WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Manageware
Case No. D2001-0796
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V. (KPENV), a company whose civic address is in Eindhoven, The Netherlands. The Respondent is Manageware, a company whose civic address is in Alphraretta, Georgia, USA.
2. The Domain Names and Registrar
The domain names at issue are and . The Registrar, as per the amended Complaint Form, is Network Solutions, Inc., USA.
3. Procedural History
The Complaint was received in hardcopy on June 15, 2001. Payment was received on the same date.
Upon receiving all the required information, the WIPO Case Manager took all necessary steps to confirm the identity of the Registrar for the contested domain names, verify the Registrar�s Whois Database and confirm all the essential contact information for Respondent.
An email was sent to the Registrar by the Case Manager on June 20, 2001, to obtain confirmation of the Registration Agreement and other information required under the Policy. The Verification Response from Network Solutions Inc. was received on June 25, 2001.
In subsequent email communication among the parties and the WIPO Case Manager, there appeared to be an agreement for the voluntary transfer of the domain names to the Complainant. As such, the proceedings were effectively suspended on July 2, 2001, while the official Notification of Suspension was sent out on July 16, 2001, by the WIPO Case Manager. The administrative proceeding was suspended until August 1, 2001, at which point the proceedings would be deemed automatically terminated if no request to resume was made by the Complainant.
On July 27, 2001, after a breakdown in the negotiating and transfer process, the Complainant requested the resumption of proceedings with the WIPO Case Manager. At that time, the Respondent repeated the offer to delete the registrations of the domain names and attempted to do so unilaterally, but as the names had been put on hold by NSI pending the outcome of this proceeding, deletion was not possible.
On July 27, 2001, a "Formal Response" consisting of three paragraphs was received via email from the Respondent before the official commencement date of the administrative proceeding.
On July 30, 2001, the Complainant was notified that it had not yet submitted an electronic version of the Complaint. It did so on the same date. As the Registrar listed on that Form was incorrect, the Case Manager notified the Complainant and requested an amended Complaint Form. The amended Complaint Form was received in hardcopy on August 3, 2001.
The Case Manager then proceeded to send copies of the Complaint Form and of the amended Complaint Form in accordance with paragraph 2(a) of the ICANN Rules. The Case Manager fulfilled all its responsibilities under that paragraph in forwarding the Complaint and the amended Complaint to the Respondent, and in notifying the Complainant, the concerned Registrar and ICANN on August 6, 2001. This date was the official commencement date of the administrative proceeding. All communications were ultimately received.
The Respondent filed no further response after the Complaint and the amended Complaint were received.
On September 20, 2001, the WIPO Case Manager contacted me, David Lametti, and requested that I act as a single panelist in this case. On September 23, 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 27, 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 10, 2001.
4. Factual Background
The PHILIPS trademark has been registered in The Netherlands by KPENV and its predecessors since 1891, and is now registered in numerous jurisdictions worldwide.
The domain name was registered by the Respondent on April 8, 2000 [Whois search provided by Complainant]. The domain name was registered by the Respondent on April 14, 2000 [Whois search provided by Complainant].
The Complainant's Corporate Intellectual Property Division sent a cease and desist letter to the Respondent on January 12, 2001.
The Complainant initiated proceedings under the Policy with WIPO on June 15, 2001, as set out above.
5. Parties� Contentions
A. Complainant
In order to assess more easily the merits of various arguments, I have re-framed the Complainant's contentions according to the substantive format dictated by the Policy. In doing so I have tried to accurately re-cast the arguments in their best possible light.
The Complainant alleges:
(1) That the domain names and are confusingly similar to a trademark in which the Complainant has rights, as per Policy paragraph 4(a)(i).
The Complainant states that the trademark PHILIPS has been registered in The Netherlands by KPENV or its predecessors since 1891. The mark is now registered in numerous countries worldwide [Annex 3]. The mark PHILIPS is synonymous with a wide spectrum of electric and electronic products, and KPENV has spent a great deal of money and energy supporting the mark.
The Complainant asserts that and are confusingly similar to the PHILIPS trademark. Both names mislead the public as to the authorization, sponsorship, affiliation or connection between the Complainant and the Respondent.
(a)
It is inferred by the Complainant, in the arguments regarding legitimate use by the Respondent, that the misspelling of PHILIPS does not render the domain name any less confusing.
(b)
No specific arguments are made with respect to this domain name and the question of confusing similarity.
(2) That the Respondent has no rights or legitimate interests in the domain names, as per Policy paragraph 4(a)(ii).
The Complainant appears to generally maintain that the Respondent has no trademark entitlement to the contested domain names. The Respondent has no license or is not otherwise permitted to use the words PHILIPS in its domain names. Both names mislead the public as to the authorization, sponsorship, affiliation or connection between the Complainant and the Respondent. The Respondent is seeking commercial gain by wrongfully using the mark to divert and mislead customers to its website. The Respondent is not known by either of the said domain names.
Moreover, the Complainant implies that the Respondent does not meet any of the categories of legitimate interest set out in Policy paragraph 4(c), and in particular that the use of a domain name to divert internet traffic to a site offering similar services (and which includes the names of competitors) is not a bona fide offering of goods or services, or a legitimate non-commercial or fair use.
(a)
The Complainant maintains that the Respondent has shown no plans or preparations to use the domain name.
(b)
In addition to the arguments set out above, the Complainant asserts that the website is linked to the names of competitors, and is thus misleading as to authorization, sponsorship, affiliation or connection between the Complainant and Respondent, and that this is done for commercial gain [Annex 4]. The fact that the current web page states that the web site is temporarily down is further evidence, according to the Complainant, of the fact that the Respondent has no legitimate interest in the domain name. Finally, the fact that the Respondent did not respond to the cease and desist letter is adduced as evidence of no legitimate interest.
3) That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).
Generally, the Complainant asserts that the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in corresponding domain names. The Complainant also infers that the Respondent engages in this type of behaviour and has a provided a list of domain names held by the Respondent [Annex 6]. The Complainant also adduces the failure of the Respondent to reply to the cease and desist letters sent with respect to both domain names.
(a)
The Complainant argues that one can infer that the registration was based on the desire to speculate in the name, with no real intent to use the name in a bona fide manner. One might infer this conclusion from the intentional and slight misspelling of the PHILIPS mark.
(b)
The Complainant asserts that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, internet users to its web site and other web sites of the Complainant's competitors, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site or services thereon. The links to other websites are also alleged to be an explicit display of bad faith.
B. Respondent
The Respondent has in effect made no formal response. The three paragraph email message of July 27, 2001, that is called a "Formal Response", written in the course of attempts to transfer the domain name to the Complainant, contains only one substantive paragraph which makes the following point: that the Respondent has never put the Complainant in an unfavourable position, and in effect asserts the Respondent's good faith.
A previous email of June 20, 2001, also written during the course of the Respondent's attempt to settle the matter, states that Christopher Lynn of Respondent Manageware, a lighting engineer, had intended to provide a lighting informational site for consumers to visit for lighting advice, with portals and gateways to other sites, including those of major lighting companies. He claims to have never slandered or misrepresented the PHILIPS name. Further it was his intention to let the names expire in due course.
6. Discussion and Findings
Let me state at the outset that this dispute should never have reached the point for a decision to be issued. The various exchanges between the Respondent and Complainant contained in the record indicate a clear will on the part of the Respondent to settle the matter amicably, and that it was a combination of misunderstandings and apparently technical problems that caused the breakdown.
It is crucial to note that notwithstanding the Respondent's offer to voluntarily transfer both domain names to the Complainant, this case must be decided on the merits of the various arguments and issues raised under the Policy. Specifically, the Respondent's offer to transfer is not an admission of the Complainant's right, although the offer might have some bearing on the Respondent's good or bad faith.
While there is a rather meagre Formal Response on the part of the Respondent, the Policy envisages that administrative proceedings may take place without any response at all [ICANN Rules paragraph 14(b)]. Even in such cases, and it is effectively the case here, the burden of proving all of the required elements of the case under paragraph 4 -- confusing similarity, non-legitimate connection, and bad faith -- must be borne by the Complainant.
Identical or Confusingly Similar
First, are the domain names and identical or confusingly similar to the name PHILIPS? Each domain must be treated in turn.
(a)
The Complainant has asserted that the mark PHILIPS is over one hundred years old, known worldwide, and has accumulated a great deal of goodwill through long use and advertising. The Respondent has not contested this assertion. The mark PHILIPS therefore can be considered to be what is known as a strong mark, having built up a great deal of goodwill over the century in which it has been associated with electrical and electronic products.
It is now well-established under the Policy that one is to ignore the gTLD in comparing a trademark to a domain name. It is equally well-established that a minor spelling mistake is not enough to differentiate a mark from a domain name for the purposes of determining what is confusingly similar. Similarly, the possessive pronoun "my" is less important to determining the uniqueness of the domain name than the main noun, "phillips". Put another way, it is the word "phillips" which is the distinguishing or distinctive feature of the domain name. As such it is logical to focus on that main word in making a determination.
Given that PHILIPS is such a strong mark, it would thus be fair to conclude that "myphillips" is at the very least confusingly similar, if not effectively identical, to the Complainant's mark. The average internet user would likely confuse "myphillips" with products and services offered by KPENV under the PHILIPS mark.
With respect, then, to , the Panel concludes that the Complainant has proven the requirements of Policy paragraph 4(a)(i).
(b)
This domain name contains three words, "my" "philips" and "lighting". The analysis and conclusion above with respect to the word "my" are equally applicable in this instance. Therefore we are left with the phrase "Philips lighting" as the operative comparator to the Complainant's mark. This phrase, given the additional word "lighting", does not automatically invoke the same degree of intuitive similarity with the mark PHILIPS. That is, the additional word lessens connection to the strong PHILIPS mark. Absent other information, it is highly improbable that the average consumer or internet user would automatically equate the phrase "Philips lighting" with the PHILIPS trademark.
Thus, the Complainant needs to offer arguments and evidence that "lighting" is a crucial component of the PHILIPS mark. However, the Complainant has adduced no evidence or information that would allow the Panel to draw any more substantive inferences on this point. In the Complainant's arguments, it is nowhere even alleged, let alone demonstrated, that Philips sells lighting products. While it is highly likely that KPEVN does sell lighting products under the PHILIPS mark -- given the fact it has launched this dispute -- there is no evidence provided to say how important the sale of lighting products are to the PHILIPS mark, for how long such products have sold under the mark, how much investment has gone into that particular line of products, etc. This evidence is crucial to determining whether the average consumer would confuse the domain name with PHILIPS. Without any such information, the Panel can draw no reasonable inferences and as such can only conclude that the Complainant has failed to prove that the phrase "philips lighting" in this particular domain name is confusingly similar to PHILIPS mark.
With respect, then, to , the Panel concludes that the Complainant has failed to prove the requirements of Policy paragraph 4(a)(i). As all components of paragraph 4(a) must be proven by the Complainant, failure to show confusing similarity is sufficient to defeat the Complainant's entire claim with respect to this domain name.
Rights or Legitimate Interest
The criterion of illegitimacy � or framed in terms of the Respondent, of the determination of the Respondent�s legitimate right or interest � focuses in my view on the objective or relatively objective links that the Respondent has to the domain name in question. These connections might arise either at the outset through a natural or visible connection of the Respondent�s business name, trademark, bona fide offering of goods and services, or bona fide non-commercial use to the domain name. These connections might also develop over time through the nature of the Respondent�s bona fide activities as they relate to the domain name. These connections might be obvious given current uses or practices in the instances just mentioned, or they might be demonstrable, as in the case of planned connections to a domain name for these various bona fide activities in the future.
The question is whether the Respondent, on the evidence, can be shown to have no such connection to � and hence no such legitimate interest or right in � the domain name. Paragraph 4(c) of the Policy gives three examples of circumstances where the Respondent has a legitimate interest: use or planned use in connection with a bona fide offering of goods and services; being commonly known by the domain name; and legitimate non-commercial or fair use, without intent to tarnish the mark or for commercial gain by misleadingly diverting consumers.
In this case, the Complainant has in effect asserted that the Respondent's registration and use does not fall under any of these three examples. The Complainant generally asserts that the Respondent is not commonly known by either domain name, is not authorized or licensed to use the mark, is seeking commercial gain by diverting internet traffic, and is attempting to mislead by inferring some connection to the Complainant.
(a)
It is fair to conclude that there is no objective connection between the Respondent and the operative word in the domain name, "phillips". Given the strength of the mark PHILIPS, it is also fair to conclude that the name was probably meant to draw PHILIP's customers to another website.
However, the Respondent's email of June 20, 2001, indicates that the Respondent, "As a Lighting Engineer who had left a major lighting company, ... had the intent to offer a lighting informational site for consumers to visit for lighting advise, portals to other sites, and information. Including gateways to the major lighting resources (i.e. their websites, etc.) (sic)." The Respondent further contends that there was no intention to tarnish the mark through incorrect representation or slander. In my view, such beneficial consumer information websites would fall within the Policy exemption, provided they did not misrepresent the connection to the product manufacturers, or otherwise run afoul of intellectual property rules.
There is no information from either the Complainant or Respondent as to whether this informational site was to be not-for-profit. The Complainant's Annex 4, a copy of the web site to which the domain names resolved, does not point to any profit motive but only purports to provide information on lighting, and thus seems to confirm the Respondent's legitimate purposes. If the web site is not-for-profit, it is conceivable that such a use could be characterized as a legitimate, bona fide or fair use made of the name under the exemption of Policy paragraph 4(c)(iii). Again, while there is little evidence on the record, it is clear that the Respondent's assertion that he had not intended to misrepresent a connection to PHILIPS has not been countered with any solid evidence by the Complainant. Indeed, Complainant's Annex 4 -- a cryptic picture of a website under construction -- does seem to support the Respondent's contention that he had no intention to mislead or misrepresent. The skeletal web site reproduced in Annex 4 indicates that web site was meant to provide an information service, and that the web site would deal with the products a few different manufacturers (whose sites are linked to the site). The text does not appear to infer that the web site is connected to or authorized by PHILIPS in any way. The text also appears to be laudatory of PHILIPS products and websites.
While there is obviously some doubt on the record, a record that could have benefitted from a substantive Formal Response, the fact remains that under the clear wording of the Policy it is incumbent on the Complainant to prove all aspects of its case. As its stands, although the Complainant knew of the Respondent's contention in the email of a legitimate non-commercial use, the Complainant did not provide adequate proof to support its contentions. This is true even though it had the opportunity to file an amended Complaint Form well after the said email. Indeed, in my view the Complainant in its Complaint Form has failed to make even a prima facie case of non-legitimate interest on the part of the Respondent.
With respect to the domain name , the Panel concludes that the Complainant has not met the requirements of Policy paragraph 4(a)(ii). As all components of paragraph 4(a) must be proven by the Complainant, failure to show no legitimate right or interest is sufficient to defeat the Complainant's entire claim with respect to this domain name.
(b)
While I need not decide this issue for the purposes of the domain name -- the Complainant having failed to show confusing similarity at the outset -- I would like to point out that even if the Panel had concluded that there was confusing similarity, the Complainant, for the reasons outlined in the preceding paragraphs, would have failed to show no legitimate interest on the part of the Respondent. The Respondent's legitimate connection would be even stronger to the domain name in question than in the previous case, since the planned website was meant to offer lighting information.
Bad Faith
Given the previous analysis, it is unnecessary to pronounce on the question of bad faith. However, it is still incumbent on me to draw several conclusions in this matter.
Unlike illegitimacy, the criterion of bad faith goes to the circumstances surrounding the registration and use of the domain name by the Respondent, and focuses on the Respondent�s intentions, either as they are stated explicitly or as can be inferred from the Respondent�s actions and the facts of the matter. A list of partial criteria is articulated at paragraph 4(b) of the Policy, and the burden of proving bad faith falls on the Complainant.
Regarding both domain names, there is no evidence adduced by the Complainant that the Respondent registered the names merely to prevent the Complainant from having its mark reflected in corresponding domain names. Moreover, there is insufficient evidence that the Respondent was engaged routinely in this sort of conduct. The list of domain names owned by the Respondent is insufficient for the purposes of drawing this conclusion. Indeed, to the extent that a number of the registered domains incorporate the word "lighting", they seem to indicate the opposite conclusion: the Respondent was registering domain names for legitimate, lighting-related purposes [Annex 6]. In addition, there is no evidence that the Respondent ever attempted to sell the domain names to anyone, and especially not to the Complainant. When notified by the Complainant in the cease and desist letter [Annex 5] -- which states the Complainant's desire that the Respondent discontinue the use of its domain names -- the Respondent claims to have responded by in fact discontinuing the use of the domain names [Email of June 20, 2001]. This claim is supported by the Complainant's statement that the web pages now display a statement that they are "temporarily down". Finally, the Complainant has failed to show that there is no legitimate interest on the part of the Respondent; under these circumstances, the Complainant has not made a sufficient case for bad faith on the part of the Respondent, and in particular helps to explain -- if not justify -- the Respondent's failure to formally respond to the cease and desist letter.
The Panel also notes that it is clear on the record that the Respondent acted entirely in good faith in his willingness to voluntarily delete or subsequently transfer the domain names. These overtures appear to have been scuttled by the Complainant's impatience, and perhaps even by a lack of cooperation on its part in failing to provide required contact information to NSI.
The Panel would thus have concluded that the Complainant had failed to meet the criteria enunciated in Policy paragraph 4(b), and thus the requirements of Policy paragraph 4(a)(iii). The Respondent's registration and use of and has not been shown to have been done in bad faith.
7. Decision
(a)
The Panel concludes on the evidence presented regarding the domain name :
1. That the domain name is confusingly similar to the PHILIPS trademark of the Complainant, and in which the Complainant has rights protected by the Policy.
However, the Panel concludes that the Complainant has failed to show:
2. That the Respondent has no rights or legitimate interests in the domain name; or
3. That the Respondent has registered and used the domain name in bad faith.
Therefore, the Complainant has failed to make its case regarding this domain name, and pursuant to paragraphs 4(i) of the Policy, the Panel orders that the domain name remain with the Respondent.
(b)
The Panel concludes on the evidence presented regarding the domain name :
1. That the domain name is not confusingly similar to the PHILIPS trademark of the Complainant.
In addition, the Panel concludes that the Complainant has failed to show:
2. That the Respondent has no rights or legitimate interests in the domain name; or
3. That the Respondent has registered and used the domain name in bad faith.
Therefore, the Complainant has failed to make its case regarding this domain name, and pursuant to paragraphs 4(i) of the Policy, the Panel orders that the domain name remain with the Respondent.
David Lametti
Sole Panelist
Dated: October 10, 2001
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