WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips N.V. v. Shen Chaoyong
Case No. D2014-2053
1. The Parties
The Complainant is Koninklijke Philips N.V. of Eindhoven, the Netherlands, represented internally.
The Respondent is Shen Chaoyong of Shishi, China.
2. The Domain Names and Registrar
The disputed domain names <philipshealth.com> and <philipshealthtech.com> are registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2014, 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.
On December 11, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceedings. On December 12, 2014, the Complainant requested that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
On December 10, 2014, the Complainant sent an email to the Center referring to and attaching a copy of the email received by the Complainant from the Respondent on November 21, 2014 as further evidence of bad faith of the Respondent. In its language request of December 12, 2014, the Complainant filed with the Center a copy of a further email sent by the Respondent to the Complainant on November 21, 2014.
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 in both Chinese and English, and the proceedings commenced on December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 6, 2015. 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 a company incorporated in the Netherlands and the owner of registrations in 181 countries for the trade mark PHILIPS (the “Trade Mark”). The Trade Mark is a well-known trade mark.
The Respondent is apparently an individual based in China.
C. The Disputed Domain Names
The disputed domain names were both registered on September 23, 2014.
D. The Websites at the Disputed Domain Names
According to the Complaint’s Annexes, the disputed domain names have not been used.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is one of the largest global diversified industrial companies with sales in 2013 of EUR 23,329 million, 116,000 employees, manufacturing sites in 28 countries, and sales outlets in over 150 countries. The Trade Mark, which was ranked number 42 in the 2014 Interbrand survey of the “Best Global Brands”, was first used by the Complainant’s predecessor in 1891. The Complainant is also one of the world’s leading healthcare companies.
On September 23, 2014, during a meeting with investors and analysts in London, the Complainant’s Chief Executive Officer announced the establishment by the Complainant of a new market leading healthcare company. The press release stated “[t]o become the global leader in HealthTech and shape the future of the industry, we will combine our vibrant Healthcare and Consumer Lifestyle businesses into one company [...]”. This announcement was immediately and widely reported in media globally.
The disputed domain names were registered within hours of the Complainant’s press release.
The disputed domain names are confusingly similar to the Trade Mark. They incorporate the Trade Mark in its entirety, together with the non-distinctive words “health” and “healthtech”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known by the disputed domain names and is not making a bona fide commercial use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The registration of the disputed domain names immediately after the Complainant’s press conference is an indication that the Respondent knew of the announcement and that the Respondent hoped to either benefit from confusion by diverting web traffic, or by selling the disputed domain names to the Complainant.
The Complainant contends that the Respondent is a serial cybersquatter and has submitted evidence of several UDRP decisions in respect of which the Respondent was found to have registered and used domain names in bad faith, and evidence of numerous other domain names apparently registered by the Respondent and comprising other well-known trade marks.
The Complainant argues that, notwithstanding the Respondent’s passive use of the disputed domain names, the circumstances of these proceedings, including the fact the address details in the WhoIs searches for the disputed domain names are apparently not correct, demonstrate the disputed domain names have been registered and used in bad faith.
Finally, the Complainant seeks to rely on two emails received from the Respondent on the date of transmitting the Complaint to the Respondent (November 21, 2014); the first offering to sell four domain names comprising the Trade Mark (including the disputed domain names) for USD 1,500.00; and the second offering to sell seven domain names comprising the Trade Mark (including the disputed domain names) for the same price. The Complainant submits that this constitutes further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceedings
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings.
The Complainant has requested that English be the language of the proceedings, as the English language emails received from the Respondent on November 21, 2014 demonstrate that the Respondent is familiar with the English language.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
6.2. Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
In all the circumstances, as the emails from the Respondent were not sent until after the date of filing of the Complaint (and were in fact sent in direct response to the Complainant’s transmission of the Complaint to the Respondent as required by the Rules); as the emails are directly relevant to the question of bad faith; and as the Respondent has elected not to file a response (nor to file any submissions on the question of the language of the proceedings, or otherwise at all), the Panel determines that it will admit the Complainant’s supplemental filing.
6.3. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by well over a hundred years.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. Wal-Mart Stores, Inc. v. Richard Macleod d/b/a/ For Sale, WIPO Case No. D2000-0662.
The Panel finds the addition of the generic words “health” and “healthtech” does not serve to distinguish the disputed domain names from the Trade Mark in any significant way, particularly in circumstances where (1) the Complainant is well known worldwide as a leading company in the healthcare field; and (2) the disputed domain names were registered on the same day as the Complainant’s press release regarding the launch of its new HealthTech business.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s 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; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over a hundred years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark, the highly suspicious timing of the registration of the disputed domain names (within hours of the Complainant’s press release announcing the launch of its new HealthTech business), the lack of any explanation from the Respondent, and the passive use of the disputed domain names, the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s well-known Trade Mark at the time it registered the disputed domain names.
The Panel’s conclusion in this regard is fortified by the evidence of the Respondent’s offer to sell the disputed domain names to the Complainant, following notification of these proceedings, for a price in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain names.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <philipshealth.com> and <philipshealthtech.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: February 20, 2015