The Complainant is Koninklijke Philips N.V. of Eindhoven, the Netherlands, represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Nguyen Dang Son, Cong Ty TNHH Cong Nghe & Thuong Mai Megaline of Hanoi, Viet Nam.
The disputed domain name <chieusangphilips.com> (the “Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 2016, August 25, 2016 and August 31, 2016, the Registrar transmitted by emails 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. On August 26, 2016, the Center transmitted by email to the Parties a request in Japanese and English for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding by email on August 29, 2016. The Respondent did not comment on the language of the proceeding by the specified due date. The Center sent an email communication to the Complainant on August 31, 2016, 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 September 1, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint in Japanese and English, and the proceeding commenced on September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. On September 14, 2016, the Respondent submitted a very short mail of response along with relevant attached documents (the “Response”).
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 5, 2016. 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, Koninklijke Philips N.V., is a Dutch company founded in 1891. After more than 124 years of operation, the Complainant is one of the world’s leaders in diverse sectors as household products, health care, lighting equipment, etc. The Complainant has more than 113,000 employees operating in over 100 countries around the world. In Viet Nam, the Complainant started its first business activities through a representative office in 1993. To date, with more than 20 years of presence and more than 150 employees, the Complainant’s business in Viet Nam has been growing constantly.
The Complainant is the registered owner of PHILIPS trademarks in various classes in over 245 countries around the world. In Viet Nam, the PHILIPS trademarks are protected under numerous international registrations designating Viet Nam, including international registration no. 310459 registered on March 16, 1966; no. 380743 registered on May 19, 1971; no. 469042 registered on May 17, 1982; no. 579620 registered on November 21, 1991; and no. 991346 registered on June 13, 2008. All of these trademarks predate the registration of the Disputed Domain Name.
The Complainant’s primary website is at “www.philips.com”. It also owns other country-specific websites to promote its products in numerous countries. The Complainant’s domain name <philips.com> was created on April 4, 1987.
Finally, through its extensive use since 1891, the Complainant has gained substantial reputation internationally for its Philips products, and the PHILIPS trademark may be considered as a widely-known trademark for a broad range of electronic equipment, much of which relates to lighting products.
The Respondent registered the Disputed Domain Name <chieusangphilips.com> on May 29, 2015. As of the date of this Decision, the website under the Disputed Domain Name is being used for the sale of electric lighting equipment, and other lighting-related appliances under the PHILIPS brand.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that it is and has been for many years the right holder of the trademark PHILIPS in several classes in numerous countries around the world, including in Viet Nam. The PHILIPS trademarks are the Complainant’s primary brand for a broad range of electronic equipment, much of which relates to lighting products. The registrations of the PHILIPS trademarks well predate the Respondent’s registration of the Disputed Domain Name.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant’s PHILIPS trademarks, as it comprises the Complainant’s mark PHILIPS in its entirety, and the addition of the generic Vietnamese word “chieusang” (meaning “lighting” in English) to the Disputed Domain Name would be insufficient in itself to avoid the confusing similarity to the Complainant’s PHILIPS trademarks. In addition, the Complainant also submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “com” to the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
First, the Complainant contends that as the Complainant has clearly evidenced and proved that (i) there is no evidence that the Complainant authorized or otherwise permitted the Respondent to register the Disputed Domain Name and (ii) the Complainant’s rights in the mark at issue predate the Respondent’s registration of the Disputed Domain Name, the burden then shifts to the Respondent to provide evidence that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
Second, the Complainant submits that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name without intending to mislead and divert consumers or to tarnish the famous PHILIPS mark for commercial gain by arguing that the Respondent is using the Disputed Domain Name to not only sell/advertise PHILIPS products for Cong ty TNHH Cong nghe & Thuong mai Megaline (in English: Megaline Technology & Trading Limited Corporation), but also to advertise the goods and services rendered by Cong ty TNHH Cong nghe & Thuong mai Megaline and another real estate company by placing some advertising links.
Third, the Complainant contends that the Respondent’s use and registration of the Disputed Domain Name incorporating the Complainant’s famous PHILIPS mark, as well as prominent use of the PHILIPS mark on the website resolved to by the Disputed Domain Name, to attract consumers to its website does not qualify as a bona fide offering of goods and services by arguing that: (i) the Respondent cannot establish that it has any rights or legitimate interests in the PHILIPS trademarks for use in connection with any good or service given the international fame of the PHILIPS mark; and (ii) the infringing use of the Complainant’s trademarks cannot give rise to a legitimate right or interest on the part of the Respondent and there is a clear evidence that the Respondent intends to infringe the Complainant’s trademark rights and take advantage of the fame associated with the PHILIPS mark.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the Respondent’s bad faith in registration and use of the Disputed Domain Name can be inferred in this case as (i) the Respondent has actual and full knowledge of the Complainant’s PHILIPS mark at the time of registration of the Disputed Domain Name, given the worldwide fame of the PHILIPS mark and the Complainant’s reputation for providing high quality products of electronic equipment, much of which relates to lighting; and (ii) by including PHILIPS as part of the Disputed Domain Name and displaying the PHILIPS trademarks on its website, the Respondent has unfairly created an impression of an association with the Complainant.
The Complainant further submits that by using the Disputed Domain Name, the Respondent attempted to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks:
First, the Complainant contends that the Respondent is not only trading PHILIPS product, which is the same as the Complainant’s business, but also deliberately creating confusion about its relationship between the Respondent and the Complainant through advertising itself as “an official distributor of Philips-branded light” on the website.
Second, the Complainant further contends that by using the Complainant’s PHILIPS mark on the Respondent’s website at “www.chieusangphilips.com”, the Respondent has falsely indicated that the Complainant endorses the Respondent’s website.
Third, the Complainant argues that by publishing articles introducing the PHILIPS products, the Respondent wrongly directs readers of its website at the Disputed Domain Name to believe this website is run by and associated with or sponsored by the Complainant, which will be damaging to the goodwill and integrity of the PHILIPS mark.
Last, the Complainant contends that the Respondent also inserts the links to website “www.nhamaydenled.com” (translated as “Led Light Factory”) and a Facebook page “Bat Dong San Vingroup” which will direct Internet users to websites advertising for sale of PHILIPS goods and websites for sale of real estate respectively.
Finally, the Complainant submits that the Disputed Domain Name was registered and is being used in bad faith by the Respondent based on the bad faith allegations in combination with the Respondent’s lack of interests or rights in the Disputed Domain Name.
On September 14, 2016, the Respondent sent to the Center an email of response attached with relevant documents arguing that Megaline Trading and Technology Company Limited is a distributor of Philips-branded lighting product lines. However, the Respondent did not respond directly to other issues as raised by the Complainant in the Complaint. Accordingly, the Panel draws inference from the aforesaid email and documents provided by the Respondent in the below decision.
The Panel notes that the present case involves privacy and/or proxy registration service. At the time the Complaint was filed on August 19, 2016, the Respondent was identified as “GMO-Z.com RUNSYSTEM”, the Registrant of the Disputed Domain Name. On August 31, 2016 the Registrar revealed that “GMO-Z.com RUNSYSTEM” is the privacy service provided by the Registrar’s reseller and the underlying Registrant as “Nguyen Dang Son, CONG TY TNHH CONG NGHE & THUONG MAI MEGALINE” according to WHOIS updated WhoIs information.
On September 1, 2016, the Complainant filed an amended Complaint, replacing the respondent named in the initial Complaint by the underlying Registrant, and submitted further evidence concerning the newly-identified Respondent.
Therefore, the Panel determines the identity of the proper Respondent in this case to be the disclosed underlying Registrant as named in the amended Complaint filed on September 1, 2016. See paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement used was Japanese.
As the Complaint was filed in English, the Center, in its notification dated August 26, 2016 in English and Japanese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Japanese, or (ii) a substantiated request for English to be the language of the proceeding. On August 29, 2016, the Complainant submitted its confirmation of request that English be the language of the proceeding. The Respondent did not submit any comment in relation to the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the nationality of the Parties;
(ii) the fact that the Complainant, a Dutch entity, does not appear to be able to communicate in Japanese; and
(iii) the fact that the Respondent is obviously capable of understanding and using English as the email of September 14, 2016 by the Respondent is written in English, and it is evidenced that the Respondent is using English in various websites for the purpose of his own business.
Hence, if the Complainant were required to have the documents translated into Japanese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. In the interests of fairness to both Parties, as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its Decision in English in accordance with paragraph 11(a) of the Rules.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant is required to establish the two following criteria: (1) that it has trademark rights, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
Firstly, the Complainant has clearly evidenced that it has trademark rights in the PHILIPS trademarks long before the registration of the Disputed Domain Name. Also in Viet Nam, where the Respondent is located, the Complainant has registered numerous PHILIPS trademarks, which are also well prior to the registration date of the Disputed Domain Name. Further, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer a broad range of electronic equipment, much of which relates to lighting products, for both consumers and professional users worldwide.
Secondly, the Panel finds that the Disputed Domain Name comprises the Complainant’s distinctive and well-known PHILIPS trademark in its entirety. The difference between the Disputed Domain Name and the PHILIPS trademarks is the addition of the word “chieusang”, which is a Vietnamese term for “lighting” prior to the word “Philips”. Despite the fact that “chieusang” itself has no meaning in English, Vietnamese customers are likely to perceive it as “chiếu sáng” (“lighting” in English). Thus, this element should be considered as a descriptive term and, consequently, the Panel finds that PHILIPS is the dominant element in the Disputed Domain Name and that the addition of the word “chieusang” does nothing to distinguish the Disputed Domain Name from the PHILIPS trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP panel decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388).
Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s PHILIPS trademark, and the first element under paragraph 4(a)(i) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent, as an official sales agent of PHILIPS lighting products in Viet Nam, holds such rights. Thus, the Panel opines that the Respondent has no rights in the PHILIPS trademarks.
Regarding paragraphs 4(c)(i) of the Policy, the Panel considers the statement in the website under the Disputed Domain Name that “Công ty Megaline là kênh phân phối chính thức sản phẩm đèn Led chiếu sáng philips và thiết bị chiếu sáng của Tập đoàn Hoàng gia Philips…” (English translation: “Megaline company is the official distribution channel of PHILIPS Led lighting products and other lights products of Philips Royal Corporation….”), and the Respondent’s email dated September 14, 2016, and its attachment, which provides evidence that the Respondent is a sale agent of “Philips Electronics Vietnam Ltd.’s” local distributor. As of the date of this Decision, the Panel has no official information on business/ legal relationship between the Complainant and “Philips Electronics Vietnam Ltd.”. It is likely that “Philips Electronics Vietnam Ltd.” is an affiliate of the Complainant in Viet Nam. If the Panel’s understanding is correct, the Panel opines that the mentioned statement by the Respondent in the website under the Disputed Domain Name may be justifiable.
However, the Panel takes the view that even in case the reselling of PHILIPS lighting products is legitimate, the right to resell the Complainant’s products does not necessarily extend to cover the rights to use the trademark as a basis for a domain name without authorization. In other words, while the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holder of the trademarks. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113; Avon Products, Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272.
With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name wholly incorporating the Complainant’s PHILIPS trademarks does not constitute bona fide use within paragraph 4(c)(i) of the Policy.
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name, the Respondent is making a commercial use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an evidence of registration and use of a domain name in bad faith.
In this regard, the Panel finds that the Complaint and further submissions by the Complainant sufficiently evidence that the Complainant does not authorize or endorse the use of the PHILIPS trademarks in the Disputed Domain Name as well as in the website resolved to thereby. Further, from the facts of this case, particularly the statement by the Respondent that it is a distributor of the PHILIPS lighting products, it is undisputed that the Respondent did not register the Disputed Domain Name in a fortuity. As a reseller of the PHILIPS lighting products, the Respondent had known of the Complainant and its PHILIPS trademarks before the registration of the Disputed Domain Name. The Panel considers the registration of a domain name incorporating a registered trademark, without the trademark holder’s consent, for use in a for-profit site, constitutes bad faith.
Further, the Panel finds that, in addition to the adoption of the PHILIPS mark as the uniquely distinctive part in the Disputed Domain Name, the Respondent has been using the Complainant’s PHILIPS trademarks and logo on the website resolved to by the Disputed Domain Name, without any authorization or endorsement by the Complainant. Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Name and the PHILIPS trademarks to induce consumers to believe that the website under the Disputed Domain Name is somehow authorized or endorsed by the Complainant, for commercial gain, when none of such authorization or endorsement exists in reality. Such misleading behavior, in addition to the fact that the Respondent has no rights or legitimate interests in the Disputed Domain Name as held in Section C above, is indicative of bad faith use on the part of the Respondent.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.
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 <chieusangphilips.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: October 19, 2016