WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Lewis & Clark, Inc.
Case No. D2001-1344
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., Groenewoudsweg 1, 5621 BA Eindhoven, The Netherlands, represented by Mr. J.J.E.C.G. Vandekerckhove, Postbus 220, 5600 AE, Eindhoven, The Netherlands ("Complainant").
The Respondent is Lewis & Clark, Inc., an entity situated in USA with the address 18 Clinton Drive, #5 Hollis, NH 03049, USA ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name <usedphilips.com> ("the Domain Name").
The Registrar is Network Solutions, Inc., Herndon, VA, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in electronic form on November 12, 2001, and in hard copy on November 15, 2001.
The Center verified that the Complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On November 16, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. November 19, 2001, the Registrar transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Name, (2) the Registrant is Lewis & Clark, Inc., (3) Lewis & Clark, Inc. is the Administrative and Billing Contact, and WorldNIC Name Host is the Technical Contact, (4) Network Solutionís 5 Service Agreement is in effect, (5) the language of the Service Agreement is English, and (6) the Domain Name is in "Active" status.
On November 21, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail, facsimile and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by December 11, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, and (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on December 14, 2001.
On December 21, 2001, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on January 4, 2002, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was January 18, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant states that the trademark PHILIPS has been registered, by its predecessors, in the Netherlands since 1891 and it is today registered in numerous jurisdictions worldwide (countries listed in Annex 3 of the Complaint). The trademark is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, from security systems to semiconductors.
The Respondent registered the Domain Name on May 12, 2000 (Annex 1 of the Complaint), and is also the owner of a number of other trademark related domain names (Annex 5 of the Complaint), however no specific information is provided about the Respondentís business activities.
5. Partiesí Contentions
The PHILIPS brand name is the Complainantís most important asset as the Complainant has spent substantially on supporting the same worldwide.
The Complainant states that:
- the Domain Name is confusingly similar to the trademark PHILIPS;
- the Respondent has no rights or legitimate interests to the Domain Name;
- the Domain Name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name;
- the Domain Name was registered for the purpose of disrupting the business of the Complainant, and that there is no evidence of the Respondentís use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
- the Domain Name was registered for the purpose of "perhaps" speculating on the profitability of the same;
- he has not licensed or otherwise permitted the Respondent to register the domain Name.
The Complainant argues that the registration of the Domain Name causes unfairness and is detrimental to the business of the Complainant, and that since the Domain Name does not resolve to an active website it can be concluded that the Respondent "may have had the intention" of transferring the same for valuable consideration. Complainant further states that the Respondent registered the Domain Name to "perhaps" intentionally create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainantís mark.
According to the Complainant, the Respondent is engaged in a pattern of registering otherís trademarks as domain names (Annex 5 of the Complaint, showing a list of other domain names registered by the Respondent and containing a number of other trademarks).
On November 6, 2000, the Complainant sent a letter (Annex 4 of the Complaint) to the Respondent, explaining its concern of the registration of the Domain Name. No reply was received.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
1) Identical or Confusing Similarity
The Complainant has claimed to have trademark registrations for PHILIPS since 1891 and in a great number of countries and territories. The Panel notes that Complainant has failed to provide evidence of any kind (translated copies of Certificates of Registrations, filing and registration dates, registration numbers, etc.) related to such registrations. A mere list of country names, with no further references, cannot be regarded as evidence of trademark registrations.
However, the Panel concludes that PHILIPS is indeed a well-known trademark and finds no reason to doubt that the Complainant has at least established common law rights to PHILIPS by extensive and long-standing use.
The relevant part of the Domain Name is <usedphilips>.
The Panel concludes that the Domain Name consists of the word "used", followed by the trademark PHILIPS. "Used" is a generic addition to the Domain Name, with no distinctiveness (see Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102, also cited by the Complainant). "Usedphilips" is, for example, unlikely to be intended for a person with the name Philips. The term "used" refers to the trademark PHILIPS in a way indicating a second-hand market for products with the said trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainantís trademark PHILIPS.
2) No Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainantís products or services and has no other permission to apply for any domain name incorporating the trademark PHILIPS.
By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
In addition, the fact that the Domain Name does not resolve to any active webpage indicates that, before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Name.
3) Registered and Used in Bad Faith
To fulfill the third requirement, the complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the Domain Name.
There is no clear evidence that the primary purpose of the registration of the Domain Name was to sell the same to the Complainant. The only (proved) correspondence between the parties is the letter of January 15, 2001, sent from the Complainant to the Respondent asking for a discussion to accomplish "an early end to the present manner of use of Ďphilipsí". No monetary claims or suggestions have been made by any of the parties.
However, even the lack of active use of the Domain Name and the lack of replies from the Respondent may indicate the intention to transfer the Domain Name for a valuable consideration, especially considering the fact that the Respondent has registered many other Domain Names consisting of other trademarks. It may therefore be presumed that the Domain Name was registered for the only purpose of selling the same to the Complainant.
(ii) Circumstances indicating that the Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
The PHILIPS trademark is well-known throughout the world and accordingly so also in the US, the residence of the Respondent.
As shown by Annex 5 of the Complaint, the Respondent is engaged in a pattern of registering a great number of domain names including other trademarks, such as <usedsanyo.com>, <usedfuji.com>, <usedhewlettpackard.com> and <usedpanasonic.com>, as well as domain names combining the word "used" with another generic term in the electronic field. This pattern indicates that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the trademark PHILIPS in a domain name used, for example, for a website related to a second-hand service/market of the Complainantís products.
(iii) Circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
There is no evidence that the Respondent is a competitor of the Complainant.
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the said website / location or of a product or service on that website / location.
The disputed Domain Name does not resolve to an active website and, accordingly, it cannot be said to be actively used to attract Internet users to the Respondentís website and even less to be used such way for commercial gain.
Other indications of Respondentís bad faith:
As established in the Telstra Corporation Limited v. Nuclear Marshmallows case (WIPO Case No. D2000-0003), the requirement of the Policy of a domain name "being used in bad faith" is not limited to positive action. There are some circumstances of this case indicating that the Domain Name may well be considered to be used in bad faith, if:
- The Respondent has provided no evidence of any legitimate commercial, non commercial or fair use of the Domain Name; or
- The Respondent has not replied to the letter from the Complainant, and no Response whatsoever has been filed as a reaction to the Complaint, therewith avoiding to present any preparations or even future plans for fair use; or
- The Respondent is the owner of a number of domain names, consisting of othersí well-known trademarks, all in the same field of business as of the Complainant. The Panel concludes that the Respondent has some knowledge about the business of the Complainant and the other trademark owners and that the disputed Domain Name was registered with the Complainant in mind.
Given the above circumstances, the Panel concludes that the Respondent registered the Domain Name in bad faith and that the further behavior of the Respondent may well be considered as equal to use in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
The Panel concludes (a) that the Domain Name <usedphilips.com> is confusingly similar to the Complainantís trademark PHILIPS, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <usedphilips.com> be transferred to the Complainant Koninklijke Philips Electronics N.V.
P-E H Petter Rindforth
Dated: January 15, 2001