WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. Relson Limited

Case No. DWS2001-0003

 

1. The Parties

1.1 The Complainant is a public limited company, Koninklijke Philips Electronics N.V. of Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands. It is incorporated in the Netherlands where it holds as its principal place of business.

1.2 The Respondent is, according to WHOIS database, Relson Limited, 26 Mill Bank, Wellington, Telford, Salop, United Kingdom

 

2. The Domain Name and Registrar

2.1 The Domain Name, the subject of this dispute, is < philips.ws >.

2.2 The Domain Name is registered with Global Domains International #30019, 701 Palomar Airport Rd, Suite 300, Carlsbad, CA 92009, U.S.A

 

3. Procedural History

3.1 The Complaint submitted by Koninklijke Philips Electronics N.V. was received by e-mail on September 4, 2001, and in hardcopy on September 10, 2001, by the WIPO Arbitration and Mediation Center.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD1,500.00 has been made by check, payable to World Intellectual Property Organization.

3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.

3.6 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent by the Complainant to the Respondent on September 4, 2001, and a copy of this Complaint was also sent to the concerned Registrar, Global Domains International #30019 on September 4, 2001.

3.7 On September 12, 2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted via email to Global Domains International #30019 a request for registrar verification in connection with this case and on August 16, 2001, the Center received a verification response confirming that the domain names are registered with Network Solutions, Inc. and that the Registrant for the domain names is the Respondent.

3.8 In accordance with Rules, Paragraph 4(c), the formal date of the commencement of this administrative proceeding was September 28, 2001.

3.9 On September 28, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the Center informing the Respondent that an Administrative Proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

3.10 On October 23, 2001, the Respondent was determined to be in default for failing to submit a Response.

3.11 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on November 5, 2001, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by November 19, 2001.

3.11 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

 

4. Factual Background

4.1 The Complainant in this administrative proceeding is a public limited company, Koninklijke Philips Electronics N.V. whose principal place of business is Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands. It is incorporated in The Netherlands.

4.2 The Respondent in this administrative proceeding is Relson Limited, an entity situated in the United Kingdom, with an address at 26 Mill Bank, Wellington, Telford, Salop.

4.3 The trademark "Philips" has been registered by the predecessors of Koninklijke Philips Electronics N.V. (KPENV), in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide, including Western Samoa.

4.4 According to www.website.ws printout made on August 16, 2001, the domain name <philips.ws> was created on March 10, 2000.

 

5. Partiesí Contentions

A. Complainant

5.1 The whole of the "Factual And Legal Grounds" component of the Complaint in this case is, verbatim, as follows:

This Complaint is based on the following grounds:

That the trademark Philips has been registered by the predecessors of Koninklijke Philips Electronics N.V. (KPENV), in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide. The trademark Philips is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, and from security systems to semiconductors. Philips brand name is the companyís most important asset as it has spent substantially on supporting its brand worldwide.

In accordance with Rules, para. 3(b)(ix), the following are our representation:-

1. The domain names in question are identical and/or confusingly similar to the Philips trademark registered by the Complainant in which it has rights to.

2. The Respondent has no rights or legitimate interests to the domain names as it has been registered primarily for the following reasons:-

(a) For the purpose that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, in the Western Samoa.

(b) For the purpose speculating on the profitability of the domain names as the domain names were not used and the Respondent was not commonly known by the said domain name [Space Imaging LLC v. Stephen J. Brownell, eResolution Case No. AF 0298a-0298d];

(c) For the purpose that the Complainant has not licensed or otherwise permitted the Respondent to register the domain name incorporating the word Philips within the domain name [Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347]; and

(d) For the purpose of disrupting the business of the Complainant. Before any notice was communicated to the Respondent of the dispute, there was no evidence of the Respondentís use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In addition, no attempt was made after the Respondent received a letter from the Complainant explaining its concern of the registration of the domain name.

3. As evident from the above reasons, the registration of the domain name has been clearly registered in bad faith for the following reasons:-

(a) the registration was 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.

(b) the registration of the domain name in question causes unfairness and is certainly detrimental to the business of the Complainant as the mark is influential in the field of business it was registered for in the Western Samoa. It deprives the general public, particularly in the Western Samoa access to the Complainant and vice versa.

(c) it could easily be inferred or concluded that since the domain name does not resolve to an active website, that the Respondent had the intention of transferring the domain name for valuable consideration, perhaps in the future [Space Imaging LLC v. Stephen J. Brownell eResolution Case No. AF 0298a-0298d].

(d) the Respondent has not responded or leveled a challenge to the content/averments in the Complainantís cease/desist letter relating to the domain name [Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003; Pharmacia & Upjohn AB v. Dario H. Romero WIPO Case No. D2000-1273]. In addition, the Complainant has attempted contacting the Respondent via the Contact Domain Owner service provided by the Registrar on its website but did not receive a response. The Complainant had requested the assistance of external lawyers to attempt to get more information on the Respondentís contact details. Thereafter, the Complainant attempted to contact the Respondent via fax and telephone as well as via post, having obtained the information from the UK Companies House.

(e) 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, particularly in the Western Samoa AltaVista Company v. West Coast Entertainment, Inc [NAF Case No. FA0007000095265];

(f) the registration took place with an intention to sell or transfer to the Complainant for profits.

(g) the Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name.

B. Respondent

5.2 The Respondent did not reply to the Complaint or otherwise participate in the proceedings.

C. No Other Submissions

5.3 The Panel has not received any requests from Complainant or Respondent regarding further submissions beyond the Complaint, and the Panel has not found it necessary to request any further information from the Parties. (Taking note of the Respondentís default in responding to the Complaint).

 

6. Discussion and Findings

6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and Global Domains International #30019 which incorporates, by reference, the Policy in effect at the time of the dispute. The Policy requires that Domain Name Registrants such as Respondent submit to a mandatory Administrative Proceeding regarding third-party allegations of abusive Domain Name registration (Policy, paragraph 4(a)).

6.2 Such Administrative Proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive Domain Name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).

6.3 The Policy, and the Rules, establish procedures intended to assure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

6.4 The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

6.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:

"A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

6.6 In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;

(iii) that the Domain Name has been registered and is being used in bad faith.

6.7 Paragraph 4(a) of the Policy advises all registrants for Domain Names that in accordance with the terms of their Registration Agreement that they will be required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider (in this case WIPO), in compliance with the Rules of Procedure, that "the Complainant must prove that each of these three elements are present." Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed. For instance, in 4(a)(i) the Complainant must prove that (1) the Complainant has rights in a trademark or service mark and (2) the Domain Name being challenged is identical or confusingly similar to that mark. Facts are proven through evidence that is accepted by the Administrative Panel appointed. For evidence to serve this purpose, it should be shown to be both credible and material. The word "material" means that it is rationally probative of material facts in issue. Simply put, could a reasonable person use this evidence to support the material fact which is sought to be proved? In each case, the parties are, in turn, given an opportunity to assert that such-and-such evidence proves a material fact. Then, the material facts so proven, in turn, are used to prove each of the three elements required. To summarize, each of the three elements depend on proof of their constituent material facts. Proof of each of these facts is dependant on evidence which is accepted by the tribunal adjudicating the dispute. Mere "assertions" are nothing more than argument and must in each case be based on facts proved through evidence.

6.8 The appropriate standard for fact-finding in these cases is the civil standard of a preponderance of the evidence. Under the preponderance of the evidence standard, a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. (See: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847) Under the "preponderance of the evidence" standard a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. (See: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847)

6.9 Numerous Panels have decried Complaints where "[t]he Complainant makes the usual (boilerplate) bare assertions that the Respondentís Domain Name is identical or confusingly similar to the Complainantís mark, that the Respondent has no legitimate interest or rights in the Domain Names, and that the Respondent registered the Domain Name and is using it in bad faith [and] provides no specific reasons for these bare assertions." (See: Jones Apparel Group, Inc. v. jonesapparelgroup.com, WIPO Case No. D2001-0719.) The Panel in that case went on to say: "However difficult [it] might have been, it was for the Complainant to plead this issue and to support it with some argument and evidence. It has chosen not to do this, and it is not this Panelís role to perfect a poor pleading." This Panel agrees with that comment and also that Panels do not need to address assertions which are not raised by Complainants. (See: Chambre de Commerce et díIndustrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348) See also, with regard to the danger of bare assertions by Complainants Club Monaco Corporation v. C. Gindi, WIPO Case No. D2000-0936; Tyco International Services AG and Tyco International (US) Inc. v. Paul Quinn, WIPO Case No. D2000-1740, or Respondents see: Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO Case No. D2000-0537; Sloan Capital Companies, Stuart M. Sloan v. Sloan E-mail Services, WIPO Case No. D2001-0138; and Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, WIPO Case No. D2000-1673.

6.10 In this case, the Respondent has failed to file a Response. This, admittedly, may present some problems for the Complainant, particularly in regard to whether the Respondent has any rights or legitimate interests in respect of the Domain Name. An appropriate approach to this situation has been advanced in Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No.D2000-1547, where the Panel states at page 7:

"The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to Ďdecide the dispute based upon the complaintí. Under Paragraph 14(a) of the Rules in the event of such a ĎDefaultí the Panel is still required Ďto proceed to a decision on the complaintí, whilst under Paragraph 14(b) it Ďshall draw such inferences therefrom as it considers appropriate.í It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits."

That Panel went on to say further in this regard at page 9:

"The Panelist notes that the Respondent did not expressly challenge any of the assertions in the complaint. However, this cannot simply be taken as an admission of all the claims in the Complaint. The Respondent might conceivably have taken the view that the Complainant had failed to make a case meriting a response. The Panelist may be entitled to draw reasonable inferences from the Respondent's lack of response but, in this Panelist's view, it is not justifiable to go so far as to acknowledge a claim to unregistered rights which is inadequately substantiated. The Policy requires a Complainant to prove that it has relevant rights, not merely assert that such rights exist."

See also County Bookshops Limited v. Guy Loveday, WIPO Case No. D2000-0655.

Another Panel has said much the same thing, but put it in a slightly different way, which is that it ought not to draw inferences from a default other than those that have been established or can fairly be inferred from the factual assertions that are made and supported by evidence submitted by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions of fact. (Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697).

6.11 Nothing which has been said above ought to be taken as a condemnation of what many previous Administrative Panels have accepted as evidence. The ICANN/UDRP and Rules provide for a more or less summary process which in most cases will be both inexpensive and speedy. Therefore, sworn witness statements are not required (although this Panelist has such affidavits filed), nor is it expected that technicalities such as the hearsay rule will be rigidly enforced. This said, the source, mode and timing of statements based on information and belief ought to be identified. As one Panel has said, "acceptable evidence of the use of a trademark by the Complainant would be copies of invoices, advertising and brochures". See Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO Case No. D2000-0537. A Panel can use the Internet itself as a common source for evidence which is open for everybody, particularly the publicly accessible Internet web site associated with the disputed Domain Names: Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697; Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617. The same may be done for other publicly available information: Tough Traveler Ltd. v. Kelty Pack Inc. Mike Scherer, and Inkling Pen Co., WIPO Case No. D2000-0783 (news articles, advertisements). Panels have used earlier Panel findings of a trademark being well known and therefore reference to these can be helpful: AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060. These are not exhaustive, merely illustrative. Also, it should go without saying that the admissibility and weight of evidence in the form demonstrated by these examples, as with any evidence, will depend on the circumstances of each case.

6.12 UDRP 4(a)(i) The Domain Name registered by Respondent is Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights

Panels have held that more than bare assertions are needed with regard to this element. (See Club Monaco Corporation v. C. Gindi, WIPO Case No. D2000-0936; Tyco International Services AG and Tyco International (US) Inc. v. Paul Quinn, WIPO Case No. D2000-1740) However, it has been said that where, on its face, the Domain Name is clearly identical that this will be sufficient proof. (See: COMSAT Corporation v. TELE Satellite WIPO Case No. DTV2001-0011) In support of the essential contention that the Complainant has rights in a trademark or service mark, it is normally the case that copies of the registrations are provided, or at least registration numbers given. That was not done in this case. All that were provided were copies of trademark renewals of the Western Samoa registration. While this is a country-coded domain, the primary place of business of both parties is elsewhere than Western Samoa, as is the registrar. Furthermore, the web-site in question will be accessible throughout the Internet. In light of the decision reached in regard to the two further elements that must be proved under the Policy, this Panel sees no need to make a finding on this first element, but for the purposes of this case will assume it to have been proved.

6.13 UDRP 4(a)(ii) Respondent has No Rights or Legitimate Interests in Respect of the Domain Name

Para. 4(c) of the Policy, with the heading "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint" says:

While this

"When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) Ö"

appears to contradict the earlier suggestion that Complainant bears the onus throughout the proceedings, that is not quite so. Previous Panels have differed in their approach to this issue. These differences are illuminated in Do The Hustle, L.L.C. v. Tropic Web, WIPO Case No. D2000-0624. It indicates that some Panels have said the Respondent need do nothing in the absence of affirmative proof by the Complainant that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue. (See VeriSign, Inc. v. VeneSign, C.A., WIPO Case No. D2000-0303; Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, eResolution Case No. AF-0149a; AF-0149b; Beijing Pernod Ricard Winery Co. Ltd. v. Capital Enterprises Group, Inc., eResolution Case No. AF-0177; Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000-0067; Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204) Other Panels have dealt with this problem by reducing the burden of proof upon the Complainant to one which is "relatively light". (See: Educational Testing Service v. Netkorea Co., WIPO Case No. D2000-0087; Europay International S.A. v. Eurocard.com, Inc., EuroCard.org, and Chad Folkening, WIPO Case No. D2000-0173). Yet other Panels have suggested that we should assess the failure of the Respondent to provide any evidence that comes within the wording of para.4(c) when determining whether a Complainant meets his burden of proof under para. 4(a)(ii) (See: Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150). The greatest number of Panel decisions have held that the interaction between para.4(a)(ii) and 4(c) is such that the obligation is on the Complainant to make out a prima facie case and that having done so, it is for the Respondent to demonstrate the contrary (See: Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Newman/Haas Racing v. Virtual Agents, Inc. WIPO Case No. D2000-1688) That Panel went so far as to say that failure of a Respondent to come forward with such evidence is tantamount to admitting the truth of Complainantís assertions in this regard as this information is uniquely within the knowledge and control of the Respondent. As for whether it is sufficient for the Complainant to make a prima facie case, it has been held that where the Domain Name is Complainantís well-known name and there is evidence the Complainant had not granted the Respondent a licence to use the Complainantís name, this will suffice. (See: Newman/Haas Racing v. Virtual Agents, Inc. WIPO Case No. D2000-1688).

Some of the Complainantís assertions in this case are troubling. To begin with, it is alleged that the "Respondent has no rights or legitimate interests to the domain names [sic] as it has been registered primarily for the following reasons". This is difficult to understand in that the word "primarily" could mean in the context it is used, first in order of reasons. But there are four reasons given, and none of them relate to those things which the Respondent is expected to prove, but rather to factors more in the realm of the bad faith element of the Policy. Therefore, it would appear that there are not even assertions unmet by the failure of the Respondent to file a Response.

This Panel therefore finds that the second essential element required under UDRP 4(a)(ii) has not been proved. It is fortified in this decision by reference to the decision of another Panel in Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231, where there was more evidence provided in respect of this element than in this case. See also Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796.

6.14 UDRP 4(a)(iii) The domain name has been registered and is being used in bad faith.

It is also necessary that the Complainant go beyond mere assertions in proving the essential element of bad faith. For instance, in QAS Systems Limited v. Hopewiser Limited, WIPO Case No. D2001-0273, the Panel found that Complainant failed to prove bad faith when it failed to advance any evidence to show that the Respondent might have had the Complainant in mind when registering the Domain Name, saying the Panel should have been provided with relevant information to support assertions about material facts.

The apparent basis upon which the Complainant appears to allege bad faith relates to the reasons it has given for the earlier elements covered including Respondent having no rights or legitimate interests in the Domain Name which this Panel has found not to have been shown to the requisite standard and burden of proof. Nevertheless, this Panel will deal with each of the specific allegations.

(a) The registration was 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.

In AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558, it was held that the mere allegation that Respondent failed to return phone calls or provide information to the Complainant will not demonstrate bad faith as there is no obligation that a party respond to letters or otherwise provide information to a challenger in advance of a lawsuit. Indeed, the Complainantís complaint about the Respondent not having communicated to the Complainant any plan for a bona fide use of his Domain Name can be read as an assertion that the Respondent had a right subject to communicating any plan for a bona fide use of his Domain Name.

(b) The registration of the domain name in question causes unfairness and is certainly detrimental to the business of the Complainant as the mark is influential in the field of business it was registered for in the Western Samoa. It deprives the general public, particularly in the Western Samoa access to the Complainant and vice versa.

It must be noted that there is no explanation as to what it is that is unfair, beyond the mere assertion. Further, there is no evidence whatsoever that the Complainant has been deprived of access to the general public in Western Samoa "and vice versa", as a result of any act of the Respondent.

(c) It could easily be inferred or concluded that since the domain name does not resolve to an active website, that the Respondent had the intention of transferring the domain name for valuable consideration, perhaps in the future [Space Imaging LLC v. Stephen J. Brownell, eResolution Case No. AF 0298a-0298d].

This is the same sort of assertion which the Panel in Strongarm Designs v. Arisu Tech WIPO Case No. D2001-0776 felt to be inappropriate. The Space Imaging case, relied upon in the Complaint, is distinguishable as in that case the simultaneous registration by the Respondent of four "highly related" Domain Names were found to have lent credence to the inference.

(d) The Respondent has not responded or leveled a challenge to the content/averments in the Complainantís cease/desist letter relating to the domain name [Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273]. In addition, the Complainant has attempted contacting the Respondent via the Contact Domain Owner service provided by the Registrar on its website but did not receive a response. The Complainant had requested the assistance of external lawyers to attempt to get more information on the Respondentís contact details. Thereafter, the Complainant attempted to contact the Respondent via fax and telephone as well as via post, having obtained the information from the UK Companiesí House.

It has been held that such failure to expressly challenge any of the assertions in the Complaint cannot be taken as an admission of all the claims in the Complaint as the Respondent might conceivably have taken the view that the Complainant had failed to make a case meriting a response. The Policy requires a Complainant to prove that it has relevant rights, not merely assert that such rights exist. (See: Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No.D2000-1547; County Bookshops Limited v. Guy Loveday, WIPO Case No. D2000-0655). Another Panel has held that it ought not to draw any inferences from a default other than those that have been established or can fairly be inferred from the facts presented by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions of evidence. (See: Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697).

With regard to the assertions concerning attempts to contact the Respondent and not receiving a response, the Complainant does not give particulars other than it "had requested the assistance of external lawyers to attempt to get more information on the Respondentís contact details." The Panel is not told who associated with the Complainant attempted to do so, nor how it was done. Nor do we know what information was received from the U.K. companyís address. Further, the cease/desist letter which was annexed to the Complaint indicates that it was not sent to the Respondent, but rather to an entity known as Relson Internet Ltd. Why this was done is not explained.

(e) 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, particularly in the Western Samoa AltaVista Company v. West Coast Entertainment, Inc., NAF Case No. FA0007000095265]

Here, we do not even have a bare assertion, but only a "perhaps".

(f) The registration took place with an intention to sell or transfer to the Complainant for profits.

Again, there is no supporting evidence, much less facts proved to support this assertion. Indeed, the evidence is that when the Respondent was contacted (if it was) there was no attempt to sell the name which would have been expected if this had been its intention. It is a given that the Policy requires proof both of bad faith registration and bad faith use, although in some cases bad faith use has been found to follow bad faith registration. (See William Hill Organization Ltd. v. Lisa Jane Statton, WIPO Case No. D2000-0827) Others have held that where the Complainant has introduced no evidence that Respondent has used the Domain Name at all, much less in bad faith, this is not good enough. (See Loblaws, Inc. v. Presidentchoice, Inc/Presidentchoice.com, eResolution Case No. AF-0170aóAF-0170c) There should be some other evidence such as the registration of names in bulk, offers to sell, the Respondent conducting the same business as the Complainant, etc.

It has been held that a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the Domain Name. (See Becton, Dickenson and Company v. Garry Harper, WIPO Case No. D2001-1058) However, this might prove bad faith registration, but not necessarily use.

(g) The Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name.

Again, we are left with a bare assertion.

The appropriate way to deal with whether bad faith use follows from bad faith registration has been set out by the Panelist in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, para. 7.8 Ė 7.11 inclusive. As he says, "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." He then goes on to explain that this understanding of para.4(a)(iii) is supported by the actual provisions of the Policy where only one of those circumstances (para. 4(b)(iv)) by necessity, involves a positive action post-registration undertaken in relation to the Domain Name (using the name to attract custom to a web site or other online locations).

"The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark ownerís use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii))."

In conclusion on this issue the Telstra Panel asked the question "what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?" He goes on to say:

"This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondentís behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondentís passive holding amounts to acting in bad faith."

The Complainant in this case has fallen very far short of this mark in the opinion of this Administrative Panel for the reasons given above. Again, this Panel is fortified in this decision by the rulings of previous Panels in Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231, and in Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796.

 

7. Decision

7.1 This Administrative Panel accordingly directs that the registration of the Domain Name <philips.ws> not be transferred to the Complainant.

 


 

Cecil O.D. Branson
Sole Panelist

Dated: November 15, 2001