WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Philips N.V. v. Martin Johnson

Case No. D2019-2398

1. The Parties

The Complainant is Koninklijke Philips N.V., Netherlands, represented by C.V. React U.A., Netherlands.

The Respondent is Martin Johnson, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <philipszoom.com> is registered with GoDaddy.com, LLC.

1&1 IONOS Inc. and GoDaddy.com, LLC are hereinafter collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2019. On October 2, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 2 and 4, 2019, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 5, 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019.

The Center appointed Marilena Comanescu as the sole panelist in this matter on November 29, 2019. 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 language of the proceeding is English.

4. Factual Background

The Complainant is a Dutch based company, active in the industries of healthcare, electronics and life science.

The Complainant owns worldwide trademark registrations for PHILIPS and ZOOM, as follows:

- the European Union trademark word registration No. 000205971 for PHILIPS filed on April 1, 1996 and registered on October 22, 1999 for goods and services in classes 3, 6, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 37, 38, 40, 41 and 42; and

- the European Union trademark word registration No. 001990324 for ZOOM filed on December 7, 2000 and registered on January 17, 2002 for goods in classes 3 and 5.

The Complainant’s main website is available at “www.philips.com”.

The Complainant’s trademark PHILIPS is wellknown worldwide. See alsoKoninklijke Philips Electronics N.V. v. Philip Vlasov, WIPO Case No. D2011-2274; and Koninklijke Philips Electronics N.V. v. Sergey Nikolaenko, WIPO Case No. D2010-1494.

The disputed domain name <philipszoom.com> was created on September 2, 2011.

The disputed domain names <philipszoomdaywhite.com> and <philipszoomnitewhite.com> were created on September 18, 2018.

The disputed domain name <philipszoomrefills.com> was created on September 20, 2018.

The disputed domain name <philipszoomclub.com> was created on January 22, 2019.

The disputed domain names <philipszoomshop.com>, <philipszoomstore.com>, <philipszoomsuperstore.com> and <philipszoomwarehouse.com> were created on February 15, 2019.

The disputed domain names <philipszoom.store>, <philipszoom.shop> and philipszoom.club> were created on March 5, 2019.

All the disputed domain names were redirected to the disputed domain name <philipszoom.com> and were used to promote dentifrice and related products. Furthermore, on the website corresponding to the disputed domain names both ZOOM and PHILIPS trademarks were displayed, together with the colors and feel of the Complainant’s main website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademarks PHILIPS and ZOOM with additional generic terms, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith, providing products which are not produced for the European market, since the goods put on the website corresponding to the disputed domain names breaches the normative regulations available on the European market and therefore such products are either forbidden or must be applied only by dental practitioners.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the PHILIPS and ZOOM trademarks.

The disputed domain names <philipszoom.club>, <philipszoomclub.com>, <philipszoomdaywhite.com>, <philipszoomnitewhite.com>, <philipszoomrefills.com>, <philipszoom.shop>, <philipszoomshop.com>, <philipszoom.store>, <philipszoomstore.com>, <philipszoomsuperstore.com>, <philipszoomwarehouse.com> and <philipszoom.com> incorporate the Complainant’s trademarks PHILIPS and ZOOM in their entirety, in some cases followed by the terms “club”, “daywhite”, “nitewhite”, “refills”, “shop”, “store”, “superstore” and “warehouse”. However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademarks are clearly recognizable within the disputed domain names.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.club”, “.info”, “.com”, “.org”, “.store”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks PHILIPS and ZOOM, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the trademarks PHILIPS and ZOOM, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

The Respondent has used the disputed domain names in connection with a website selling goods similar to those offered by the Complainant.

In certain cases panels have recognized that resellers, distributors using a domain name containing a complainant’s trademark to undertake sales related to complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Accordingly, in this case, the key question under this element is whether the Respondent’s use of the disputed domain names amounts to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

The current state of UDRP panel consensus in relation to this issue is helpfully summarized in the section 2.8 of the WIPO Overview 3.0, based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to the “Oki Data test”, several cumulative requirements will be applied in the specific conditions of a UDRP case, including the fact that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder (the complainant) and that the respondent must not try to “corner the market” in domain names that reflect the trademark. In this case, according to the available record, on the website corresponding to the disputed domain names there was no indication regarding the relationship between the Parties and the Respondent registered 12 variations of domain names containing the Complainant’s marks per se or together with descriptive terms and therefore the Oki Data test cannot apply.

Furthermore, according to the Complaint, the goods promoted on the website at the disputed domain names are not in compliance with the European market regulations, market where the Respondent is selling such goods.

This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain names.

Moreover, the nature of the disputed domain names carries a risk of implied affiliation with the Complainant. See section 2.5.1.of the WIPO Overview 3.0.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for PHILIPS since at least 1999, respectively for ZOOM since at least 2002 and it is well known in its field of activity. The disputed domain names were created in 2011, 2018 and 2019 and incorporate the Complainant’s marks PHILIPS and ZOOM together. For the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademarks.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

The Respondent was using without permission the Complainant’s wellknown trademarks in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s trademarks PHILIPS and ZOOM in the disputed domain names, the similar goods offered on the website corresponding to the disputed domain names, the unauthorized featuring of the Complainant’s marks, including the reproduction of the look and feel of the Complainant’s official website on such website.

Furthermore, the Respondent is selling goods similar to those of the Complainant under the Complainant’s trademarks, as noted by the Panel above, such use carries a risk of implied affiliation with the Complainant.

In the same time, the registration of 12 disputed domain names comprising the Complainant’s trademarks can, together with the other factors in this case, constitute a pattern of conduct of preventing the trademark holder from reflecting its mark in a domain name.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 names <philipszoom.club>, <philipszoomclub.com>, <philipszoomdaywhite.com>, <philipszoomnitewhite.com>, <philipszoomrefills.com>, <philipszoom.shop>, <philipszoomshop.com>, <philipszoom.store>, <philipszoomstore.com>, <philipszoomsuperstore.com>, <philipszoomwarehouse.com> and <philipszoom.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: December 4, 2019