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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. Whois Agent

Case No. D2011-0059

1. The Parties

The Complainant is Koninklijke Philips Electronics N.V. of Eindhoven, Netherlands, internally represented.

The Respondent is Whois Agent of Beijing, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <philipslighting.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 13, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 18, 2011.

The Center verified that the Complaint together with the amendment to 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 January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2011.

The Center appointed Richard Tan as the sole panelist in this matter on February 18, 2011. 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

The Complainant is the well-known manufacturer of goods under the PHILIPS trade mark, ranging from consumer electronic goods to domestic appliances, and from security systems to semi-conductors. It has businesses in the areas of healthcare, lighting, consumer lifestyle and technology.

It has been using the trade mark PHILIPS for its business activities since 1891. The said trade mark is registered in more than 180 countries. The Complainant is the proprietor of the trade mark registrations, including 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 23 June 2008, 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, European Community Trademark Registration No. 205971 PHILIPS in classes 3, 6, 7, 8, 9,10,11,14,16,18, 20, 21, 25, 28, 35, 37, 38, 41 and 42, registered on April 12, 1999.

In 2009, it had sales of 23,189 million Euros, with 116,000 employees. It has manufacturing sites in 28 countries and sales outlets in 150 countries. Its research and development expenditure (in 2009) was 1,631 million Euros and the marketing expenses of 804 million Euros.

The Complainant claims that the PHILIPS trade mark is one of the most widely recognized brands in the world. According to the ranking of Interbrand of the Best Global Brands (2009), the PHILIPS brand was ranked as number 42.

It also operates its primary website using the address “www.philips.com” and promotes its products through country specific websites such as “www.philips.nl” (Netherlands), “www.philips.fr” (France) and “www.philips.de” (Germany). The Complainant’s global website has information concerning its many products, as well as information on where to buy PHILIPS products, information about the company, its strategy and business policy. According to the ranking of Byte Level Research, the “www.philips.com” website has been recognized as the 4th most global website in 2010.

The disputed domain name <philipslighting.com> resolves to a passive pay-per click site containing advertising links to websites offering goods and services that are closely related to or directly competitive to the goods offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends firstly, that the domain name <philipslighting.com> registered by the Respondent is identical or confusingly similar to the registered PHILIPS trade mark in which the Complainant has rights by reason of its numerous trade mark registrations around the world as mentioned above and its widespread fame and reputation through its extensive and long use of the trade mark.

The Complainant contends that the disputed domain name is “a simple junction of complainant’s trade mark PHILIPS and the description LIGHTING”. It contends that the addition of the gTLD “.com” and the word “lighting” does not affect its assertion of confusing similarity. The addition of the word “lighting” does not serve to differentiate the disputed domain name from the Complainant’s trade mark. It asserts that if anything, the likelihood of confusion between the disputed domain name and the Complainant’s trade mark is increased by the fact that the disputed domain name contains both the Complainant’s trade mark PHILIPS and the word “lighting”, particularly as the lighting industry is an industry in which the Complainant operates.

The trade mark PHILIPS is a well-known mark with worldwide recognition in a market sector of a broad range of electronic equipment, much of which relates to lighting. The public will, because of the connection of the word PHILIPS to the word element “lighting” in the disputed domain name, and relating to a PHILIPS market sector, clearly be confused into believing that the disputed domain name refers to products and services of the Complainant or to someone authorized by the Complainant.

The Complainant contends, secondly, that the Respondent has no rights or legitimate interest in respect of the disputed domain name <philipslighting.com>. The Respondent has not been authorized or licensed by the Complainant to use its distinctive and famous PHILIPS trade mark. Neither is the Respondent affiliated with the Complainant. The Complainant states that it has conducted a trade mark search in several databases worldwide (total 47 databases) to ascertain whether the Respondent acquired any trade mark rights in the mark PHILIPSLIGHTING. The searches revealed no such trade mark rights exist, and accordingly, the Respondent cannot be regarded as commonly known by this denomination or by its use as a trade mark. The Complainant states that it is not aware of any other facts or circumstances under which the Respondent could claim a valid right or legitimate interest in the disputed domain name <philipslighting.com>.

The Complainant contends, thirdly, that the disputed domain name has been registered and used in bad faith.

The Respondent’s disputed domain name was registered on October 21, 2006, long after the Complainant obtained its trade mark rights in the PHILIPS mark. The trade mark is well-known and the registration of that domain name which includes that mark must be regarded as done in bad faith.

The Complainant further contends that there is no evidence of use by the Respondent of (or demonstrated preparation to use) the disputed domain name with a bona fide offering of goods and/or services. The Respondent is not using the domain name to offer its own products or services or the Complainant’s products. The Complainant asserts that the disputed domain name resolves to a passive pay-per click farm parking page intended to earn revenues through advertising links to websites offering goods and services that are closely related to or directly competitive to the goods offered by the Complainant. The use of a domain name confusingly similar to a trade mark as a parking page that generates clicks through revenues does not give rise to rights or legitimate interest. Indeed, the use of such a portal including links to websites to competitors is one which seeks to profit from confusion with the Complainant’s mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed. See for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Having regard to the evidence adduced by the Complainant in relation to its registered trade mark, PHILIPS, in more than 180 countries around the world and the extensive use of the mark in the Complainant’s business, it can hardly be in dispute that the Complainant has established rights in its PHILIPS mark.

The disputed domain name is not identical to the Complainant’s trade mark PHILIP as it contains the additional word “lighting”. The addition of a generic or descriptive term like “lighting” does not however in the Panel’s view prevent the dispute domain name from being regarded as confusingly similar to the trade mark. It is well-established under the Policy that a domain name composed of a trade mark coupled with a generic or descriptive term can still be regarded as confusingly similar to the trade mark, see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, ‘automotive’ did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.

Further, the addition of a “.com” gTLD is not sufficient to escape a finding of substantial or confusing similarity (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015).

This Panel accepts the Complainant’s contentions, based on the evidence produced, and absent any response from the Respondent, that the trade mark PHILIPS is a well-known mark with worldwide reputation in a broad range of goods and equipment, including in the area of lighting. Moreover, this Panel accepts (as also found by the panel in Koninklijke Philips Electronics v Elight Co., WIPO Case No. D2001-1291 which concerned the domain name <philipslighting.net> and which was cited by the Complainant) that the public is likely, because of the connection of the word PHILIPS to the word element “lighting” in the disputed domain name, and relating to a major market sector in which the Complainant carries on business, to be confused into believing that the Respondent’s domain name refers to products and services of the Complainant or to someone authorized by the Complainant.

This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s PHILIPS trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has stated that it has not authorized or licensed the Respondent to use its PHILIPS trade mark nor is the Respondent affiliated with the Complainant. The Complainant has conducted trade mark searches to ascertain whether the Respondent acquired any trade mark rights in the mark PHILIPSLIGHTING but the searches reveal that no such trade mark rights have been obtained.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. The disputed domain name according to the Complainant resolves to a passive pay-per click site containing advertising links to websites offering goods and services that are closely related to or directly competitive to the goods offered by the Complainant. That does not mean that the Respondent has any rights or legitimate interests in the disputed domain name. Indeed that would be far from it since the use of the mark PHILIPS in the disputed domain name was not authorized in the first place.

In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests. In any event the Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. On the evidence, the Respondent has no license or other authorization to use the PHILIPS trade mark. There is no question that the Respondent registered the disputed domain name long after the PHILIPS trade mark was registered. The latter was and is a well-known mark based on the evidence adduced by the Complainant, and clearly, the Respondent must have known about the Complainant’s mark and business when registering the disputed domain name. By registering the disputed domain name for its website and using the website as a pay-per-click farm parking page to earn revenues through advertising links to websites offering goods and services that are closely related to or directly competitive to the goods offered by the Complainant, the Respondent was clearly seeking to profit from the confusion created by the inclusion of the Complainant’s mark in the disputed domain name. The Panel finds that by intentionally attempting to attract, for commercial gain, users to the Respondent’s website through creating a likelihood of confusion with the Complainant’s mark, the Respondent use of the disputed domain name was in bad faith.

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel accepts the Complainant’s contentions that the domain name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of 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 <philipslighting.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: March 4, 2011

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