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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips Electronics N.V. v. SC Evergreen Consult & Aviation SRL (Catalin Mogoseanu)

Case No. DRO2001-0001

 

1. The Parties

The Complainant is Koninklijke Philips Electronics N.V., a public company organized under the laws of The Netherlands, with its principal place of business at Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands.

The Respondent is SC Evergreen Consult & Aviation SRL. Catalin Mogoseanu, an individual domiciled at Str. Dobotra 4, Bucharest, Romania, shares the address, has written on behalf of SC Evergreen Consult & Aviation SRL, and appears to be the contact person for all official matters.

 

2. The Domain Name and Registrar

The domain name at issue is <philips.ro> (the "domain name"). The Registrar is the Romanian National R&D Computer Network (RNC.ro), Bd. Averescu 8-10, Sector 1, Bucharest 71316, Romania.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on March 12, 2001 and by hardcopy on March 13, 2001. The Center acknowledged receipt of the Complaint on March 27, 2001.

On March 30, 2001, the Center sent to the Registrar a request for verification of registration data. On March 30, 2001, the Registrar confirmed: 1) that it had received a copy of the Complaint; 2) that <philips.ro> was registered with the Registrar; 3) that SC Evergreen Consult & Aviation SRL, Str. Dobotra 4, Bucharest, Romania, is the current registrant of the domain name; 4) that the Administrative, Technical and Billing Contact are CM4929-ROTLD, person: Catalin Mogoseanu, Str. Dobotra 4, Bucharest, Romania, email: ecgro@fx.ro, fax number: +40 123 04 408, telephone number: +40 123 12 152; ; 5) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; 6) that the domain name is currently inactive and has no delegation to name servers; and 7) that the specific language of the registration agreement as used by the registrant for the domain name was English that disputes arising from the use of the domain name should be settled in accordance with the UDRP or with Romanian laws;, and 8) that the courts of Bucharest have jurisdiction.

On April 3, 2001, the Center requested the Registrar to lock the domain name in order to avoid any transfer which may hinder the prosecution of the current administrative proceeding. The Registrar informed the Center by email of April 3, 2001 that the domain name was blocked.

On April 23, 2001, the Center forwarded the Complaint to the Respondent by post/courier, fax and email, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of April 22, 2001 was fixed for the Response.

No Response was submitted. Accordingly, the Center issued a Notification of Respondent Default to both parties on April 23, 2001.

On April 23, 2001, the Respondent informed the Center by email that it had started court proceedings against the Complainant in Romania concerning the right of use of the domain name. The Respondent requested the Center to suspend the arbitration proceedings until a Romanian judge has issued a final verdict in the case.

On May 3, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward his decision to the Center in accordance with paragraph 15 of the Rules by May 16, 2001.

The Panelist examined all notifications of the Center, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted. The Panelist also examined the Complaint, and finds that Complainant has erroneously indicated Mr. Catalin Mogoseanu as the Respondent, instead of SC Evergreen Consult & Aviation SRL. It appears, however, that Mr. Mogoseanu is the Respondent’s contact person, located at the same address as the Respondent, and that Mr. Mogoseanu personally answered to the Complainant’s warning letter (Complainant’s Exhibits 7 and 8). For these reasons, the Panel agrees to consider both SC Evergreen Consult & Aviation SRL and Mr. Catalin Mogoseanu as the Respondent, and finds that the Complaint complies with the formal requirements of the Rules and Supplemental Rules.

 

4. Factual Background

A. The Complainant

The Complainant is one of the world's largest electronics companies. Complainant’s products include, amongst others, lighting, medical systems, semiconductors, analytical instruments, broadband networks, broadcast & communication tools, displays, monitors, TV, video & audio products, security tools, PC peripherals and internet devices.

The Complainant asserts that the trademark "Philips" has been registered by the predecessors of Complainant in the Netherlands since 1891 and is registered in numerous jurisdictions worldwide (the "Trademark"). It is, according to Complainant, synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances and from security systems to semiconductors. Complainant contends that the "Philips" brand name is the company’s most important asset as it has spent substantial sums on supporting its brand worldwide.

The Complainant owns the international "Philips" trademark registration No. R 310459 in several countries, including Romania (Complainant’s Exhibit 4) (the "Trademark"). The Complainant also submitted a list of the major countries in which it alleges the Trademark to be registered (Complainant’s Exhibit 3).

The Complainant operates its principal website at www.philips.com. The Panel searched on the Internet and found that the domain name <philips.com.ro> has been registered by the Complainant’s subsidiary, Philips Romania S.R.L., with the registrar RNC.ro.

B. The Respondent

The Respondent is a Romanian company. It appears from the evidence submitted that the Respondent designs and hosts websites.

The Respondent registered the domain name <philips.ro>. The registration date of the domain name is not listed on the Registrar’s Whois information. The domain name does not resolve to any website.

The Respondent also registered the domain name <toshiba.ro>.

C. Facts Underlying the Dispute

On February 12, 2001, the Complainant sent a warning letter to the Respondent requesting that it voluntary stop using the domain name <philips.ro> (Complainant’s Exhibit 7).

The Complainant’s internal correspondence reflects that the Complainant’s Romanian affiliate contacted the Respondent’s representative, Mr. Mogoseanu, by phone for a preliminary discussion (Complainant’s Exhibit 5). According to the Complainant,

Mr. . Mogoseanu declared that he registered the domain name for the purpose of obtaining a contract for designing Complainant’s website in Romania. When asked what the Respondent wanted for the transfer of the domain name, Mr. Mogoseanu replied US$ 5,000 in money or products.

By email of February 19, 2001, Mr. Mogoseanu informed the Complainant that: "We do not want anything for the transfer of the domain name. We just want to sign with Philips Ro[mania] a contract for their web page design (English and Romanian languages) and hosting" (Complainant’s Exhibit 8).

By email of February 22, 2001, the Respondent also stated [sic]:

"1) I have never used the domain name: www.philips.ro, not made it public on the web, etc., therefore until today i have done no harm towards the Philips brand name.

2) Normally when somebody demands somenthing (in this case the right to use this particular web address) it offers something in exchange. Therefore i am waiting for an offer from you.

3) If you will take action that will lead to restricting my right to use this domain, at any further time, i will take you to court in Romania. This can lead to a "loose/loose" situation. It can take a long, long time, in which time Philips Romania might loose more that it could gain by an amiable solution that can be reached in a matter of days. I know the laws in Romania much beeter than you and would like to inform you that I have much higher chances to winn this case, should we reach this stage.

4) Hoping that you are still willing to reach a amiable solution, i am waiting from you for a serious offer." (Complainant’s Exhibit 7).

By email of March 26, 2001 to the Complainant and the Registrar, the Respondent further stated: "Philips International BV has done no real steps to solve this dispute in an amiable way; If Philips International BV will not come up with a solution that will satisfy both parties involved, please note that we intend to challenge Philips International BV’s action in a Romanian court".

The Complainant forwarded this email message to the Center and informed the Center by email of March 26, 2001, that it "would like the UDRP complaint to go on, as the Respondent’s version of "amicable" is a transfer of the domain name for a service performed by them [for] an amount of money exceeding the out-of-pocket costs."

By email of March 26, 2001, the Respondent wrote to the Complainant [sic]:

"As you know, WIPO will hold the domain name: wwww.philips.ro blocked until they receive the final verdict from a Romanian court of law.

(…) when a Romanian company takes a foreign company to court, the paperwork has to be processed through the Romanian Ministry of Justince, etc., and it will take many months just for the papers to reach you, and many more years for the court case to end.

Why wait until 2004-2005 when we can settle this before it starts, as we feel that the Romanian law, is in our favor?"

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:

(1) the domain name <philips.ro> is identical to the Complainant’s Trademark;

(2) the Respondent has no rights or legitimate interests in the domain name, because it has been registered for the following purposes:

(i) for the purpose of selling or otherwise transferring the domain name to the Complainant for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name;

(ii) in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name in Romania. The Complainant states that this intention is clearly derived from the Respondent’s pattern of conduct, evidenced by the registration of a domain name containing another well-known trademark, namely <toshiba.ro>; and

(iii) for the purpose of disrupting the business of the Complainant. The Complainant alleges that 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. The Complainant also submits that no attempt was made after the Respondent received a letter from the Complainant explaining its concern of the registration of the domain name; and

(3) the domain name was registered and is being used in bad faith, because (i) the registration of the domain name causes unfairness and is detrimental to the business of the Complainant, particularly in Romania, as the mark is influential in the field of business it was registered for; (ii) the registration was based on a domain name speculation without real intent to use; and (iii) the Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to the registration of the domain name, which leads to the conclusion that the registration was aimed at coaxing the Complainant to buy the domain name or the Respondent’s services.

The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. The Respondent

No formal Response was submitted.

After having received the Notification of Respondent Default on April 23, 2001, the Respondent informed the Center by email that it had started court proceedings in Romania in respect to the domain name, and that the Center will receive a legalized translation of the court documents that prove this allegation. The Respondent requested the Center to suspend the administrative proceedings until the Romanian court issued a final verdict in the case.

Until today, the Respondent has not submitted to the Center any official documentation that it has commenced a lawsuit against the Complainant in Romania.

 

6. Discussion and Findings

A. Procedural Matters

Disputes concerning second-level registrations under the .ro top-level domain are governed by the Policy, the Rules and the Supplemental Rules, approved by ICANN. This Policy and these Rules were adopted on a voluntary basis by the registration authority of .ro, RNC.ro (see the Domain Name Dispute Resolution Policy of RNC.ro at www.rnc.ro/new/dispute-resolution-policy.html).

Paragraph 4(k) of the Policy states as follows:

"Availability of Court Proceedings. [1]The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you [the domain name holder] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. [2]If an Administrative Panel decides that your domain name registration should be canceled or transferred, we [the Registrar] will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. [3]We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. [4](In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) [5]If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name."[Numbers added by the Panel]

It results from the above that the mandatory administrative proceeding requirements shall not prevent either the Respondent or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.

Paragraph 18 of the Rules provides that in the event of legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

In the present case, the Respondent notified the Center that it has filed a claim against the Complainant in Romania, but did not submit any official documentation (such as a copy of a Complaint or a file stamped by the Clerk of the Court) demonstrating the existence of a lawsuit in Romania. Therefore, the Panel is not in the position to verify whether a dispute concerning the domain name is pending before a Romanian court, or, if so, when it was filed.

Whereas the first sentence of paragraph 4(k) of the Policy only mentions lawsuits filed with a court before an administrative proceeding is commenced or after such proceeding is concluded, the third and the fifth sentence mention lawsuits in general, without specifying when they have been commenced. The fact that the first sentence of paragraph 4(k) does not refer to lawsuits commenced during an administrative proceeding is logical, because bona fide parties are likely to choose the inexpensive and fast administrative proceeding in order to avoid lengthy court proceedings, reserving themselves the right to submit the dispute to a court after the Administrative Panel has rendered a decision. , and, nNormally, it can be expected that each bona fide party wouldill wait until the panel has rendered its decision before deciding whether it wishes to obtain a further decision by a court..

In the present case, the Panel is of the opinion that, if the Respondent has actually commenced legal proceedings in Romania, it has done so as a delaying tactic. This is demonstrated by the Respondent’s email to Complainant of March 26, 2001:

"WIPO will hold the domain name: www.philips.ro blocked until they receive the final verdict from a Romanian court of law. (…) when a Romanian company takes a foreign company to court, the paperwork has to be processed through the Romanian Ministry of Justice, etc. and it will take months just for the papers to reach you, and many more years for the court case to end. Why wait until 2004-2005 when we can settle this before it starts, as we feel that the Romanian law is in our favor?"

In light of these circumstances, the Panel has decided to proceed to a decision.

By doing so, the Panel does not jeopardize endanger the Respondent’s legal situation of Respondent; pursuant to paragraph 4(k) of the Policy, if the Respondent iIn case the Respondent latter submits to the Registrar within the ten (10) days period official documentation that it has commenced a lawsuit in Romania within the ten (10) days period, within the ten (10) days period, the Registrar will not implement the Panel’s decision., in accordance with paragraph 4(k) of the Policy.

B. Substantive Matters

Referring to paragraph 14 of the Rules, in the absence of a response to the Complainant’s allegations by the Respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. The Panel cannot decide in the Complainant’s favor solely based upon the Respondent’s default, but is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just under the circumstances from the Respondent’s failure to respond.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

(a) Identical or confusingly similar

The only difference between the domain name and the Trademark is that the domain name has ".ro" at the end. The addition of the designation ".ro" does nothing to distinguish the mark from the domain name.(Footnote 1)

The Panel concludes that the domain name <philips.ro> is identical to the trademark "Philips" in which the Complainant has rights.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant alleges that the Respondent has no rights in the domain name because the domain name was registered for the purposes of (i) selling it for a valuable consideration in excess of the out-of-pocket costs; (ii) preventing the Complainant from reflecting the Trademark in a corresponding domain name in Romania and (iii) disrupting the business of the Complainant.

These circumstances may evidence bad faith use (if the requirements of paragraph 4(b) of the Policy are fulfilled – see under Section 6.B(c) of this decision). They do not, however, inevitably lead to the conclusion that a Respondent has no legitimate interest in the domain name, although some the same factors can be common to both analysies.

The Panel notes that the domain name does not resolve to a website, the Respondent has not shown any other use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services, nor has it demonstrated that it is commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

Respondent’s only alleged interest in the domain name is to "sign with Philips Ro a contract for their web page design (English and Romanian languages) and hosting" (Complainant’s Exhibit 8). Such use does not establish rights to or a legitimate interest in the domain name in the sense of paragraph 4(c) of the Policy. The Panel is of the opinion that holding the domain name hostage unless a contract for web page design services is negotiated, is, on the contrary, far from a legitimate use and is, furthermore, evidence of the Respondent’s bad faith.

The Panel concludes that the absence of any legitimate use, the fact that the domain name is being offered for sale, and the Respondent’s failure to justify the use of "Philips" in its domain name, constitute a prima facie evidence of a lack of rights to or legitimate interest in the domain name. (Footnote 2)

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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 your website or location.

The Complainant apparently relies on the first and the third element, alleging that the domain name was registered and used in bad faith, because "the registration was aimed at coaxing the Complainant to buy the domain name or to have its services engaged upon" and "the registration of the domain name causes unfairness and is certainly detrimental to the business of the Complainant as the mark is influential in the field of the business it was registered for". The Complainant also contends that "the registration was based on a domain name speculation without real intent to use". The Panel views this as an allegation of cybersquatting.

By not submitting a response, the Respondent has failed to address these allegations.

The Panel considers that the Respondent has registered the domain name for the purpose of selling, renting or otherwise transferring the registration to the Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. This is demonstrated by the evidence submitted (internal email of Philips Romania of February 19, 2001 (Complainant’s Exhibit 5) and Respondent’s email to the Complainant of February 22, 2001 (Complainant’s Exhibit 7)).

Furthermore, the Panel views the Respondent’s email seeking a contract for web page design services in exchange for transfer of the domain name (Complainant’s Exhibit 8) as a common play used by cybersquatters to who do not want to make an overt demand to sell a domain name for more than documented out-of-pocket expenses. In light of the facts of this case, the Panel finds based on this email that the Respondent is seeking to sell the domain name to the Complainant for more than out-of-pocket expenses.

The fact that Respondent has also registered the domain name <toshiba.ro> demonstrates a pattern of conduct whereby well-known domain names are registered by it in Romania. This reinforces the Panel’s conclusion that the Respondent has acted in bad faith.

Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith.

 

7. Decision

The Panel decides that:

1) the domain name <philips.ro> is identical with the trademark "Philips";

2) the Respondent has no rights or legitimate interest in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requests that the Registrar, RNC.ro, transfer the name <philips.ro> to the Complainant.

 

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Dr. Kamen Troller
Sole Panelist

Dated: May 16, 2001

 

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Footnotes:

1. See: Gateway, Inc. v. James Cadieux (D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Koninklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638). (back to text)

2. See: Digital City, Inc. v. Smalldomain (D2000-1283), at p.6 and Koninklijke Philips Electronics N.V. v. Duplica (D2001-0312). (back to text)