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Koninklijke Philips Electronics N.V. v. Chekroun Avi [2001] GENDND 1199 (20 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Koninklijke Philips Electronics N.V., Groenewoudsweg 1, 5621 BA Eindhoven, The Netherlands, represented by Mr. J.J.E.C.G. Vandekerckhove, Postbus 220, 5600 AE, Eindhoven, The Netherlands ("Complainant").

The Respondent is Chekroun Avi, an individual with the address p.b. 3124, Shlomi, Shlomi 22832, Israel ("Respondent").

The dispute concerns the domain name <philips2000.com>.

The Registrar is Network Solutions, Inc., Herndon, VA, USA.

The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in electronic form on May 7, 2001 and in hard copy on May 10, 2001.

On May 14, 2001, the Center requested the Complainant to verify whether the dispute concerned the domain name <philip2000.com> or <philips2000.com> as both were mentioned in the Complaint.

On May 15 (e-mail) and May 17, 2001 (hard copy) the Center received the Complainant’s Amendment, confirming that the domain name in this dispute is <philips2000.com>.

The Center verified that the Complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").

Complainant made the required payment to the Center.

On May 14, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On May 26, 2001, the Registrar transmitted via e-mail to the Center, the Registrar’s Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Name, (2) the Registrant is Chekroun Avi, (3) Chekroun Avi is the Administrative and Billing Contact, and WorldNIC Name Host is the Technical Contact, (4) Network solution’s 5 Service Agreement is in effect, and (5) the Domain Name is in "Active" status.

On May 18, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint and the Amended Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondent’s Response was due by June 6, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.

The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on June 8, 2001.

On June 10, 2001, the Center received an e-mail message from the Respondent, stating some background details on the registration of the Domain Name and addressed to the Complainant’s authorized representative. The Center further received, during June 11 –12, a number of e-mail messages from the Complainant and the Respondent.

On June 14, 2001, in view of the Complainant’s designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.

Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on June 15, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was June 28, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Notwithstanding the fact that the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding, the Panel will take into consideration the e-mail messages filed by Respondent on June 10 and 12, 2001, and by the Complainant on June 11, 2001, as the Panel considers these messages important in determining the Respondent’s aim with the registration of the Domain Name.

Accordingly, the Administrative Panel shall issue its Decision based on the Complaint (including amendments), the parties e-mail correspondence, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language.

The Complainant states that the trademark PHILIPS has been registered, by its predecessors, in the Netherlands since 1891 and it is today registered in numerous jurisdictions worldwide (listed in Annex 3 of the Complaint). The trademark is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, from security systems to semiconductors.

The Respondent registered the Domain Name on December 27, 1999 (Annex 1 of the Complaint), and is also the owner of a number of other trademark related domain names (Annex 5 of the Complaint), however the Respondent has not provided any specific information on it’s business activities.

The PHILIPS brand name is the Complainant’s most important asset as the Complainant has spent substantially on supporting the same worldwide.

The Complainant states that the Domain Name is confusingly similar to the trademark PHILIPS, and that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant further states, on the following grounds, that the Domain Name is registered and is being used in bad faith:

• The Complainant has not licensed or otherwise permitted the Respondent to register the Domain Name incorporating the trademark PHILIPS.

• The Respondent has failed to provide evidence pertaining to the preparations or use of the domain name for bona fide offering of goods/services for 17 months between registration and proceedings sufficed to show lack of legitimate interest, even after receipt of the Complainant’s cease and desist letter sent on 11 January 2001 (Annex 4 of the Complaint), indicating that the registration of the Domain Name was based on a domain name speculation without real intent to use.

• The Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and is engaged in a pattern of such conduct (Annex 5 of the Complaint, showing a list of other domain names registered by the Respondent and containing a number of other valuable trademarks).

• None of the Respondent’s domain names resolve to active websites, and it could easily be inferred or concluded that the Respondent had the intention of transferring the domain names for valuable consideration.

• According to the whois report, false contact information was provided for the telephone and fax contact numbers, indicating that the Respondent acted to conceal his/her identity to ensure that no direct communication with the Complainant is possible.

The Respondent has not contested the allegations of the Complaint directly, but from the copy of Respondent’s e-mail of June 6, 2001 to the Complainant’s Representative (sent to the Center on June 10, 2001), the Respondent states that he/she is "a creator with a lot of ideas" and that the Domain Name was not registered with the intention to harm the Complainant.

The Respondent further states that there is a specific idea behind the Domain Name and the corresponding web site under construction, with no relationship to the Complainant’s products or to competitors of the Complainant, however no further information on this specific idea can be revealed for the moment.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 is being used in bad faith.

1. Identical or Confusing Similarity

The Complainant has claimed to have trademark registrations for PHILIPS since 1891 and in a great number of countries and territories. The Panel notes that Complainant has failed to provide evidence of any kind (translated copies of Certificates of Registrations, filing and registration dates, registration numbers, etc) related to such registrations. A mere list of country names cannot be regarded as evidence of trademark registrations.

However, the Panel concludes that PHILIPS is indeed a well-known trademark and finds no reason to doubt that the Complainant has at least established common law rights to PHILIPS by extensive and long-standing use.

The relevant part of the Domain Name is <philips2000>. As the Domain Name was registered on December 27, 1999 (as shown by Annex 1 of the Complaint), the Panel concludes that the Domain Name consists of the trademark PHILIPS and the year 2000, the latter being a neutral addition to the Domain Name with limited or no distinctiveness (see Nokia Corporation v. IBCC a/k/a Nokiagirls.com, WIPO Case No. D2000-0102, also cited by the Complainant).

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark PHILIPS.

2. No Rights or Legitimate Interest

The Respondent has no rights to use the Complainant’s trademark and is not an authorized agent or licensee of the Complainant’s products or services. The Respondent claimed to have a (business) idea for the Domain Name, but has refused to provide any business plan or other information regarding the idea behind the registration. The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Name.

3. Registered and Used in Bad Faith

The Respondent claims to have registered the Domain Name without the intention to harm the interests of the Complainant.

There are, however, a number of facts indicating bad faith of the Respondent:

• The PHILIPS trademark is well-known throughout the world and accordingly so also in Israel, the residence of the Respondent

• The Respondent has provided no evidence of any legitimate commercial, non commercial or fair use of the Domain Name

• The Respondent has refused to transfer the Domain Name voluntary to the Respondent (as shown by the parties e-mail correspondence between June 7 and June 11, 2001)

• The Respondent is the owner of a number of domain names, consisting of other’s well-known trademarks, such as: <swatch2000.com>, <visacard2000.com>, <motorolaworld.com>, <altavista2000.com>, <amexworld.com>, <bbcworld.com>, <wapnokia.com>, and <evian2000.com>.

• The addition of "2000" to the Domain Name in this case (and to several of the other domain names registered by the Respondent) indicates that the Domain Name was registered in order to prevent the Complainant from reflecting the mark PHILIPS in a corresponding domain name, such as and specifically, a domain name for services related to the new millennium (2000).

Given the above circumstances, the Panel concludes that the Respondent registered the Domain Name in bad faith.

The Panel further concludes that the Domain Name is being used in bad faith, as "use" is not limited to positive actions. The Respondent has passively hold the Domain Name for more than 17 months, without any evidence of a business plan, prior rights or other legitimate interests, and has refused to transfer the Domain Name to the Complainant. The Respondent has indeed shown a pattern of conduct in registering other’s well-known trademarks as domain names, therewith preventing the Complainant and others from reflecting their marks in corresponding domain names and presumably for the only purpose of selling the names to the rightful owners of these trademarks.

The Complainant argued that the Respondent, by providing false contact information regarding telephone and fax numbers, has acted to conceal his/her identity. Here, the Panel finds that the Respondent has obviously been contactable through Respondent’s e-mail and postal address. The Respondent can therefore not be said to have been actively preventing direct communication.

The Panel concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

The Panel concludes (a) that the Domain Name <philips2000.com> is confusingly similar to the Complainant’s trademark PHILIPS, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <philips2000.com> be transferred to the Complainant Koninklijke Philips Electronics N.V.

P-E Petter Rindforth
Sole Panelist

Dated: June 20, 2001