The Complainant is Koninklijke Philips Electronics N.V. of Eindhoven, Netherlands, represented internally.
The Respondent is Philip Vlasov of Saint-Petersburg, Russian Federation.
The disputed domain name <philips-shop.com> (“the Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 2012, 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 January 9, 2012 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 amended Complaint on January 10, 2012.
On January 10, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Russian. The same day the Complainant requested English to be the language of the proceeding. The Respondent did not submit its comments.
The Center verified that the Complaint together with the amended 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 in both English and Russian the Respondent of the Complaint, and the proceedings commenced on January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 21, 2012. 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.
The Complainant is a Dutch company that manufactures a variety of goods, including electronics, domestic appliances, security systems and semi-conductors.
The Complainant is the owner of many trademark registrations in the PHILIPS trademark, including international trademark registration No. 991346 of June 13, 2008; international trademark registration No. 579620 of November 21, 1999 and European community trademark registration No. 205971 of April 12, 1999.
The PHILIPS trademark is a well-known trademark. According to the 2009 Ranking of Interbrand of the Best Global Brands, the PHILIPS brand was ranked no. 42.
The Complainant owns the domain name <philips.com> that promotes its goods in many countries. According to the Byte Level Research, the “www.philips.com” website was recognized as the fourth best global website for 2010.
The Respondent is Philip Vlasov domiciled in the Russian Federation. The Domain Name was registered on December 15, 2005, using privacy services provided by DomainProtect. Until recently, the Domain Name resolved to a website hosting sponsored links to websites offering the goods and services of both the Complainant and its competitors. Currently, the Domain Name resolves to an empty web page.
The Complainant claims that it is a Dutch company that manufactures a variety of goods, from electronics to domestic appliances, and from security systems to semi-conductors. The Complainant alleges that it has been using the PHILIPS trademark since 1891.
The Complainant claims that it is one of the largest global diversified industrial companies, with sales in 2009 of EUR 23,189 million, and with 116,000 employees. The Complainant alleges that it is globally present with manufacturing sites in 28 countries, and sales outlets in 150 countries. The Complainant further claims that in 2009, its research and development expenditure was EUR 1.631 million, and that its marketing expenses were EUR 804 million.
The Complainant claims that the PHILIPS trademark is a famous brand, which is one of the most widely recognized identities in the word. The Complainant claims that according to the 2009 Ranking of Interbrand of the Best Global Brands, the PHILIPS brand was ranked no. 42.
The Complainant claims that it owns the domain name <philips.com> that promotes its goods in many countries. According to the Complainant, Byte Level Research recognized the “www.philips.com” website as the fourth best global website for 2010.
The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s PHILIPS trademark. The Complainant alleges that it is the owner of many trademark registrations in the PHILIPS trademark, including international trademark registration No. 991346 of June 13, 2008; international trademark registration No. 579620 of November 21, 1999 and European community trademark registration No. 205971 of April 12, 1999. The Complainant further claims that the PHILIPS trademark has been registered in more than 180 countries. The Complainant claims that the Domain Name wholly incorporates its trademark and adds the descriptive word “shop”, but that neither the addition of the descriptive word “shop” nor the addition of the gTLD “.com” to the PHILIPS trademark in the Domain Name dissipates the confusion with its trademark. According to the Complainant, the addition of the word “shop” even adds to the confusion because it creates a connotation of an online web shop that is related to the Complainant.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. According to the Complainant, it has used the PHILIPS mark since 1891, and the designation is neither generic nor a commonly used term. The Complainant further claims that since the Respondent’s identity is hidden behind a privacy shield, the Respondent is not commonly known under this name, and has not acquired specific rights based on the use of the PHILIPS mark. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use the PHILIPS mark. The Complainant claims that it conducted a trademark search in forty seven databases worldwide and found no rights in the PHILIPS trademark belonging to the Respondent. The Complainant further alleges that operating a link farm parking page using a trademark in a domain name, and providing connections to products competitive with the trademark owner, does not establish rights or legitimate interests in it.
The Complainant alleges that the Domain Name was registered and has been used in bad faith. The Complainant further alleges that the Domain Name was registered in 2005, long after the Complainant obtained trademark rights in the PHILIPS designation and the date when the Complainant started using the PHILIPS trademark in relation to lighting products. According to the Complainant, use of a well-known trademark in registration of a domain name is an example of bad faith registration. The Complainant further claims that the Respondent has been using the Domain Name in bad faith because it resolves to a pay-per-click site so the Respondent earns revenues through advertising links. According to the Complainant, links appearing on the Respondent’s website direct to websites offering goods or services relating to, or directly competitive with, the Complainant’s goods or services. In the Complainant’s view, the Respondent uses the Domain Name to attract users to its website for commercial gain, which is use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, and on the absence from the Respondent of any objection to English as the language of the proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1 In this case, the language of the registration agreement is Russian. There is no agreement between the parties as to the use of a different language in this proceeding. Under these circumstances, the language of the proceeding would typically be Russian. However, the Complainant submitted its Complaint in English, and requested that English be the language of the proceeding. The Respondent did not object to, or comment on, that request. The Panel, therefore, now must determine the appropriate language for this proceeding.
The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent will not be prejudiced if this proceeding is conducted in English. First, it appears that the Respondent understands English. The content of the Respondent’s website was in English with no alternative language options. Second, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English. Therefore, even if the Respondent was not proficient in English, he had a fair chance to learn about his right to object to the language of the proceeding, but failed to do so. Third, the Complainant is not familiar with the Russian language. To force the Complainant to translate the Complaint and accompanying documents into Russian will result in significant expenses.
Taking into account the circumstances of this case and the objective of the UDRP to provide for a cost-effective mechanism, the Panel determines English as the language for the proceeding.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in its case: (i) the Domain Name is identical 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
If a respondent fails to respond to the complaint, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 “Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”3
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence a copy of international trademark registration No. 991346 of June 13, 2008; international trademark registration No. 579620 of November 21, 1999 and European community trademark registration No. 205971 of April 12, 1999 in the PHILIPS trademark. The Panel, therefore, finds that the Complainant has established its rights in the PHILIPS mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.4 The Panel finds the Domain Name to be confusingly similar to the PHILIPS mark because the Domain Name incorporates the Complainant’s trademark in its entirety.5 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.6 In this case, the addition of the generic word “shop” to the Complainant’s mark does not create a new or different mark, and is insufficient to avoid a finding of confusing similarity. It is also well established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.7
Because the Complainant has proven that the Domain Name is confusingly similar to the PHILIPS trademark in which the Complainant has rights, the first element of paragraph 4(a) of the UDRP has been satisfied.
To establish the second element required by paragraph 4(a) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name. “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”8 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.9
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Panel finds that the Complainant made out a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name for four reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert Internet users to its website. Third, it appears that the Respondent has not been commonly known by the Domain Name. Fourth, the Complainant neither licensed or otherwise authorized the Respondent to use the Domain Name.
The Panel finds it unlikely that the Respondent used the Domain Name in connection with bona fide offering of goods or services. The Complainant submitted screenshots of the Respondent’s website “www.philips-shop.com.” The evidence shows that until recently, the “www.philips-shop.com” website contained a collection of links offering video and audio equipment, including the Complainant’s PHILIPS goods. Currently, the Domain Name resolves to an empty web page.
It is a consensus view among UDRP panelists that the “use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services.”10 “[W]here such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”11 Here, the evidence shows that the links displayed on the Respondent’s website were clearly based on the value of the PHILIPS mark because the links displayed on the Respondent’s website directed to websites offering for sale the Complainant’s goods and goods of its competitors. Such use does not appear to constitute a “bona fide offering of goods and services” in the meaning of the Policy.
In addition, the Respondent is not a legitimate reseller or authorized licensee of any of the PHILIPS goods. Nor does the Respondent’s use of the Domain Name constitute a legitimate noncommercial use of the Domain Name under the Policy, because it is likely that the Respondent receives remuneration for displaying third-party advertising. Furthermore, there is no indication that the Respondent has been commonly known by the Domain Name. While the Respondent’s name is “Philip”, which is similar to the PHILIPS trademark, the website to which the Domain Name redirects, shows that the website contains no information about its owner. Without such information, one cannot be “commonly known” by the Domain Name. In addition, the Respondent’s use of a privacy shield to hide his identity, is another indication that he is not commonly known by the Domain Name. Finally, the Complainant alleges, and the Respondent does not dispute, that the Complainant conducted a trademark search in forty seven databases worldwide and found no rights in the PHILIPS trademark belonging to the Respondent.
The Panel, therefore, finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the paragraph 4(a) of the UDRP has been established.
The third element of paragraph 4(a) of the UDRP requires a “finding that both the registration and use were in bad faith.”12 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Panel finds it is likely that the Respondent knew about the Complainant’s PHILIPS mark and registered the Domain Name in bad faith because the Complainant started using its well-known mark long before the Respondent registered the Domain Name. First, the Panel finds the PHILIPS mark to be a well-known mark based on the value associated with the mark, the long history of the mark and its wide recognition. The Complainant submitted printouts from the “www.interbrand.com” website displaying the 2009 ranking of the Best Global Brands. According to the ranking, the PHILIPS brand was ranked no. 42 in the world. The Complainant also submitted copies of the Byte Level Research ranking. Based on the research, the “www.philips.com” website was recognized as the fourth best global website for 2010. The Panel finds this evidence to be sufficient to establish that PHILIPS trademark is a well-known mark. Because the PHILIPS trademark is well-known, it is more likely than not that the Domain Name was registered primarily for the purpose of confusing and misleading the public as to the affiliation of the Domain Name with the PHILIPS trademark. The Respondent registered the Domain Name more than one hundred years after the Complainant started using its trademark, and more than six years after the Complainant registered its trademark in Europe. Thus, it is more likely than not that the Respondent knew of the Complainant’s mark prior to the registration of the Domain Name, and that he registered the Domain Name to capitalize on the fame of the PHILIPS trademark.
The Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered ”by someone with no connection with the product.13 Because, the Respondent, who is not authorized or licensed by the Complainant or otherwise known to have connection to PHILIPS products, registered the Domain Name which incorporated the Complainant’s well-known PHILIPS trademark, opportunistic bad faith can be presumed.
At the time of drafting the decision, the website connected to the Domain Name had been deactivated. However, the Complainant has provided printouts of the “www.philips-shop.com” website showing that the Domain Name resolved to a pay-per-click website offering for sale the Complainants goods (as shown in Annex 12 to the Complaint). In addition, the Complainant provided printouts from the websites with links appearing on the Respondent’s website. The sponsored websites also offered for sale goods and services of companies that appear to be the Complainant’s competitors, such as Samsung and Panasonic. The Panel finds that Internet users, in light of the connotation created by the combination of PHILIPS brand and the word “shop” in the Domain Name, and in light of the contents of the web pages linked to the Domain name, may have been misled as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, the Respondent may have profited by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be also applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.
Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <philips-shop.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: March 4, 2012
1 See, paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
2 See, paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 See, paragraph 4.6 of the WIPO Overview 2.0.
4 See, paragraph 1.2 of the WIPO Overview 2.0.
5 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
6 See, paragraph 1.9 of the WIPO Overview 2.0.
7 See, paragraph 1.2 of the WIPO Overview 2.0.
8 See, paragraph 2.1 of the WIPO Overview 2.0.
9 See, paragraph 2.1 of the WIPO Overview 2.0.
10 See, paragraph 2.6 of the WIPO Overview 2.0.
11 Id.
12 See, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
13 See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.