- the registrations were based on "a domain name speculation" without real intent to use;

- the Respondent has not communicated to the Complainant any plan for a bona fide use of his domain name;

- the registration of said domain names causes unfairness and is certainly detrimental to the business of the Complainant as the Complainant's trademark is influential in the field of business for which it was registered; and

- the Respondent registered each said domain name on or about the same day, and none of the said domain names resolves to an active www site.

The Complainant further submits that it could easily be inferred or concluded that the Respondent had the intention of transferring the domain names for valuable consideration. In this regard the Complainant refers to the decision of the administrative panel in ICANN case Space Imaging LLC v. Stephen J. Brownell (AF 0298a-0298d).

The Complainant further submits that the Respondent has not responded or leveled a challenge to the content and/or averments in the Complainantís said cease and desist letter. In this regard the Complainant cites the circumstances in cases Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and Pharmacia & Upjohn AB v. Dario H. Romero (WIPO Case No. D2000-1273).

In addition, the Complainant submits that it is evident from the information on the Registrar's WHOIS database, that the Respondent provided false contact information for his or her postal address and telephone number. Therefore, the Complainant submits that this was a deliberate act by the Respondent to conceal his or her identity to ensure that no direct communication with the Complainant was possible. The Complainant refers to the decisions of the administrative panels in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Morrison & Foerster, LLP v. Brian Wick and American Distribution Systems, Inc (FA0003000094301) and Suntex International, Inc. v. 24game (WIPO Case No. D2000-0408).

Finally the Complainant submits that the Respondent registered said domain names to perhaps intentionally create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainantís mark, particularly in India. In support of this submission the Complainant refers to the decision of the administrative panel in AltaVista Company v. West Coast Entertainment, Inc. (FA0007000095265).

B. Respondent

There was no Response filed by the Respondent.

 

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving in respect of each of the domain names in dispute that:-

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

The decision as to whether a domain name is identical or confusingly similar to a trademark is by its nature a matter of fact for an administrative panel.

The Complainant has alleged that each of the said domain names are confusingly similar to its "PHILIPS" trademark but has not given any reasons for this submission and would appear to rely on the fact that the letters "philips" are incorporated in each of these domain names.

On considering the visual and aural characteristics of each of the domain names in issue in these proceedings, this Administrative Panel has concluded that the domain names <forphilipsindia.com> and <microphilipsindia.com> are neither identical nor confusingly similar to the Complainant's "PHILIPS" trademark. In the view of this Administrative Panel however the domain name <electrophilipsindia.com> is confusingly similar to the Complainant's "PHILIPS" trade mark.

With regard to the domain name <forphilipsindia.com>, this Administrative Panel notes that no element of the domain name makes any reference to any goods or services of any sort and the letters "philips" are not prominent in the domain name. "Philips" is a common family name and "Philip" is a common personal name.

With regard to the domain name <microphilipsindia.com>, while there may be an argument that the word "micro" is sometimes used in the context of electrical goods, it is also used in other contexts. In this regard the Respondent is entitled to the benefit of the doubt.

The domain name <electrophilipsindia.com> however contains three clearly distinct elements, viz. the letters "electro", "philips" and "india". In the view of this Administrative Panel the element consisting of the letters "electro" is the dominating element and the Complainant has an established reputation in the electronics field. Taking this in combination with the fact that the word "philips" is the Respondent's trademark, and the word "india" refers to a jurisdiction in which the Complainant has a reputation and a registered trademark, said domain name is clearly confusingly similar to the Respondents trademark..

Since the Complainant has failed to establish the first element in the proofs necessary to succeed in respect of the domain names <forphilipsindia.com> and <microphilipsindia.com>, it is not necessary for this Administrative Panel to further consider the Complainant's allegations relating to the domain names <forphilipsindia.com> and <microphilipsindia.com>.

With regard to the domain name <electrophilipsindia.com>, this Administrative Panel notes that on numerous occasions administrative panels have commented that it is difficult for a complainant to prove a negative. The Complainant has alleged that the Respondent has no rights or legitimate interest in the said domain name. The Respondent has had the opportunity on a number of occasions to address this allegation. The allegation was implicit in the cease and desist letter sent by the Complainant to the Respondent dated February 8, 20001 and the allegation is expressly made in the Complaint.

In these circumstances in the view of this Administrative Panel, the Respondent should be expected to address these allegations. The Complainant has succeeded in making out a sufficient case to pass the onus over to the Respondent. As the Respondent has not taken these opportunities to address these allegations, this Administrative Panel is satisfied that the Complainant has succeeded in making out a prima facie case that Respondent has no rights or legitimate interest in the said domain name <electrophilipsindia.com>, sufficient to satisfy the second element of the test in paragraph 4(a) of the Policy.

In the view of this Administrative Panel, the Complainant has established a prima facie case that at the time of registration, the Respondent provided false contact information for his or her postal address and telephone number. Furthermore this Administrative Panel accepts that there is a prima facie case that this was a deliberate act by the Respondent to ensure that no direct communication was possible.

It is also clear that given the reputation of the Respondent's trademark in the field of electrical goods, the Respondent must have been aware at the time of registration, that any commercial use of said domain name would be likely to amount to passing off or an infringement of the Complainant's trademark rights.

This Administrative Panel is satisfied that the Complainant has made out a prima facie case that the said domain name <electrophilipsindia.com> was registered in bad faith.

With regard to whether the said domain name is being used in bad faith, this Administrative Panel further notes that said domain name does not resolve to an active web site. This fact alone is obviously not indicative of either registration or use of the domain name in bad faith, but when taken together with the facts that the Respondent has furnished false contact details and has failed to reply to the Complainant's cease and desist letter or to file any Response in these Administrative Proceedings it is open to this Administrative Panel to infer that the Respondent is engaged in passive holding of the said domain name <electrophilipsindia.com> such as to permit this Administrative Panel to conclude that said domain name was registered and is being used in bad faith.

In Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) the circumstances which led the administrative panel to conclude that the passive holding of the domain name in issue by the respondent amounted to use in bad faith were set out as follows:

"(i) the Complainantís trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law."

In the present case the Complainant clearly has a strong reputation in the widely known trademark "PHILIPS" in many jurisdictions throughout the world including India. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him or her of the domain name. While the Respondent is entitled to the benefit of the doubt that he or she has provided correct information as to his or her identity, the Respondent has actively provided and failed to correct, false contact details. Furthermore, it is unlikely that any plausible actual or contemplated commercial use of the said domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant's trademark.

Taking into account all of the above, in the absence of any Response from the Respondent and the fact that this Administrative Panel has concluded that the Respondent has no rights or legitimate interest in said domain name, this Administrative Panel is satisfied that the Complainant has established a prima facie case that the Respondent is engaged in passive domain name holding with respect to the domain name registration <electrophilipsindia.com> such as to amount to a registration and use in bad faith.

In conclusion therefore, the view of this Administrative Panel is that the Complainant has failed to establish the first element of the test in paragraph 4(a) of the Policy in respect of the domain names <forphilipsindia.com> and <microphilipsindia.com> and cannot succeed in respect of either of these registrations.

On the other hand, the Complainant has succeeded in establishing a prima facie case in respect of each of the elements set out in paragraph 4 of the Policy with regard to the domain name <electophilipsindia.com> and is entitled to the relief sought in respect of that registration.

 

7. Decision

With specific reference to paragraph 4 of the Policy and paragraph 15 of the Rules this Administrative Panel therefore decides as follows:

1. The Complainant has failed to meet the test set out in paragraph 4(a) of the Policy with regard to the domain names <forphilipsindia.com> and <microphilipsindia.com> and the relief sought must be refused.

2. The Complainant has succeeded in establishing that the Respondent has registered the domain name <electrophilipsindia.com> confusingly similar to a trademark mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of said domain name <electrophilipsindia.com> and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <electrophilipsindia.com> should be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: August 30, 2001