The Complainant is Signify Holding B.V., Netherlands, represented internally.
The Respondent is WhoisGuard Protected, WhoisGuard, Tnc., Panama / Suresh Jayaraju, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2020, 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 the same day. 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 September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on October 1, 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. 4. Factual Background The date of the Domain Name registration was confirmed by the Registrar to be July 8, 2020. The Complainant’s roots date back more than 125 years to the company founded as Philips & Co in 1891 in Eindhoven, Netherlands. This company, which later became Koninklijke Philips Electronics N.V. and ultimately became Koninklijke Philips N.V., begun manufacturing carbon-filament lamps and by the turn of the century, had become one of the largest producers in Europe. 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 uses the Philips brand under a licensing agreement with Koninklijke Philips N.V. 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 registered in the name of Koninklijke Philips N.V. The trademark PHILIPS is protected as a registered trademark in multiple jurisdictions worldwide, including: Europen Union Trademark (“EUTM”) Registration No. 000205971 in multiple classes, registered on June 13, 2008; International Reg. No. 0991346 for PHILIPS extended in the European Union for multiple classes registered June 13, 2008; and India Reg. No. 1685223 for PHILIPS registered on May 8, 2008. The Panel also conducted an independent search to determine that the Domain Name resolves to a website advertising disinfection systems against Covid-19 based on UV-C under the brand Philips, and offering goods and services that are closely related to or directly competitive to the goods offered by the Complainant. Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant The Complainant claims that the PHILIPS trademark is one of the most widely recognized brands in the world, and has been ranked by Interbrand as one of the Best Global Brands with sales in the billions of Euros. The Complainant is a global company with sales of EUR 6.4 billion in 2018, approximately 29,000 employees and a presence in over 70 countries. The Complainant makes use of the website connected to “www.lighting.philips.com” to promote it Philips-branded products, such as UV-C lamps. The Complainant contends firstly, that the Domain Name registered by the Respondent is identical or confusingly similar to the registered PHILIPS trademark in which the Complainant has rights by reason of the numerous trademark registrations around the world as mentioned above. The Complainant contends, secondly, that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Respondent has not been authorized or licensed by the Complainant to use the PHILIPS trademark. Neither is the Respondent affiliated with the Complainant. The Complainant contents that the website at the Domain Name sells Philips “UV-C Disinfection Systems” and the Respondent makes use of the tradename “UVC Philips” and claims to be a Philips “India authorised dealer” and an “authorised reseller of Philips India”. The Complainant argues that the Respondent is not providing a bona fide offering of goods and services and fails under the third element of the Oki Data criteria in that the Respondent does not accurately disclose its relationship with the trademark owner, and misleads people into the impression that Respondent is an authorized dealer – which is not the case. The Respondent falsely claiming that it is an authorized dealer is to take unfair commercial advantage of the PHILIPS trademark and falsely suggest an affiliation or sponsorship between the parties. The Respondent has received no authorization or consent from the Complainant to use the PHILIPS mark in any way or incorporate it in a domain name. The Complainant contends, thirdly, that the Domain Name has been registered and used in bad faith. Further, the Respondent registered the Domain Name shortly after the global announcement on June 16, 2020, by the Complainant and Boston University in which both parties confirmed the effectiveness of Signify’s Philips-branded UV-C light sources on inactivating the virus that causes COVID-19. The registration came within one week from the release of the Complainant’s first Philips-branded mobile UV-C disinfection unity in India on July 1, 2020, which was widely covered in the local Indian media. The Complainant asserts that there cannot be any doubt that the Respondent was aware of the reputation of the trademark PHILIPS prior to the registration of the Domain Name. To summarize the Complaint, the Complainant is the authorized licensee of multiple registrations for the trademark PHILIPS, in respect of a very broad range of goods and services. The Domain Name is confusingly similar to the trademark PHILIPS. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar This Panel finds that the Complainant has satisfactorily proven it has rights in the registered trademark PHILIPS. The Panel accepts the Complainant’s contentions, based on the evidence produced, and absent any response from the Respondent, that the trademark PHILIPS is a well-known mark with worldwide reputation in a broad range of goods and equipment, including in the area of lighting and UV-C products. The Panel in addition finds that the Complainant is authorized to bring this UDRP action. Further, the Panel finds that the Domain Name is confusingly similar to the PHILIPS trademark. The Panel finds that the addition of the term “uvc” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the PHILIPS trademark. See section 1.8. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use the PHILIPS trademarks. The Panel also agrees with the Complainant’s argument that the Respondent did not meet the OKI Data criteria for bona fide use of the PHILIPS trademark. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded that the Respondent deliberately registered the Domain Name incorporating the Philips brand for UV-C disinfection system, which is confusingly similar to the PHILIPS trademark to create a misleading and fraudulent impression of association and confusion with the Complainant. The Panel finds that the Respondent has registered the Domain Name with full knowledge of the PHILIPS trademark and uses it for the purpose of misleading and diverting Internet traffic. In addition, it has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. V. Ashton-Hall Computer Services,WIPO Case No. D2000-0177. The Panel finds that by registering the Domain Name for its website and using the website to offer goods that are closely related to or directly competitive to the goods offered by the Complainant and utilizing the PHILIPS trademark, the Respondent was clearly seeking to profit from the confusion created by the inclusion of the PHILIPS mark in the Domain Name. The Panel finds that by intentionally attempting to attract, for commercial gain, users to the Respondent’s website through creating a likelihood of confusion with the PHILIPS mark, the Respondent use of the Domain Name is in bad faith. Further, the Panel finds that the registration of the Domain Name with the use of the privacy registration for supports such inference. This is consistent with section 3.6 of the WIPO Overview 3.0, which states that: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.” In this case, no such inference was refuted by the Respondent. Given the evidence of the Complainant’s prior rights in the trademark, and the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the launch of its UV-C disinfection system under the PHILIPS trademark, the Panel finds that the Complainant has satisfied the third element that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 Domain Name Ellen B Shankman
Sole Panelist
Date: October 14, 2020
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