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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Beijin Yi Hua International Trading Company
Case No. D2001-1150
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands.
The Respondent is Beijin Yi Hua International Trading Company, #11 Zhong Guan Chun Nan Road, Hai Dian District, Beijing P.R. NA Beijing, China.
2. The Domain Names and Registrar
The Domain Names are <philipspc.com> and <philipspc.net>.
The Registrar is eNom Inc.
3. Procedural History
The Complaint was received by WIPO by email on September 20, 2001, and in hardcopy form on September 24, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Uniform Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy ("the Supplemental Rules"), and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <philipspc.com> and <philipspc.net> ("the Domain Names") were registered through Network Solutions Inc. and that "Beijin Yi Hua International Trading Company " is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On October 19, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was November 8, 2001. No Response having been received, on November 9, 2001, WIPO issued to the Respondent a notice of its default.
The Panel was properly constituted. The undersigned Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence".
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision, is December 26, 2001.
4. Factual Background
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 (i.e., some 145 countries based on the list of major countries registered as produced by the Complainant). 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 company’s most important asset as it has spent substantially on supporting its brand worldwide. The Complainant has produced a copy of the certificate of registration in China number 135046.
The Respondent registered the Domain Names on April 30, 2000. On January 15, 2001, the Complainant through its lawyer sent a letter to the Respondent requesting that it cease and desist all use of the Domain Names. The Respondent has not responded or leveled a challenge to the content/averments in the Complainant’s cease/desist letter relating to the Domain Names. It was only when the Complainant, via Mr. William Cao, an ex-employee of the Complainant based in China, who was then assisting the Complainant in the matter, attempted to contact the Respondent, that the Respondent responded, stating that it is a distributor of the Complainant and had purchased the domain names as a preventative measure for the Complainant for 100,000 RMB and the Respondent requested for 50,000 RMB (approximately US$6,000) for the transfer of the Domain Names. The Complainant’s lawyer requested the Respondent to provide evidence of a receipt that the Respondent had purchased the Domain Names for 100,000 RMB. As the Respondent said that it could not provide any receipt because it bought them from an individual for cash, the Complainant launched this Complaint.
5. Parties’ Contentions
The Complainant points to the worldwide fame of the trade mark and trade name "Philips", which the Complainant has registered and used since 1891.
The Complainant’s "legal arguments" are as follows:
The Domain Names are identical and/or confusingly similar to the "Philips" trademark registered by the Complainant in which it has rights.
The Respondent has no rights or legitimate interests to the domain names as they have been registered primarily for (i) the purpose of preventing the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, (ii) for the purpose of 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 Names, and (iii) for the purpose of disrupting the business of the Complainant.
The Complainant has not licensed or otherwise permitted the Respondent to register the Domain Names incorporating the word "Philips" within the Domain Names. Before any notice was communicated to the Respondent of the dispute, there was no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names 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 Names.
As evident from the above reasons, the registration of the Domain Names has been clearly done in bad faith for the following reasons; (i) the registration could very well be 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 the Domain Names, (ii) the registration of the Domain Names 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, (iii) it could easily be inferred or concluded that since the Domain Names do not resolve to an active website, that the Respondent had the intention of transferring the Domain Names for valuable consideration, perhaps in the future, (iv) the Respondent has not responded or leveled a challenge to the content/averments in the Complainant’s cease/desist letter relating to the Domain Names—it was only when the Complainant attempted to contact the Respondent, that the Respondent responded, stating that it is a distributor of the Complainant and had purchased the domain names as a preventative measure for the Complainant. If the Respondent did indeed commit this act in good faith, then the Complainant inevitably concludes that the request for a valuable consideration instead of the registration costs is an act of bad faith, on the part of the Respondent. In addition, the Respondent only communicated this act of "good faith" when the Complainant, through Mr. Cao, had attempted to make contact with the Respondent, approximately 5 months after the cease/desist letter had been sent to the Respondent by the Complainant, (v) the Respondent registered the domain names to perhaps intentionally create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainant’s mark, (vi) the registration took place with an intention to sell or transfer to the Complainant for profits, and (vii) the Respondent had clearly no demonstrable plan to use the domain names for a bona fide purpose prior to registration or acquisition of the domain names.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Identical or Confusing Similarity
Whether the Domain Names are confusingly similar to the Complainant’s mark requires considering what the overall impression is, bearing in mind the dominant components of the Domain Names. The trademark "Philips" is synonymous with a wide spectrum of products of the Complainants varying from consumer electronics to domestic appliances, and from security systems to semiconductors. The Domain Names comprise the word "Philips" coupled with ‘pc’, which is a generic word and stands for personal computer. Clearly, ‘Philips’ coupled with ‘pc’ are either identical to or confusingly similar to the Complainant’s trademark.
The Panel finds that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Names requires the Complainant to prove a negative. For the purpose of this sub paragraph. The Complainant has not licensed or permitted the Respondent to apply for Complainant’s trade mark for the Domain Names. It is also sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.
The Complainant’s name and principal trademark, Philips, is a household name, exclusively associated with the Complainant and its products. The Domain Names are essentially the Complainant’s name and principal trademark. The Respondent has not responded or leveled a challenge to the content/averments in the Complainant’s cease/desist letter relating to the Domain Names until several months later. The Respondent failed to demonstrate any evidence that would satisfy paragraph 4(c) of the Policy or any other evidence that would suggest its rights or legitimate interest in the Domain Names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria, which shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b)(i) concerns acquisition of the Domain Names in order to sell them, but there is no evidence that the Respondent acquired the Domain Names for the specific purpose of selling them. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct, but there is no evidence of any such pattern of conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor, but there is no evidence that the Respondent is a competitor of the Complainant. Paragraph 4(b)(iv) involves use of the Domain Names for the purpose of attracting visitors to the Respondent’s online location in the mistaken belief that they are visiting a location of or associated with the Complainant. There is no evidence that the Domain Names are connected to an online location. Despite the Complainant’s assertion that the Respondent’s purpose is to cause confusion, there is no evidence of that.
However, paragraph 4(b) does not comprise an exhaustive list of the circumstances, which shall constitute evidence of registration and use in bad faith. In the view of the Panel, while inaction should never of itself constitute evidence of registration and use in bad faith, inaction may be so where the Domain Names comprise a name which can only sensibly refer to the Complainant and the Complainant’s products, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Names and where it is difficult to conceive of any use of the Domain Names, which will not be likely to cause confusion of some kind.
The Panel finds that those circumstances exist here. The Domain Names can only sensibly refer to the Complainant, the Respondent has not sought to put before the Panel any justification for its selection of the Domain Names and it is difficult to conceive of any use of the Domain Names, which will not be likely to cause confusion of some kind. In the Panel’s view the threat that such use may be made of the Domain Names constitutes use in bad faith.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith.
In the result, the Panel having found that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Names <philipspc.com> and <philipspc.net> be transferred to the Complainant.
Moon Sung Lee
Dated: December 26, 2001