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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Jonathan J. Wallack
Case No. D2002-0526
1. The Parties
Complainant is Koninklijke Philips Electronics N.V., represented by Mr. J.J.E.C.G. Vandekerckhove, Postbus 220, 5600 AE, Eindhoven, The Netherlands, hereinafter the "Complainant".
Respondent is Jonathan J. Wallack, PO Box 3888, Beverly Hills, CA 90212, United States of America, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain names in dispute are <philipsoutlet.com>, <philipsoutlet.org> and <philipsoutlet.net>.
The registrar for the disputed domain names is Dotster.com, 11807 N.E. 99th Street, Suite 1100, Vancouver, WA 98682, United States of America, hereinafter the "Registrar".
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on June 6, 2002, by e-mail, and on June 11, 2002, in hardcopy. On June 7, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant and the Respondent.
(b) On June 7, 2002, the Center transmitted a Request for Registrar Verification to the Registrar, with the Registrar’s Response received by the Center June 18, 2002, confirming that the domain names at issue were registered through Dotster.com.
(c) On June 19, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
(d) A Response was received by the Center on July 3, 2002, via a-mail, and July 9, 2002, in hardcopy. The Center sent an acknowledgement of receipt of Response to the Respondent on July 4, 2002.
(e) In view of the Complainant’s designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Sole Panelist, and transmitted the case file to the Administrative Panel. The parties were notified of the Appointment of Administrative Panel on July 10, 2002.
(f) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of the trademark PHILIPS in numerous jurisdictions worldwide. Said trademark is synonymous with a wide spectrum of products varying from consumer electronics - inter alia cellular phones - to domestic appliances, security systems and semiconductors.
The Respondent has registered the domain names <philipsoutlet.com>, <philipsoutlet.org> and <philipsoutlet.net>.
5. Parties’ Contentions
The Complainant asserts that:
The domain names at issue are confusingly similar to Complainant’s trademark PHILIPS.
The first seven letters, ‘PHILIPS’ is an exact match to Complainant’s trademark in all the domain names at issue, and is thus an indication of confusing similarity. This argumentation has been adopted in the previous case under the Policy, Mayo Foundation for Medical Education and Research v. John Zuccarini dba Cupcake Confidential, FA 0110000100488.
The Respondent has no rights or legitimate interests in respect of the domain names at issue.
Respondent is not commonly known by the name ‘Philipsoutlet’, but rather as ‘Cellular Outlet’.
Complainant has not licensed or otherwise permitted the Respondent to register the domain names incorporating the trademark PHILIPS.
There is no evidence to conclude that the Respondent has made legitimate non-commercial or fair use of the domain names in dispute.
The domain names were and are registered and used in bad faith.
The Respondent has registered the domain names at issue with the intention of creating a likelihood of confusion as to the source, sponsorship or affiliation with the Complainant’s mark.
No attempt was made by the Respondent to respond to the Complainant, upon receipt of the Complainant’s cease and desist letter setting out its concerns.
The Respondent has engaged in a pattern of conduct whereby a number of domain names have been registered by the Respondent, containing well-known trademarks such as SONY, MOTOROLA, NOKIA, QUALCOMM, ERICSSON, NEC, NEXTEL and AUDIOVOX.
The bad faith element is further enhanced by the fact that the Respondent conducts commercial business on the corresponding web sites for goods and services for other well-known marks such as SONY, NOKIA, MOTOROLA and ERICSSON, which confuses Internet users as to the source and affiliation of the products, and its respective owners’ commercial relationship with the Complainant.
The Complainant requests the Administrative Panel issue a decision that the contested domain names must be transferred to the Complainant.
The Respondent asserts that:
The domain names at issue cannot be considered confusingly similar pursuant to the Policy, Paragraph 4(a)(i). The case, Mayo Foundation for Medical Education and Research v. John Zuccarini dba Cupcake Confidential, is not parallel to the preceding case, and is thus not relevant.
The bottom of every single web page which the domain names at issue are corresponding to, have disclaimers stating that the Respondent in absolutely no way related to, or affiliated with, any company whose products it sells.
‘Philipsoutlet’ is not an exact name. The basis for the name is that Respondent is a liquidator of merchandise, commonly referred to as an ‘outlet’ store. The word ‘outlet’ immediately brings to mind the concept of discount, wholesale, bargain and inexpensive. These are exactly the thoughts Respondent is attempting to invoke in its customers.
Complainant’s assertion that Respondent has no legitimate interest in the domain names at issue because Respondent’s business is not commonly referred to by that name is not correct, as Respondent’s value lies in the name ‘outlet’. Respondent has registered several domain names with the suffix ‘outlet’, as he has been promoting his company, and gained reputation as an outlet. Respondent’s intention is to accumulate domains with the suffix ‘outlet’, so it can further position itself as an outlet store.
The argument of the Complainant that Respondent has not used the domain names at issue is not correct, as said domain names are redirecting the web browser to the domain www.cellularoutlet.com, which is a legitimate use of a domain name on the Internet.
The cease and desist letter sent by Complainant was not answered, as Respondent already had received similar letters from Motorola and NEC, and had heard from neither company since Respondent submitted a response, which gave Respondent reason to believe that they had accepted his reasoning for argument. Respondent concluded that if Motorola and NEC thought they would have a tough case in the United States, Philips would not stand a chance, since they were represented from the Netherlands, and Respondent thus decided to remain silent.
Philips does not own the name Philip, and as Respondent’s son is named Philip, he has a right to hold on to the domain names to give his son the opportunity to decide whether or not he wants to ever make a website for himself using the name ‘Philip’s Outlet’.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark
The domain names at issue incorporate the well-known trademark PHILIPS in its entirety, thus creating a certain visual and phonetical similarity between Respondent’s domain name and Complainant’s trade mark. PHILIPS is to be considered as a famous mark on the basis of its worldwide reputation in connection with the sale of inter alia consumer electronics and household appliances. Complainant’s trade mark is furthermore the most distinctive part of the contested domain names, and due to the worldwide fame of this trade mark, the addition of the generic term ‘outlet’ cannot be deemed sufficient to prevent the risk of unfounded identity between the contested domain names and Complainant’s trade mark.
In view of the above the Panel finds that the domain names at issue and the Complainant’s trademark PHILIPS are confusingly similar.
6.2 Rights or legitimate interest in the domain name
The Panel has considered the assertions and evidence set forth by the Parties as to the rights or legitimate interests of the Respondent in respect of the domain names at issue, including the Complainant’s contention about the lack of any legitimate intellectual property or bona fide right of the Respondent to the contested domain names.
It is clear that Respondent has no ‘rights’ in the trademark in the disputed domain names, as Respondent does not contend it has a license or any other claim to use Complainant’s trademark relevant to the Policy.
In order for Respondent’s Internet business to be ‘legitimate’ under the Policy, it must make non-infringing use of Complainant’s world famous trademark. In light of the fame of Complainant’s trademark and the fact that the disputed domain names clearly are registered to take advantage of this fame, the Panel finds that Respondent has not made, nor prepared to make, such fair use of the domain names.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain names.
6.3 Registration and use in bad faith
Respondent knew about the Complainant’s trade mark PHILIPS at the time of the registration of the domain names in dispute. The Panel furthermore finds that the domain names in dispute were registered to attract Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or a product or service on Respondent’s web site.
Pursuant to Paragraph 4(b) and previous administrative panel decisions, the aforementioned documented circumstances constitute evidence of registration and use of domain names in bad faith.
The Panel therefore finds that the Respondent has registered and is using the domain names at issue in bad faith.
The Panel has found that the domain names <philipsoutlet.com>, <philipsoutlet.org> and <philipsoutlet.net> are confusingly similar to a trade mark held by the Complainant, and that the Respondent has no rights to or legitimate interest in said domain names. The Panel has further found that the domain names have been registered, and are being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides to request that the domain names <philipsoutlet.com>, <philipsoutlet.org> and <philipsoutlet.net> be transferred to the Complainant.
Peter G. Nitter
Dated: July 15, 2002