The Complainant is Koninklijke Philips Electronics N.V of Eindhoven Netherlands, internally represented Netherlands.
The Respondent is Maksim of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 8, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On October 18, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on November 29, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant is the manufacturer of a variety of goods, from consumer electronic to domestic appliances, and from security systems to semiconductors. The Complainant offers consumers around the world products in the areas of healthcare, lighting, consumer lifestyle and technology. In 2009, the complainant was one of the largest global diversified industrial companies.
The trademark PHILIPS was registered by the predecessors of Koninklijke Philips Electronics NV in the Netherlands. The Complainant has been using the trademark PHILIPS for its business activities since 1891. The PHILIPS trademark has been registered in more than 180 countries in the world, including Ukraine. The Complainant is the proprietor of the International trademark registration No. 9931346 (also designated to Ukraine), registered on June 13, 2008, International trademark registration No. 579620 (also designated to Ukraine), registered on November 21, 1991, International trademark registration No. 469042 (also designated to Ukraine), registered on May 17, 1982, all registered in many classes of the International Classification of Goods and Services. The Ukrainian word trademark PHILIPS No. 2632 has been registered on November 30, 1993 in classes 7, 8, 9, 10 and 11 of the International Classification of Goods and Services.
The disputed domain name was registered on January 20, 2009.
In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant argues that disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1)).
The Complainant is the holder of several PHILIPS trademarks which have been registered in more than 180 countries in the world, including the Ukraine and of the International trademark registration No. 9931346, registered on June 13, 2008; International trademark registration No. 579620, registered on November 21, 1991 and International trademark registration No. 469042, registered on May 17, 1982. All these International trademark registrations included Ukraine and were registered in many classes of the International Classification of Goods and Services. The Ukrainian word trademark PHILIPS No. 2632 was registered on November 30, 1993 in classes 7, 8, 9, 10 and 11 of the International Classification of Goods and Services.
The Complainant further contends that the disputed domain name wholly incorporates the Complainant’s registered trademarks and therefore is sufficient to establish identical or confusing similarity for purpose of paragraph 4(a)(i) of the Policy, despite the addition in the domain name of other words to such marks. The disputed domain name is a simple junction of the Complainant’s trademark PHILIPS and the country code “-ua” for Ukraine. Such a suffix does not detract from the overall impression of the dominant part of the name, namely the trademark being recognized as identifying the goods as those of the Complainant (Oki Data Americas, Inc v. ASD, Inc,WIPO Case No. D2001-0903).
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has used the PHILIPS mark since 1883 and according to its best knowledge and belief the PHILIPS designation is neither a generic term nor a commonly used term in any language used in Ukraine. Furthermore the Complainant argues that the Respondent is not authorized by the Complainant to use the PHILIPS trademark and that the Complainant has neither licensed not otherwise permitted the Respondent to use the PHILIPS mark or to apply for any domain name incorporating this design mark. The Respondent did not react upon the cease and desist letter of the Complainant. As the Respondent did not take the opportunity to address the allegations, it is a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Moreover the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Respondent’s domain name was registered on January 20, 2009, i.e. well beyond the dates on which the Complainant obtained the trademark rights in the PHILIPS mark and the date on which the Complainant first commenced using the trademark in relation to its goods and services. The Respondent uses and registered the disputed domain name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or services on its web site or location. The web site to which the disputed domain name resolves is a sales web site. It calls itself “PHILIPS Corporate Shop, welcoming you in corporate identity internet shopping Philips” and is devoted in selling and servicing various Philips products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s trademark PHILIPS, which has been registered in more than 180 countries in the world, including in Ukraine and to the International trademark registration No. 9931346, registered on June 13, 2008, International trademark registration No. 579620, registered on November 21, 1991 and International trademark registration No. 469042, registered on May 17, 1982. All these International trademark registrations include Ukraine and were registered in many classes of the International Classification of Goods and Services. The Ukrainian word mark PHILIPS No. 2632 was registered on November 30, 1993 in classes 7, 8, 9, 10 and 11 of the International Classification of Goods and Services.
Non-distinctive inclusion of the gTLD suffix “.com” and the country code “ua” for Ukraine do not avoid confusing similarity of disputed domain name and trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310; Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; Oki Data Americas, Inc v. ASD, INC,WIPO Case No. D2001-0903).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint and that none of the circumstances mentioned in the Policy, paragraph 4(c), are met. Indeed, in the Panel’s view before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Complainant used the PHILIPS mark since 1883 and according its best knowledge and belief the PHILIPS mark is neither a generic term nor a commonly used term in any language used in Ukraine. Moreover the Respondent is not authorized by the Complainant to use the PHILIPS trademark and the Complainant has neither licensed not otherwise permitted the Respondent to use the PHILIPS mark or to apply for any domain name incorporating this mark. The Respondent did not react upon the cease and desist letter of the Complainant. As the Respondent did not take the opportunity to address the allegations, it has not rebutted the prima facie case of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name does not correspond to the name of the Respondent and there is nothing in the record to indicate that the Respondent was commonly known as Philips.
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his web site or of a product or service on that web site or location.
The disputed domain name was registered on January 20, 2009, here after the dates on which the Complainant obtained the trademark rights in the PHILIPS mark and the date on which the Complainant first commenced using the trademark in relation to its goods and services. The Panel accepts the arguments of the Complainant that the Respondent uses and registered disputed domain name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or services on its web site or location. The web site to which the disputed domain name resolves appears to be a sales web site. Internet users, while searching for information on the Complainant’s products, are likely to be confusingly led to the web site connected to the disputed domain name. In such a way, the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant. Other UDRP decisions have stated that the registration and use of a domain name to re-direct Internet users to web sites offering Complainant’s or competing products amount to bad faith registration and use under the Policy. Such conduct has been found to amount to bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658; Encyclopaedia Britannica Inc. v. S,WIPO Case No. D2000-0753; Netwizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768; Zwack Unicum Rt. v. Erica J. Duna,WIPO Case No. D2000-0037; Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: December 13, 2010
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