WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Duplica (Hugo Coppens)
Case No. D2001-0312
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., a company organized under the laws of The Netherlands, with its principal place of business at Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands.
The Respondent is Duplica Hugo Coppens, an individual domiciled at Volmolenstraat 31, 9000 Gent, Belgium, who shares the address and has written on behalf of Duplica, and is the contact person for all official matters.
2. The Domain Name and Registrar
The domain name at issue is <philips4u.com> (the "domain name"). The Registrar is directNIC.com, Intercosmos Media Group, Inc., 650 Poydras Street, Suite 2311,
New Orleans, Louisiana 70130, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") byhardcopy on March 2, 2001. The Center acknowledged receipt on March 20, 2001, and requested the Complainant to send the Complaint also by email. The electronic format of the Complaint was filed with the Center on March 20, 2001.
On March 20, 2001, the Center sent to the Registrar a request for verification of registration data. On March 21, 2001, the Registrar confirmed: 1) that it had received a copy of the Complaint; 2) that <philips4u.com> was registered with the Registrar; 3) that the current registrant of <philips4u.com> is not the Respondent, Mr. Hugo Coppens, but is identified as: Duplica, with an address at Volmolenstraat 31, 9000 Gent, Belgium; 4) that the Administrative, Technical and Billing Contact are Mr. Hugo Coppens, Volmolenstraat 31, 9000 Gent, Belgium, email: [email protected], telephone number: +32 (0)9 223 66 18; 5) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 6) that the domain name is currently active and redirecting to the URL: gallery.uunet.be/hugo.coppens/othersindex3.htm.
On March 21, 2001, the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.
Also on March 21, 2001, the Center forwarded the Complaint to the Respondent by post/courier, fax and email, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of April 9, 2001, was fixed for the Response.
No Response was submitted. Accordingly, the Center issued a Notification of Respondent Default to both parties on April 20, 2001.
On May 2, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by May 16, 2001.
The Panelist examined all notifications of the Center, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted. The Panelist also examined the Complaint, and finds that Complainant has erroneously indicated Mr. Hugo Coppens as the Respondent, instead of Duplica. It appears, however, that Mr. Coppens is the Respondent’s Administrative, Technical and Zone Contact, located at the same address as the Respondent, and that Mr. Coppens personally answered the Complainant’s warning letters (Complainant’s Exhibits 4 and 5). For these reasons, the Panel has decided to consider both Duplica and Mr. Hugo Coppens as the Respondent, and finds that the Complaint complies with the formal requirements of the Rules and Supplemental Rules.
4. Factual Background
A. The Complainant
The Complainant is one of the world's largest electronics companies. Complainant’s products include, amongst others, lighting, medical systems, semiconductors, analytical instruments, broadband networks, broadcast & communication tools, displays, monitors, TV, video & audio products, security tools, PC peripherals and internet devices.
The Complainant asserts that the trademark "Philips" has been registered by the predecessors of Complainant in the Netherlands since 1891 and is registered in numerous jurisdictions worldwide (the "Trademark"). It is, according to Complainant, synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances and from security systems to semiconductors. Complainant contends that the "Philips" brand name is the company’s most important asset as it has spent substantial sums on supporting its brand worldwide. To show its worldwide presence, Complainant has submitted a list of the major countries in which the mark is registered (Complainant’s Exhibit 3).
The Complainant operates its principal website at <philips.com>.
B. The Respondent
The Respondent registered the domain name <philips4u.com> on May 14, 2000. The domain name resolves to a website that contains links to <Register.com>, directNIC, <Yourname.com>, <iBazar.be>, <Macworld.com>, <astrology.com>, <FoodFit.com> and <theCounter.com>. Respondent’s website also lists the email address of Mr. Coppens: [email protected].
C. Facts Underlying the Dispute
On January 11, 2001, the Complainant sent a warning letter to the Respondent (Duplica) requesting that it voluntarily stop using the domain name <philips4u.com> (Complainant’s Exhibit 6).
The Respondent (Mr. Hugo Coppens) responded by email of January 16, 2001, that, because he bought the domain name, he is the rightful owner. Mr. Coppens suggested that the Complainant make an offer "which would make me consider changing the [domain] name to de dns of your choiche [sic]" (Complainant’s Exhibit 5).
By email of January 20, 2001, the Respondent stated further [sic]:
"(…) Now, let’s get down to BUSINESS, RIGHT? AND I DO MEAN BUSINESS!!! I use this domain-name to get links to web-site that pay me every time the amount of money goes beyond 25 dollars. When someone goes to one of the site like register.com, directnic.com or other links, when they sign up or buy something, than that gives me money, right? I guess you have heard about that kind of e-business, no?
The amount of money i make of the domain-name "philips4u.com" is somewhere around 100 dollars every month. (Every month, there are about 90 people that see this page, and most of them go further, and use the links.) That is 1200 dollars every year. If I use this domain-name for the next 30 years, that should be 36.000 dollars. That is the amount of money that I will make of doing e-business, no? This may sound hard for you, but money is money, and if you want me to give this domain name to you, i want to see some "financial compensation", okay, got the message?
I hope you are not offended, but people seek money, where-ever they can find it, and this domain name is the best thing that ever happened to me, so I am not intended to give it up just like that, because this name gives me the one thing that everybody seeks in this world: money.
Tell me what your company is willing to pay for this domain name, and i will see if it is worthwhile."
(Complainant’s Exhibit 4).
5. Parties’ Contentions
A. The Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:
(1) the domain name <philips4u.com> is identical or confusingly similar to the Complainant’s Trademark; and
(2) the Respondent has no rights or legitimate interests in the domain name, because it has been registered primarily for the purpose of selling or otherwise transferring the domain name to the Complainant for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; and
(3) the domain name was registered and is being used in bad faith, because: (i) the registration of the domain name causes unfairness and is detrimental to the business of the Complainant as the mark is influential in the field of business it was registered for; (ii) the registration was based on a domain name speculation without real intent to use; and (iii) the Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to the registration of the domain name, which leads to the conclusion that the registration was aimed at coaxing the Complainant to buy the domain name.
The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.
B. The Respondent
No response was submitted.
6. Discussion and Findings
Referring to paragraph 14 of the Rules, in the absence of a response to the Complainant’s allegations by the Respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. The Panel cannot decide in the Complainant’s favor solely based upon the Respondent’s default, but is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just under the circumstances from the Respondent’s failure to respond.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the Respondent’s domain name is 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(a) Identical or confusingly similar
The Complainant contends that it has numerous registrations of the trademark "Philips". The Complainant merely submitted a list of the major countries in which the Trademark is registered, but did not provide any copy of the registrations. The Panel searched on the website of the Office for Harmonization in the Internal Market (OHIM) at oami.eu.int and found that the Complainant owns CTM trademark registrations No. 205971 (verbal mark "Philips") and No. 205849 (figurative mark "Philips"). The Panel concludes that the Complainant, for purposes of this proceeding, has enforceable rights in the Trademark.
The only differences between the domain name and the Trademark are that: (1) the term "4u" is added in the domain name; and (2) the domain name has ".com" at the end.
The differences between Complainant’s Trademark and Respondent’s domain name are minor and do nothing to distinguish the mark from the domain name. The addition of the designation ".com" is non-distinctive because it is a gTLD required for registration of a domain name. (Footnote 1) The suffix "4u" is a shorthand expression leading Internet users to believe that the domain name is for Philips products "for you". The Panel finds that this suffix is not a factor sufficient to distinguish the Trademark from the domain name at issue. (Footnote 2) In addition, the Panel finds that the phrase "4u" will inevitably confuse Internet users due in great part to the well-known nature of the Philips name and mark.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
(b) Rights or legitimate interests
Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:
(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 non-commercial 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 alleges that the Respondent has no rights in the domain name as the domain name was registered for the purpose of selling it for valuable consideration in excess of out-of-pocket costs. The offering for sale of a domain name is a circumstance that may evidence bad faith use (if the requirements of paragraph 4(b)(i) of the Policy are fulfilled – see under Section 6(c) of this decision). It does not, however, inevitably lead to the conclusion that a Respondent has no legitimate interest in the domain name.
In this case, however, the Respondent has not offered any evidence demonstrating the applicability of any of the criteria in paragraph 4(c) of the Policy.
Respondent’s only proven use of the domain name is to gain revenue from Internet users who purchase goods or services from other sites whose links are posted at <philips4u.com>. In its email of January 20, 2001, to the Complainant, the Respondent wrote:
"(…) I use this domain-name to get links to web-site that pay me every time the amount of money goes beyond 25 dollars. When someone goes to one of the site like register.com, directnic.com or other links, when they sign up or buy something, than that gives me money, right? (…) The amount of money i make of the domain name "philips4u.com" is somewhere around 100 dollars every month. (Every month, there are about 90 people that see this page, and most of them go further, and use the links.) That is 1200 dollars every year. If I use this domain name for the next 30 years, that should be 36.000 dollars. (…)"
(Complainant’s Exhibit 4)
Such use does not establish rights or legitimate interests in the domain name in the sense of paragraph 4(c) of the Policy.
The Panel finds that the Respondent is not using the domain name for a "bona fide offering of goods and services". The following observations are called for:
First, the Respondent’s activities fall far short of constituting a bona fide offering of goods or services. As indicated in Section 6(c) below, reliance on an Internet users’ mistaken belieff that they are visiting a site affiliated with the very well known Trademark owner Philips does not constitute a bona fide use.
Second, the Respondent is not offering any goods or services for sale. It is only providing links to other companies that offer to sell goods or services.
For both of these reasons the Panel finds that the requirements of paragraph 4(b)(i) of the Policy are not satisfied.
With respect to the element of 4(c)(ii), the Panel notes that the Respondent has offered no evidence that it has been commonly known by the domain name < philips4u.com> . With respect to 4(b)(iii), the evidence demonstrates that the Respondent is not making a legitimate non-commercial or fair use of the domain name, and that it is misleadingly diverting consumers for its own commercial gain. Respondent’s use of the well-known Philips name to attract confused users to its site, and the Respondent’s admission that it is profiting from Internet users who purchase goods or services from sites linked to its own website is more than sufficient to prove that the requirements of paragraph 4(b)(iii) have not been met.
The Panel finds that the circumstance that the domain name is offered for sale, the absence of any legitimate use, and Respondent’s failure to justify the use of "Philips" in its domain name, constitute at least prima facie evidence of a lack of rights to or legitimate interest in the domain name. (Footnote 3)
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
(c) Bad faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is 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 on-line 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.
The Complainant seems to rely both on the first and the third element, alleging that the domain name was registered and used in bad faith because "the registration was aimed at coaxing the Complainant to buy the domain name" and "the registration of the domain name causes unfairness and is certainly detrimental to the business of the Complainant as the mark is influential in the field of the business it was registered for". The Complainant also contends that "the registration was based on a domain name speculation without real intent to use". The Panel views this as an allegation of cybersquatting.
By not submitting a response, the Respondent has failed to address these allegations.
There is no doubt that the Respondent has registered the domain name for the purpose of selling the registration to the Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. This is demonstrated by the Respondent’s correspondence to the Complainant (emails of January 16, 2001 and January 20, 2001, Complainant’s Exhibits 5 and 4). In addition, the Panel has searched on the Internet and found that the domain name is being offered for sale at GreatDomains.com for the price of US$ 1,000.
There is also no doubt that the Respondent is also seeking to capitalize on the well-known Philips name. By so doing, the Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. As noted in the discussion of paragraph 4(c)(iii) above, the Respondent is seeking to profit from the likelihood of confusion created by the domain name <philips4u.com>. The Respondent is intentionally attracting confused users to its site for commercial gain. This is a clear example of bad faith within the meaning of paragraph 4(b)(iv). Such bad faith use cannot but tarnish the Philips mark.
Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith.
7. Decision
The Panel decides that:
1) the domain name <philips4u.com> is confusingly similar to the trademark "Philips"; and
2) the Respondent has no rights or legitimate interest in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith by the Respondent.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, directNIC.com, transfer the domain name <philips4u.com> to the Complainant.
