WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics v. Arne and Adri Registration Service
Case No. D2001-1179
1. The Parties
The Complainant in this Administrative Proceeding is Koninklijke Philips Electronics N.V., a company located at Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands, hereinafter the "Complainant", and represented by Mr. J. Vandekerckhove with offices at Postbus 220, 5600 AE, Eindhoven, The Netherlands.
The Respondent is Arne and Adri Registration Service, with address at 525 Junipero Serra Blvd., San Francisco, CA 94127, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is <koninklijkephilips.com>, hereinafter the "Domain Name". The registrar is Register.com, Inc and the Domain Name was registered on October 12, 1999.
3. Procedural History
The WIPO Arbitration and Mediation Center, hereinafter "the Center", received the Complainant's Complaint on September 26, 2001, by electronic version and by hard copy with the exhibits on October 3, 2001.
On October 2, 2001, the Center issued to the parties an Acknowledgement of Receipt of Complaint.
On October 3, 2001, the Center transmitted via email to Register.com a request for Registrar Verification relating to this case. On the same day, Register.com transmitted via email to the Center the Verification Response, confirming that a copy of the Complaint has been sent to Register.com, that the Domain Name is registered with Register.com and that the Respondent is the current Registrant of the Domain Name. It provided the Center with the information about the Domain Name contained in its Whois database, confirmed that the Uniform Domain Name Dispute Resolution Policy is applicable and that the Domain Name registration status is "Active".
On October 5, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution ("the Supplemental Rules").
On October 5, 2001, the Center transmitted to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding with a copy of the Complaint via post/courier, facsimile and email to the Registrant, Administrative, Technical and Zone contacts and to the postmaster with an electronic copy to the Complainant.
The Center advised that the Response was due by October 25, 2001.
On October 24, 2001, the Center received the Respondent's Response by electronic version and by hardcopy on October 29, 2001.
On October 24, 2001, the Center issued to the email address of both parties the Acknowledgement of Receipt of Response and the Response.
On October 29, 2001, in view of the Complainant’s designation of a Single Panelist, the Center invited M. Geert Glas to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received, on October 30, 2001, M. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on October 31, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which M. Geert Glas was formally appointed as the Sole Panelist. On the same day, the Center transmitted to the Sole Panelist the Case File.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complainant is known world-wide as a manufacturer and distributor of electronic and household appliances.
It can be said that the Complainant is commonly known under the denomination "philips" and that through both the quality of the goods it produces and distributes worldwide under the sign "philips" and the massive investment it constantly invests in advertising, the word "philips" has become widely known.
It appears from the Registrar's Verification Response that the Respondent is the Registrant of the Domain Name and that it registered the Domain Name on October 12, 1999.
On September 3, 2001, the Respondent sent the Complainant a fax in which it expressly stated "We have a name of particular interest to Philips, which we are putting up for sale. The name is koninklijkephilips.com. We are soliciting an expression of your company's interest in purchasing this name and, if possible, would appreciate a response by September 30, 2001."
On September 21, 2001, the Complainant received an email from the Respondent in which the Respondent stated that "We are the current registered owners of koninklijkephilips.com We place the value of this website domain name at a sum of $20,000. We are prepared to transfer ownership for that sum."
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It affirms that the Domain Name has been registered for the purpose of selling or otherwise transferring the Domain Name to the Complainant and that there is no evidence of the Respondent's use of, or preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. The Complainant further states that the Respondent is not commonly known by the name "koninklijkephilips".
The Complainant contends that the Respondent has registered the Domain Name in bad faith. He contends that the Domain Name registration is detrimental to the Complainant's business, that the Respondent has registered the Domain Name for the exclusive purpose of selling, renting or transferring the registration to the Complainant and that the Respondent had no demonstrable plan to use the Domain Name for a bona fide purpose prior to registration of the Domain Name.
Respondent states that it has merely solicited an expression by the Complainant of its interest in purchasing the Domain Name. It has contacted the Complainant and offered to sell the Domain Name for a potential use in marketing commerce and consumer service. It is the Complainant's negligence that has left its mark unprotected and the Respondent wanted to organize the sale in an amicable manner.
The Respondent states that the Complainant cannot demonstrate that the registration of the Domain Name causes unfairness nor is detrimental to its business, since it has never been used by the Respondent and was offered for use to the Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
a. Identity or Confusing Similarity
The Complainant owns a significant number of trademarks consisting of, or comprising the word PHILIPS.
In the Dutch language the word "KONINKLIJKE" means "royal".
In the Netherlands where the headquarters of the Complainant are located, companies can be granted the right to add the prefix "koninklijke" or "royal" to their name after they have been in business for a certain period of time (e.g. KLM).
The Complainant was granted this right and as a consequence has added "koninklijke" or "royal" to its corporate name.
Consequently, the Domain Name can be said to be confusingly similar with the invoked trademarks of the Complainant.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark.
There is no indication that the Respondent has registered or used the name "philips" as a trademark, or has ever been known by this name.
Moreover, the Respondent confirms that it has registered the Domain Name for the purpose of selling it to the Complainant and therefore cannot be considered as making a legitimate non commercial or fair use of the Domain Name without intent of commercial gain.
Therefore the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
c. Registration and Use in Bad Faith
The Respondent declares in its Response that its intention was to sell the Domain Name to the Complainant.
This intention appears also clearly from the exhibits provided by the Complainant. Indeed the Respondent's letter of September 21, 2001, to the Complainant contains the following offer: "[W]e are investors in a number of website domain names for potential use in marketing commerce and consumer services.
Koninklijke Philips Electronics, with its global business and marketing reach, has website needs for marketing, corporate information, investor relations, and investor information, etc …
We are the current registered owners of koninklijkephilips.com.
We place the value of this website domain name at a sum of $20,000.
We are prepared to transfer ownership for that sum."
The Respondent clearly knew the Complainant and its brands when registering the Domain Name. Indeed, it says in the Response (page 3) that "The respondent is a native of the Netherlands, values the Philips name, and indeed has Philips products in its home".
The Domain Name may therefore be considered as being registered in bad faith.
The documented attempts by the Respondent to sell the Domain Name to the Complainant for 20,000 $US constitutes further proof of the bad faith use which the Respondent made of this Domain Name.
The Respondent's continued use of the domain name whilst aware of its infringing and confusing nature constitutes bad faith.
Therefore, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name is confusingly similar to the trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith.
Therefore, the Panel finds that the three cumulative requirements of paragraph 4(a) of the Policy are met.
Accordingly, the Administrative Panel orders that the Domain Name <koninklijkephilips.com> be transferred to the Complainant.
Date: November 27, 2001