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Koninklijke Philips Electronics N.V. v. Cho Sanghyuck [2002] GENDND 1013 (2 July 2002)

WIPO Arbitration and Mediation Center

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

The Respondent is Cho, Sanghyuck, an individual domiciled at 3427 Tulane Drive Apt. 34, Hyattsville, Maryland, United States of America ("Respondent").

The dispute concerns the domain name <sonyphilips.com> ("the Domain Name").

The Registrar is Network Solutions, Inc., Herndon, Virginia, United States of America.

The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in electronic form on May 3, 2002, and in hard copy on May 8, 2002.

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 10, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. May 14, 2002, 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 Cho, Sanghyuck, (3) Cho, Sanghyuck is the Administrative and Billing Contact, and VeriSign, Inc. is the Technical Contact, and (4) the language of the Service Agreement is English.

On May 15, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the 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 5, 2002, (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, and (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 14, 2002.

On June 21, 2002, 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 24, 2002, 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 July 8, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

On June 24, 2002, the Complainant filed a request to change the Remedy from "Transfer" to "Cancellation" of the Domain Name. The request was accepted by the Panel.

The Administrative Panel shall issue its Decision based on the Complaint, the Request for change of Remedy, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. 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 (countries listed in Annex 3 of the Complaint, together with a copy of Complainant’s International trademark registration No 579 620). 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 February 14, 1999 (Annex 1 of the Complaint), and is also the owner of the domain name <hondaisuzu.com> (Annex 7 of the Complaint). However, no specific information is provided about the Respondent’s business activities except for what is stated below by the Complainant.

The "PHILIPS" brand name is one of the Complainant’s most important assets 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 to the Domain Name.

The latter is shown by the facts that the Respondent is not commonly known by the Domain Name, the Complainant has not licensed or otherwise permitted the Respondent to register the Domain Name and that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.

Complainant further states that the Respondent has demonstrated a genuine disinterest (as well as bad faith) in the Domain Name, by providing false telephone contact number (copy of Whois provided as Annex 1), and by stating on the web site corresponding to the Domain Name that the said domain is for sale (Annex 4 of the Complaint).

On October 1, 2001, the Complainant sent the Respondent a cease and desist letter (Annex 5 of the Complaint). No reply was received.

The Complainant concludes that the Domain Name was registered in bad faith as Respondent’s intention was clearly to sell the same and not to use it for any legitimate purpose. Also passive holding of a Domain Name is evidence of bad faith.

The Respondent has, on the same day as for <sonyphilips.com>, registered the domain name <hondaisuzu.com> which contains two well-known trademarks, "HONDA" and "ISUZU". This infers that the Respondent may be engaged in a pattern of conduct, which in turn demonstrates bad faith. The Respondent was obviously aware of the Complainant’s and other rights in the trademarks prior to the registration.

Both domain names registered by the Respondent are not active as they have "For Sale" on each corresponding web site (Annex 6). Respondent’s use of a combination of two well-known trademarks in each domain name clearly infers bad faith motives at the time of registration and the fact that no fair use of the Domain Name has been conducted since the registration date of February 14, 1999. A reasonable conclusion is that the domain names were registered for the primary purpose of selling them and to profit from the sale.

The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be cancelled.

The Respondent has not contested the allegations of the Complaint.

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.

The Complainant claims to have trademark registrations for "PHILIPS" since 1891 and in a great number of countries and territories, among them the United States of America in which the Respondent is domiciled. A list of country names, as well as a copy of the International registration No. 579 620 "PHILIPS" has been provided as Annex 3 of the Complaint.

Although no copy of the alleged US registration is provided, the Panel concludes that the Complainant has registered trademark rights to "PHILIPS" and that the said mark is well-known in many countries, including the United States of America.

The relevant part of the Domain Name is <sonyphilips>.

The Domain Name consists of two well-known trademarks, "SONY" and "PHILIPS", and the Complainant has rights in the "PHILIPS" part. Although the Domain Name is not identical to Complainant’s mark, this Panel concludes that it is confusingly similar to "PHILIPS" as there is a considerable risk that the average Internet user would at least (wrongly) assume that there exist some kind of business relationship or other affiliation between the disputed Domain Name, the domain name holder (Respondent) and the Complainant.

Accordingly, the Panel finds that the requirement of Paragraph 4(a)(i) of the Policy has been satisfied.

The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark PHILIPS.

By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

In addition, the fact that the Domain Name points to a web site with the only message that the same is for sale indicates that, before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Domain Name points to a web site with the only message "SONYPHILIPS.COM for Sale. Contact me at sanghyuckcho@hotmail.com" (Annex 4 of the Complaint). The Complainant has argued that this offer to sell the Domain Name without any statement that the offer price was only that of covering the Respondent’s out-of-pocket costs strongly indicates bad faith. This Panel agrees.

Further, the fact that Respondent did not reply to the Complainant’s cease and desist letter indicates that he, knowing that Complainant had rights in the trademark "PHILIPS", continued his efforts to profit from the Domain Name. The Respondent has also registered another domain name consisting of two well-known marks, obviously for the only purpose of making a profit (Annexes 6 and 7 of the Complaint).

The Panel therefore finds that Respondent registered the Domain Name for the purpose of selling the Domain Name to the Complainant or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the Domain Name. Accordingly, the Domain Name has been registered and used in bad faith.

The Panel concludes (a) that the Domain Name <sonyphilips.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(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <sonyphilips.com> be cancelled.

P-E H Petter Rindforth
Sole Panelist

Dated: July 2, 2002