WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. Anpol

Case No. D2001-1151

 

1. The Parties

The Complainant is Koninklijke Philips Electronics N.V., Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands is represented by Mr. J.J.E.C.G Vandekerckhove, Postbus 220, 5600 AE Eindhoven, The Netherlands.

The Respondent is Anpol, ul. Skryta 13/2, 60-779 Poznan, Poland, represented by Andrzej Luczinski, ul. Skryta 13/2, 60-779 Poznan, Poland.

 

2. The Domain Names and Registrar

The domain names at issue are <philipsdealer.com> and <philipsdealer.net>. The Registrar is Dot Registrar, 13205 SW 137th Ave, Suite 133, Miami, Fl 33186, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on September 20, 2001, and a hardcopy was received by the Center on September 21, 2001. The Center acknowledged the receipt of the Complaint on September 21, 2001.

On October 1, 2001, the Center sent to Dot Registrar a request for verification of registration data. At the same date, Dot Registrar confirmed to be the Registrar, that the Respondent is the Registrant of the domain names <philipsdealer.com> and <philipsdealer.net >, that the administrative contact and the technical contact is Anpol robert®@quest.com.pl., Skryta 13/2, 60-779 Poznan, Poland, and that the domain names are put on hold.

WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.

On October 5, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On October 24, 2001, the Center received a Response by email and on October 29, 2001, it received a hard copy of the Response. On October 31, 2001, it acknowledged receipt of the Response.

On November 30, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center.

No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panelís decision is December 14, 2001.

 

4. Factual Background

A Complainant

The Complainant is an internationally leading company in the field of consumer electronics and domestic appliances. It is also known as a manufacturer of security systems and semiconductors.

The Complainant has been for many years the owner of registrations for the trademark "Philips" in many countries all over the world for the products belonging to its before mentioned activities. The Complainant has submitted a list of countries in which the trademark "Philips" is registered and a certificate of its registration No. 59450 in Poland of 1983. Furthermore, the trademark "Philips" is clearly an internationally well-known mark in the field of consumer electronics and household appliances. It enjoys therefore, even in countries where it may not be registered, the far-reaching protection of a well-known mark.

B. Respondent

The Respondent registered the domain names <philipsdealer.com> and <philipsdealer.net>, without making any use of it.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that (1) the domain names <philipsdealer.com> and <philipsdealer.net> are identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.

On April 18, 2001, the Complainantís Corporate Intellectual Property Unit wrote a letter to the Respondent, requesting that the Respondent discontinue use of the domain names <philipsdealer.com> and <philipsdealer.net> and proposed to discuss the matter in order to accomplish an early end to that use of "philips" (evidenced by Annex 5 to the Complaint). On May 7, 2001, a company "P.H.U. KOMAN S.C." replied for the Respondent, informing the Complainant that the domain names <philipsdealer.com> and <philipsdealer.net> could be the subject to trade (Annex 6 to the Complaint). On inquiry of the Complainant, what the intentions for the domain names were, the company explained on June 26, 2001, that it is a trading company, which is running a warehouse, and that it has started dealing with internet domain names, having registered a number of different domain names, including the domain names <philipsdealer.com> and <philipsdealer.net> (Annex 8 to the Complaint).

B. Respondent

The Respondent submits that the domain names were meant to be used exclusively for authorized Philips dealers, acting in Poland and other Eastern European countries, and underlines that it did not use those domain names, and that there were no demonstrable preparations, due to the fact that Philips contacted it and expressed its concern.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant:

1) The domain names are identical or confusingly similar to a trademark or service mark ("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) the domain names have been registered and are being used in bad faith.

1) Confusing Similarity with a Mark in which the Complainant has rights

The domain names <philipsdealer.com> and <philipsdealer.net> are not identical with the trademark "Philips" in which the Complainant has rights. However, the domain names integrate in their entirety the word mark PHILIPS, followed by the descriptive term "dealer" (the generic tld indicators".com" and ".net"cannot be taken into consideration when judging confusing similarity). Such combination of the trademark PHILIPS with the term "dealer" is under trademark law principles likely to be understood as being a variation of the trademark PHILIPS and, when used as a domain name, it is likely to be understood as providing a link to a website belonging to the Complainant or being sponsored by the Complainant or to a website of an authorized dealer of the Complainant. The domain names <philipsdealer.com> and <philipsdealer.net> are therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.

2) Legitimate Rights or Interests in respect of the Domain Names

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain names. Simple stocking of the domain names by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain names.

Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has never used the domain names in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use (it has even confirmed in its Response that no such preparations were made). No doubt, the Respondent is not known at all under the domain names <philipsdealer.com> and <philipsdealer.net>, since it never became active under these names. Finally, the Respondent itself has not submitted to make or to intend to make a legitimate noncommercial use of the domain names.

The Respondent submits to have registered the domain names <philipsdealer.com> and <philipsdealer.net> to be used exclusively for authorized Philips dealers. Such purpose does not justify its registration of the domain names <philipsdealer.com> and <philipsdealer.net>, since it is in the sole discretion of the Complainant which website it may intend to provide for its authorized dealers under its trademark(s) (of course every authorized dealer as well as the Respondent may register domain names and establish websites under their own names or other names as long as these do not infringe trademark rights of third persons).

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-ŗ-vis the Complainant in the domain names <philipsdealer.com> and <philipsdealer.net>.

3) Registration and Use in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b)(i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondentís out of pocket expenses in registering the domain name. The Panelist is satisfied that this test is fulfilled, since the Respondent has, in its letter dated June 26, 2001, informed the Complainant that it has started dealing with internet domain names, having registered a number of different domain names and that its activity in that field is the sales or leasing/renting. The Respondent added that the domain names <philipsdealer.com> and <philipsdealer.net> were two of a number of domain names that had been registered (for that purpose). The letter closed with the remark: "Waiting for your answer". A dealer exercises a business with the intent to make a profit. When the Respondent, in its letter dated June 26, 2001, states that it has started dealing with internet domain names, is therefore clear evidence that the Respondent has registered and is using the domain names <philipsdealer.com> and <philipsdealer.net> for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor for valuable consideration in excess of out-of-pocket costs directly related to the domain names. This is the more evident as the Respondent itself, in its letter dated June 26, 2001, states that its activity in the filed of dealing with domain names is "the sales or leasing/renting". Therefore it is not of importance for the Panelistís conclusions as to the intentions of the Respondent that, until the Complaint was submitted to the Center by the Complainant, it had not (yet) mentioned any concrete figure of a possible amount to be paid by the Complainant for the selling or renting of the domain names <philipsdealer.com> and <philipsdealer.net>.

The Respondent now, in its Response, submits that the domain names <philipsdealer.com> and <philipsdealer.net> were meant to be used exclusively for the authorized Philips dealers, acting in Poland and in other Eastern European countries. It is not clear, in which manner such use should have been organized, however, the Respondent refers to a possible "cooperation" with Philips for that purpose. Since it cannot be the task of a third person to organize without permission a website to be used by authorized dealers of a company, the submission of the Respondent can only be considered as a last attempt to still convince the Complainant that it should enter in some kind of agreement with the Respondent which would amount to a financial advantage for the Respondentís transfer of the domain names <philipsdealer.com> and <philipsdealer.net> to the Complainant. This assumption is evidenced by the fact that the Response concludes with the words: "In order to start possible further pleasant co-operation we suggest to resolve this dispute amicably".

The Complainant has chosen not to solve the dispute amicably, since it is not interested in a cooperation with the Respondent, rather in the Respondent discontinuing any future use of the domain names <philipsdealer.com> and <philipsdealer.net> by simply transferring them to the Complainant. Since the Respondent has not accepted to transfer the domain names without financial gain, the Panelist is satisfied that it has registered and is using the domain names <philipsdealer.com> and <philipsdealer.net> in bad faith.

 

7. Decision

The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.

Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain names <philipsdealer.com> and <philipsdealer.net> be transferred to the Complainant.

 


 

Dr. Gerd F. Kunze
Sole Panelist

Dated: December 13, 2001