WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. NicNax
Case No. D2001-1245
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands, and is represented by Mr. J.J.E.C.G Vandekerckhove, Postbus 20, Eindhoven, The Netherlands.
The Respondent is NicNax, 1 York House, 4 Dequincey Mews, London E16 1SU, United Kingdom, represented by Justin Everett, 1 York House, 4 Dequincey Mews, London, United Kingdom.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is MelbourneIT, King Street, Melbourne, Australia.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on October 15, 2001 and hardcopies were received by the Center on October 18, 2001. The Center acknowledged receipt of the Complaint on October 16, 2001.
On October 18, 2001, the Center sent to MelbourneIT a request for verification of registration data. On October 19, MelbourneIT confirmed it is the Registrar, that the Respondent is the Registrant of the domain name , that the administrative, contact is Justin Everett, 1 York House, 4 Dequincey Mews, London E16 1SU, United Kingdom and that the technical contact is Verio Hostmaster, 49 Atalanta Street, Fulham SW6 6TU, London, United Kingdom.
WIPO verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On October 22, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On November 10, 2001, the Center received a Response by email and on November 14, 2001, it acknowledged receipt of the Response.
On November 26, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is December 10, 2001.
4. Factual Background
A. Complainant
The Complainant is an internationally leading company in the field of consumer electronics and domestic appliances. It is also known as a manufacturer of security systems and semiconductors.
The Complainant is the owner of registrations for the trademark "Philips" in many countries all over the world, including the Benelux countries, Great Britain and the United States of America, for products belonging to its before mentioned activities. The Complainant has not submitted any evidence for these trademark registrations (such as copies of certificates). However, the Respondent, in its Response, states that it does not dispute that the Complainant has been the registered owner of the trademark "Philips" in many countries since 1891. Furthermore, the trademark "Philips" is clearly an internationally well-known mark in the field of consumer electronics and household appliances. It enjoys therefore, even in countries where it may not be registered, the far-reaching protection of a well-known mark.
B. Respondent
The Respondent registered on February 11, 2000, the domain name , without making any use of it.
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
On January 18, 2001, Ms. Samanta Frida of the Complainant�s Corporate Intellectual Property Unit wrote a letter to the Respondent, requesting that the Respondent discontinue use of the domain name and proposed to discuss the matter in order to accomplish an early end to that use of "philips" (evidenced by Annex 4 to the Complaint). Apparently, the Respondent did not respond to this letter and the first contact between the parties took place on May 29, 2001, when according to the Respondent, Ms. Samanta Frida of the Complainant spoke with Mr. Michael Molyneux of the Respondent. At some point in time after that phone conversation, the Respondent orally offered to sell the domain name to the Complainant for �25, 000. This offer was, in response to a letter of the Complainant dated July 27, 2001, confirmed and explained in more detail in a letter of the Respondent dated September 5, 2001 (Annex 5 of the Complaint).
B. Respondent
Whilst the Respondent admits to having orally offered the transfer of the domain name for the sum of �25, 000, it interprets its letter dated September 5, 2001, as being a withdrawal of that offer ("no offers by either party are now in existence").
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name is not identical with the trademark "Philips" in which the Complainant has rights. However, the domain name integrates in its entirety the word mark PHILIPS, followed by the descriptive term "sales" (the generic tld indicator ".com" cannot be taken into consideration when judging confusing similarity). Such combination of the trademark PHILIPS with the term "sales" is under trademark law principles likely to be understood by consumers as being a variation of the trademark PHILIPS and, when used as a domain name, it is likely to be understood as providing a link to a website belonging to a sales department of the Complainant or to a website of an authorized sales agent of the Complainant. The domain name is therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has never used the domain name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. No doubt, the Respondent is not known at all under the name , since it never became active under that name. Finally, the Respondent itself has not submitted to make or to intend to make a legitimate noncommercial use of the domain name.
The Respondent submits to have registered the domain name to provide an Internet outlet for Philip Holloway, a friend of its founders. This submission, which is not accompanied by any facts or evidence of the existence of that person or of preparations for a website to be established for that person, cannot be taken serious. It is contradicted by the explanations of the Respondent in its letter dated September 5, 2001, (Annex 5 of the Complaint) according to which the Respondent stopped further development of the website after having received the Complainant�s letter dated January 18, 2001, which was written nearly one year after the Respondent had registered the domain name (in that letter no reference to a Philip Holloway is made).
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name .
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b) (i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent�s out of pocket expenses in registering the domain name. This test is clearly fulfilled, since the Respondent admits to have offered to transfer the domain name to the Complainant for the sum of �25 000. The Respondent argues that with its letter dated September 11, 2001, it had withdrawn this offer. However, in that letter, the Respondent only accepted that the Complainant had rejected the proposal of �25 000 and gave a breakdown of how any figure proposed by the Respondent in future might be calculated. In that calculation the Respondent counted �5000 for the creation of a website, which apparently never took place (no evidence was ever submitted supporting that statement). Furthermore, it counted �4500 for loss of commercial good will, despite having never used the domain name, and of �3000 for distress and inconvenience. Any of these amounts alone is in excess of the Respondent�s out of pocket expenses. Furthermore, the Respondent underlined that these costs would increase as time passed. It concluded stating that the time had come for the Complainant to say whether it wanted the domain name.
This is clearly not a withdrawal of the offer to sell the domain name to the Complainant. On the contrary, the Respondent made it clear that the amount of �25,000 was the minimum it expected and that in the future it might request a higher amount if the Complainant did not accept the offer now. The fact that the Respondent, for a year, did not contact the Complainant, does not exclude bad faith. It has repeatedly been decided that bad faith can also be found when the Registrant waits passively for contacts from the right holder before demanding a premium for sale of the domain name. That is exactly what happened in this case since the Respondent, in his Response or in his letters to the Complainant, did not indicate any concrete plans or preparations for a use of the domain name and did not submit any evidence for such use.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(I) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: December 10, 2001
Full & Egal Universal Law Academy