The Complainant is Signify Holding B.V., Netherlands, represented by P.D. Verweij, Netherlands.
The Respondent is Private Registration / Tomas Baran, Slovakia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 23, 2019. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. The Respondent did not submit any response by this date. Accordingly, the Center notified the Respondent’s default on January 28, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on January 30, 2020. 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. On February 9, 2020, the Respondent filed a Response accompanied by an apology for its lateness and a request that the Panel admit this Response. The Panel will do so as it does not consider any prejudice to the Complainant results. 4. Factual Background The relevant facts are straightforward and can be summarized as follows. The Complainant is a large international manufacturer of electrical lighting. Its origins are in the well known Philips group of companies. In 2016 the Complainant split off from Koninklijke Philips N.V. as Philips Lighting Holding B.V.. In February 2019 Philips Lighting Holding B.V. changed its name into Signify Holding B.V. The Complainant continues to use the PHILIPS brand, under a licensing agreement with Koninklijke Philips N.V., and the Complainant is entitled to carry out brand protection for the Philips brand for lighting products and services (see below). One of the Complainant’ s product ranges is what it describes as the “Philips Hue proposition”. This is a range of home-connected lighting systems. This was the first such system to be launched on a substantial scale and has been very successful. Koninklijke Philips N.V. and the Complainant entered into a trademark license agreement pursuant to which the Complainant is entitled, in all jurisdictions, to enforce in connection to lighting products and services. The trademark rights for PHILIPS are registered in the name of Koninklijke Philips N.V., and numerous such trademarks exist, see for example European Union Registration No. 000205971, with a filing date of April 1, 1996. They are referred to collectively in this decision as the “PHILIPS trademark”. The Complainant owns various trademarks for or which include the term “hue”. The earliest of these is international registration 11137042 dated October 25, 2012. This trademark was based on an earlier Belgium trademark dated August 10, 2012. The various Hue trademarks are referred to collectively in this decision as the “HUE trademark”. The Disputed Domain Name was originally registered on October 29, 2012. This was the day that the Complainant publicly announced the launch of its Hue product. The Disputed Domain Name resolves to a website (the “Respondent’s Website”) which provides a forum for participants to exchange information about the Philips Hue range of products including for example technical information, ideas as to how the products might be used and so on. The evidence filed with the Complaint shows that in the past the Respondent’s Website carried items for sale in the form of click through links to products available for sale on the well known Amazon website. Some of these items were the Complainant’s products whilst others were made by third parties. As appears from the Response (see below) this material has now been removed from the Respondent’s Website (although there is still a largely empty “For Sale” page) and it now comprises, so far as the Panel can determine, a noncommercial forum site. It contains the word “unofficial” above the words Philips Hue forum in the page header and also a further (not particularly prominent) disclaimer, generally only visible by scrolling down to the footer, which reads “This website has no direct affiliation with Signify or Philips Hue”. 5. Parties’ Contentions A. Complainant The Complainant’s case is set out at some length and cites numerous previous WIPO cases. The Panel does not consider it necessary to repeat that detail here. In summary the Complainant’s case is as follows. The Complainant says that the Disputed Domain Name is confusingly similar to its PHILIPS and HUE trademarks as it simply combines the two trademarks. The Complainant says that the Respondent has no rights or legitimate interests in the terms “Philips” or “Hue”. The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says the term “Philipshue” was deliberately chosen to take advantage of the Complainant’s newly announced product and clearly amounts to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s Website or by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. B. Respondent The Respondent says that the Respondent’s Website is a “solely fan web site and forum”. He says it has hundreds of thousands of visitors and users. He says he had no control over the Amazon links appearing on the website but has in any case now removed them. He then cites in considerable detail Miranda Kerr v. orangesarecool.comWIPO Case No. D2013-0553 which he says is another case concerning a fan site where the complaint was denied. He says the principles in that case should apply to the present facts. It is convenient to note at this point that the Respondent is simply wrong about this case. It is a case where the complaint succeeded. The various quotations the Respondent sets out in detail in the Response are in fact quotations from the submissions made by the respondent in that case, not the UDRP panel’s reasoning. It follows that the case does not provide the authority that the Respondent suggests. It is also convenient to note that the Respondent appears to have assumed that because the Court of Mutual jurisdiction in accordance with the Policy and the Rules is located in the United States of America (“US”) that means that considerations of US law are applicable to this proceeding, and the Complainant is required to show various US trademark rights which predate the registration of the Disputed Domain Name. That is not the correct approach. The Policy is applicable in accordance with its own terms and it is generally neither necessary nor appropriate to seek to apply the law of a specific jurisdiction to the requirements the Complainant has to establish. The Respondent focuses on the date of the Complainant’s US registration of the Hue trademark and says this was not filed until 20, January 2017 which was after the date he acquired the Disputed Domain Name – which he says was occurred in 2015. The Respondent disputes that an Internet user would expect the Disputed Domain Name to resolve to an official website of the Complainant, because it has been used independently since 2012. He also says that in any event the disclaimer on the Respondent’s Website would dispel any confusion. The Respondent does not dispute that Philips is a well known trademark but says the Disputed Domain Name is well known around the world as being linked to an unofficial well recognised fan site and blog. The Respondent says he has a legitimate interest pursuant to the well known “Oki Data” criteria. He says the service he provides is a forum to discuss the Complainant’s products and that service is funded by advertising revenue with “no to minimal profit” but it is not commercial. The Respondent cites at some length various US federal trademark cases. The Panel does not consider these to be relevant to a decision here. The Response also states that “The Respondent does not consent to the remedy requested by the Complainant. Respondent is however open to negotiations regarding this matter”. 6. Discussion and Findings Preliminary Matters The Panel notes this is a case where one Respondent (“Private Registration”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be Tomas Baran and references to “the Respondent” are to that person. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in both the PHILIPS and HUE trademarks. The Panel considers the Complainant’s status as a licensee of the Philips trademark provides it with standing in this regard. See WIPO Overview 3.0 at section 1.4.1: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”. The Panel finds the Disputed Domain Name is confusingly similar to these trademarks. The Respondent has simply taken two of the Complainant’s trademarks and combined them in a manner which manifestly continues to include the Complainant’s individual trademarks as obvious references within the Disputed Domain Name. As stated in section 1.12 of WIPO Overview 3.0, it is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain another distinctive mark: “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., It does not matter that most of the HUE trademarks relied upon are device marks. They all feature the word “Hue” prominently. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question, see for example EFG Bank European Financial Group SA v Jacob Foundation,WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp.,WIPO Case No. D2001-0031. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The Panel rejects the Respondent’s argument that the registration date of the Complainant’s US trademark HUE is of key relevance. That is not correct. It is clear that others of the Complainant’s HUE trademarks predate both the date the Disputed Domain Name was registered and the date the Respondent says he acquired it. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the terms “Philips” and “Hue” are, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation in the context of connected lighting systems. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial 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 has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use PHILIPS or HUE trademarks. The Complainant has prior rights in the PHILIPS and HUE trademarks which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455). The Respondent in effect says (iii) applies and that he is making a legitimate noncommercial 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. For the purposes of assessing this issue the Panel is prepared to assume (in the Respondent’s favour) that it should be considered in relation to how the Respondent’s Website now appears, i.e., after his removal of commercial click through links. He says that the Website is simply a fan site where technical enthusiasts who are interested in the Complainant’s HUE product range can exchange information and ideas. The Panel in its discretion has visited the Respondent’s Website and accepts that is an accurate characterization of its content. At the time of the Panel’s visit the majority of recent posts appeared to be forum users asking technical queries about HUE products they were using and seeking assistance from other forum users in resolving those queries. The Panel is not sure that it is correct to describe this as a “fan” site as such but accepts that the general principles applicable to such sites are relevant here. The question is whether a site of this nature establishes a legitimate interest? The Panel notes and agrees with the views discussed in WIPO Overview 3.0 in this regard at section 2.7 “Does a fan site support respondent rights or legitimate interests in a domain name?” as follows “Where the domain name is not identical to the complainant’s trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., And at section 2.7.2: “Where a domain name which is identical to a trademark (i.e., In the present case the Panel considers the principles in 2.7.2 apply as the Disputed Domain Name is identical to a combination of two of the Complainant’s trademarks. The Panel considers it is highly likely that a domain name comprising the term “philipshue” would be misunderstood by Internet users as being a domain name belonging to the trademark owner or somehow sponsored or endorsed by the trademark owner. It seems to the Panel entirely likely that Internet users seeking information about the Philips Hue range of products would think that a website linked to a domain name which comprises solely the words “philipshue” was a website operated by or with the permission of the Complainant. The Panel notes that different considerations would likely apply if the Disputed Domain Name combined the terms “Philips” and “Hue” with a modifying word clearly indicating the nature of the Respondent’s Website. As noted in WIPO Overview 3.0 at section 2.7.3 “Where the domain name is not identical to the complainant’s trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., The Panel also notes that the Respondent argues he has the benefit of the well known Oki Data principles as he is providing services relating to the Complainant’s products. The difficulty with that argument is that it generally does not apply where the domain name in question is identical to the Complainant’s trademark (or here two trademarks). As WIPO Overview 3.0 states at section 2.8.2 “Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., ‘parts’, ‘repairs’, or ‘location’), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark”. The Panel considers that there is a misrepresentation here and hence the Oki Data principles do not apply to establish a legitimate interest. Moreover, it is not clear that a claimed fan site would normally fall under the Oki Data principles which are normally geared forwards commercial sites. The Panel therefore finds that the Respondent has failed to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (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 web site 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 web site or location or of a product or service on your web site or location. In the present case, the Complainant seems to have assumed the Respondent was the original registrant of the Disputed Domain Name in 2012. The Respondent says he only acquired it in 2015 although he has not provided any evidence confirming this was the case. Ultimately the Panel does not think it matters so the Panel will assume the Respondent’s statement is correct. The Respondent manifestly acquired the Disputed Domain name because it referenced the Complainant’s Hue product range. He must have appreciated in doing so he was selecting the name of the manufacturer in combination with the name of its product range. His argument that there was no subsisting US trademark registration for the term “Hue” at this date is beside the point – he clearly did not obtain a domain name which included the term “Hue” by chance – he did so precisely because it referenced the Complainant’s product range of that name. The Panel is prepared to infer in the Respondent’s favour that he did intend to operate a forum site for enthusiasts. The Panel is less willing to infer that at least some element of commercial gain was not the motivation, the Respondent clearly included within the site a mechanism which provided click through links for would be purchasers of Hue products, and other third party products. The Panel does not understand the Respondent’s argument that he was not responsible for these links. The Panel can well accept that the precise content of the links may have been driven by algorithms and not directly controlled by the Respondent, but he must have caused the underlying mechanism that led to these links being deployed. The fact that following receipt of the Complaint he has removed these links confirms this is the case. The Respondent suggests the revenues earned from this activity were incidental but has not provided any evidence to confirm this was the case. At the same time he claims that his website has “Hundreds of thousands of visitors and users”. The Panel infers that at least some of these visitors and users are likely to have followed the links in question and that as a result the Respondent earned revenue. Whether or not it was modest or less than the costs of operating the Respondent’s Website the Panel cannot determine. In any event it is well established that registration of a well known trade mark as a domain name is itself likely to give rise to a finding of bad faith – see for example Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Where the UDRP panel stated: “Moreover, this Panel finds, as a previous WIPO panel has already found, that the appropriation of the well-known PEPSI mark in a domain name constitutes bad faith See Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (July 30, 2002) (‘blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith’). See also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). The Panel considers the same principles apply here – the Respondent chose to obtain a domain name which combined the PHILIPS trademark (which the Respondent concedes is well known) with the name of one of its major product ranges, without any additional adornment. That in the Panel’s view amounts to bad faith. So far as the disclaimer and “unofficial” wording on the Respondent’s Website are concerned the Panel does not consider this assists the Respondent. This issue is discussed in WIPO Overview 3.0 at section 3.7 : “How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith?” “In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant’s mark only (see Oki Data and its progeny discussed at 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users. On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” The Panel remains of the view that the Disputed Domain Name is by its very nature likely to attract users who are seeking an official or authorised site operated by or with the permission of the Complainant. The Respondent says his site has “hundreds of thousands of users and visitors”. That may be so (although no evidence corroborating this has been provided) but without knowing how or why those individuals reached the Respondent’s Website it is impossible to conclude that it is well known worldwide as an unofficial site. It seems to the Panel that some of such individuals will likely have arrived at the website because of the confusing nature of the Disputed Domain Name. The disclaimer seems to the Panel to be an attempt to dispel confusion which arose because of the nature of the Disputed Domain Name and in effect acknowledges such confusion is likely. It does not alter the Panel’s analysis of bad faith. Finally the Panel also notes the Respondent’s statement in the Response that “The Respondent does not consent to the remedy requested by the Complainant. Respondent is however open to negotiations regarding this matter”. This seems to the Panel to be an indication that the Respondent would be open to selling the Disputed Domain Name to the Complainant if it made an offer the Respondent considered sufficient. The Panel accepts the Respondent has not previously solicited any offer from the Complainant but this reference nevertheless seems to add further weight to a finding of bad faith. The Panel again notes that had the Disputed Domain Name combined the PHILIPS HUE trademarks with a suitable distinguishing term different considerations would have arisen and given the claimed use of the corresponding website the result would not necessarily have been the same. As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Nick J. Gardner
Sole Panelist
Date: February 17, 2020
Full & Egal Universal Law Academy