WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. Sergey Nikolaenko

Case No. D2010-1494

1. The Parties

The Complainant is Koninklijke Philips Electronics N.V. of Eindhoven, Netherlands, represented by in-house counsel.

The Respondent is Sergey Nikolaenko of Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <philipsua.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 7, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2010.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 15, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the proprietor of the following trademark registrations:

- International Trademark Registration No. 991346 PHILIPS in classes 3, 5, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 36, 37, 38, 41, 42, 44 and 45, registered on June 13, 2008, including for the territory of Ukraine,

- International Trademark Registration No. 579620 PHILIPS in classes 7, 8, 9, 10, 11, 35, 36, 37, 38, 39, 40, 41 and 42, registered on November 21, 1991, including for the territory of Ukraine,

- International Trademark Registration No. 469042 word mark PHILIPS in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19, 20, 21, 28 and 34, registered on May 17, 1982, including for the territory of Ukraine,

- Ukrainian trademark registration No. 2632 - word mark PHILIPS in classes 7, 8, 9, 10 and 11, registered on November 30, 1993.

The Domain Name was registered on March 24, 2010.

5. Parties’ Contentions

A. Complainant

Complainant has described itself as a manufacturer of a variety of goods, from consumer electronic to domestic appliances, and from security systems to semi-conductors, offering consumers around the world products in the areas of Healthcare, Lighting, Consumer Lifestyle and Technology.

The trademark PHILIPS was registered by the predecessors of Koninklijke Philips Electronics NV in the Netherlands. Complainant has been using the trademark PHILIPS for its business activities since 1891. The said trademark is registered worldwide with registrars of 245 other countries including the United States of America, India and the Ukraine.

In 2009, Complainant is one of the largest global diversified industrial companies with sales of Euros 23,189 million and with 116,000 employees. Complainant is globally present with manufacturing sites in 28 countries and sales outlets in 150 countries. Complainant’s Research and Development expenditure was Euros 1,631 million, the marketing expenses of Euros 804 million.

According to Complainant, the PHILIPS trademark is its famous master brand. This trademark has been used extensively and it is well known by consumers worldwide and is the company name of Complainant. The mark has acquired and enjoys substantial goodwill and valuable reputation. The PHILIPS trademark is one of the most widely recognized brand identities in the world. According to the Ranking of Interbrand of the Best Global Brands (Ranking 2009) the PHILIPS brand is No. 42.

Complainant operates its primary website at “www.philips.com” and promoties its products in numerous of countries via country specific websites. Complainant’s global website has information concerning its many products, as well as information on where to buy PHILIPS’ products as information about the company and their strategy and business policy. According to Byte Level Research, the “www.philips.com” website is the fourth most global website for 2010.

Complainant asserts having a legitimate and substantial interest in respect of the PHILIPS trademark and the use of the PHILIPS designation as a domain name. In its view, use by third parties of the PHILIPS designation as a domain name not only infringes Complainant’s trademark rights in this designation but also seriously interferes with Complainant’s legitimate interest and will only lead to confusion on the part of the public when trying to obtain information on Complainant’s products and services.

Complainant submits that the Domain Name is identical or confusingly similar to Complainant’s PHILIPS trademark. The Domain Name is a simple junction of Complainant’s PHILIPS trademark and the country code top level domain name for Ukraine “.ua”. The suffix does not detract from the overall impression of the dominant part of the Domain Name.

According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name.

The PHILIPS designation is neither a generic term nor a commonly used term in any language or in the Ukraine. Complainant has neither licensed not otherwise permitted Respondent to use the PHILIPS designation or to apply for any domain name incorporating this designation. Respondent has not acquired any trademark rights in the “PHILIPSUA” designation, and is not commonly known by the Domain Name.

In Complainant’s submission, the Domain Name has been registered and has been used in bad faith.

The registration of the Domain Name was made on March 24, 2010, long after Complainant obtained trademark rights in the PHILIPS designation and after Complainant first commenced using it. The left corner of this website at the Domain Name displays the Domain Name in two colors. The word “PHILIPS” is displayed with the same specific typography and color blue as Complainant’s trademark. The element “UA”, identical to the Ukrainian country code top level domain is in dark red, and the extension “.com” is again in blue. By dividing the domain name in these specific parts (in the same typography and color as Complainant’s trademark), Respondent uses the Domain Name to falsely suggest that he is the trademark owner, or that the website is an official site of Complainant. The presentation of the logo and products on Respondent’s website is likely to mislead Internet users into believing the site is operated or endorsed by or affiliated with Complainant. In particular, the dominant presentation of the trademark in specific typography in the specific color blue, without any statement as to the true ownership of the website or any disclaimer of association with Complainant, creates a strong impression that the site is an official site of Complainant. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.

As contended by Complainant, Respondent is using the Domain Name in order to sell also the products of Complainant’s competitors, such as washing machines of AEG, Bauknecht, Bosch and Siemens.

With these arguments, Complainant submits that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

Complainant requests the transfer of the Domain Name.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Names:

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

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

(iii) That Respondent has registered and is using the Domain Name in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.

In this administrative proceeding, Respondent has chosen not to submit any Response. Therefore, the Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence and has thus established its rights in the PHILIPS trademarks, registered for the territories of various jurisdictions around the world, including the Ukraine, where Respondent is situated.

It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “philipsua” element. Its first part “philips” - is identical to Complainant’s famous PHILIPS trademarks, and the second part “ua” is identical to the country code top level domain for Ukraine, and not distinctive in any other way. In the Panel’s view, the combination is dominated by the “philips” element, which makes it confusingly similar to Complainant’s trademarks. This similarity is not diminished by the inclusion of the “ua” element, which only suggests a certain link to Ukraine.

For these reasons, the Panel finds that the Domain Names are confusingly similar to trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard. Thus, Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).

It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.

Respondent has not filed any Response and has submitted no evidence or arguments as to any rights or legitimate interests in the Domain Name. If Respondent had any justification for registering or using this domain name, he could have provided it. In particular, Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favour.

For this reason, the Panel has to rely only on the evidence submitted by Complainant or provided by the Registrar, and the content of the website at the Domain Name.

The contact details provided by the Registrar suggest no link between the Respondent and the Domain Name other than the one created through the registration of the latter. Moreover, these contact details appear to be incorrect, and Respondent has provided no explanation for this.

The content of the website at the Domain Name clearly shows that the purpose of the registration and use of the Domain Name are directly related to Complainant and its products. The website contains no disclaimer, but rather has the appearance of being related to or endorsed by Complainant. Also, as submitted by Complainant, the website also offers products of Complainant’s competitors. In the Panel’s view, the above activities of Respondent cannot be regarded as establishing rights or legitimate interests in the Domain Name, as they appear to directly take advantage of the goodwill of Complainant and its famous trademark without the consent of the latter. In light of the Domain Name being confusingly similar to Complainant’s trademarks, even if the products offered on Respondent’s website are genuine, no plausible explanation is brought before the Panel as to the attempt of Respondent to attract to his website Internet users searching for Complainant’s products and to receive profit from sales of these products along with products of Complainant’s competitors, without having received authorisation by Complainant to do so. Therefore, the Panel does not find Respondent’s activity as being a bona fide or fair use of Complainant’s trademarks.

For these reasons and in the lack of any evidence or allegations to the contrary, the Panel finds that the prima facie case established by Complainant has not been rebutted by Respondent, and the latter has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

In the present case, the Domain Names are confusingly similar to Complainant’s PHILIPS trademark, and Respondent has been found to have no rights or legitimate interests in them, while positively being aware of Complainant and of the high commercial value of its trademarks, and actively seeking a commercial gain by creating an appearance of being associated to or at least endorsed by Complainant without the consent of the latter.

In the Panel’s view, such conduct illegitimately exploits with a commercial purpose the worldwide reputation of Complainant and its trademarks, especially when taking into account the offers for the sale of products of Complainant’s competitors. In the lack of any rebuttal or plausible explanation by Respondent as to the provision by it of incorrect contact details for the purposes of the registration of the Domain Name, it is difficult for the Panel to associate the concealment of Respondent’s identity to legitimate activities.

Taking into account all above, the Panel is prepared to accept that the Domain Name has been registered and used by Respondent in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and a likelihood of confusion with the latter as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. These actions amount to bad faith registration and use of the Domain Name under the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <philipsua.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Dated: November 5, 2010