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Koninklijke Philips Electronics v. Elight Co. [2002] GENDND 651 (30 April 2002)

WIPO Arbitration and Mediation Center

The Complainant is Koninklijke Philips Electronics N.V., a public limited company incorporated under the laws of The Netherlands, located at Groenewoudseweg 1, 5621 BA Eindhoven, The Netherlands.

The Respondent is Elight Co., situated at 4649 West Rosecrans Avenue, Hawthorne, CA 90250, U.S.A..

The domain name at issue is <philipslighting.net>, registered with Network Solutions, Inc., on October 30, 1999.

A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 24, 2001, and in hard copy form on October 26, 2001. An acknowledgement of receipt was sent to the Complainant on October 29, 2001. On November 1, 2001, the WIPO Center requested and on November 7, 2001, received a Registrar Verification issued by Network Solutions Inc. Payment of the administration fee was duly received. An amendment to complaint relating to section VIII Mutual Jurisdiction was received electronically on November 12, 2001 and in hard copy form on November 15, 2001. Having verified that the complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), on November 16, 2001, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the parties and to Network Solutions Inc. A Notification of Respondent Default was sent on December 7, 2001.

The formal date set for commencement of this administrative proceeding was November 16, 2001. The Complainant having chosen to have the dispute decided by a single-member Administrative Panel, the Panel was constituted on the basis of a Statement of Acceptance and Declaration of Impartiality and Independence dated December 18, 2001. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on that same day, indicating as single panelist Gunnar Karnell.

On December 18, 2001, the WIPO Center forwarded to the Panel by courier the relevant documents, which were received on December 20, 2001. Pursuant to Rule 5 (b), in the absence of exceptional circumstances, the Panel is required to forward its decision by January 2, 2002.

In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the courts where the Respondent is located.

The Registrar Verification states that the Uniform Policy applies to the domain name at issue.

A. Complainant (short summary; and request for remedy)

1) The Respondent’s domain name <philipslighting.net> is confusingly similar to Complainant’s trademark "Philips", which has been registered in The Netherlands since 1891 and is registered in numerous jurisdictions worldwide. The mark is synonymous with a wide spectrum of products, varying from consumer electronics to domestic appliances, and from security systems to semiconductors. "Philips’" brand name is the company’s most important asset.

2) The Respondent has no rights or legitimate interest in the domain name <philipslighting.net>. The domain name, incorporating the word "philips", has been registered without any authorisation from the Complainant.

The Respondent’s web page is still under construction and not yet active. Before any notice was communicated to the Respondent, there has been no evidence of any use or preparation to use the domain name or any corresponding name in connection with a bona fide offering of goods or services, in spite of the fact that the website has been "under construction" since more than two years. There has been no reply to letters from the Complainant explaining its concern about the registration of the domain name. The Respondent has not been commonly known by the domain name. Complainant has tried to reach the Respondent by various means, including e-mail to the e-mail address registered as the Respondent’s administrative and billing contact, without receiving any answer.

3) The Respondent has registered the domain name <philipslighting.net> and uses it in bad faith.

The registration is detrimental to the business of the Complainant in its lighting field of business. It has occurred for the purpose of preventing the trademark owner from reflecting the mark in a corresponding domain name in order also to disrupt the business of the Complainant and perhaps speculating on the profitability of the domain name, e.g. as related to an intention, on the part of the Respondent, as indicated by the inactive website, to transfer the domain name for valuable consideration in the future, possibly by selling it to the Complainant for profits. The registration may have been effected with the intention to create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainant’s trademark, particularly in the lighting field. The Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to the registration or acquisition of the domain name.

4) The Complainant has requested, in accordance with Paragraph 4 (i). of the Uniform Policy, that the Administrative Panel orders the transfer of the domain name <philipslighting.net> to the Complainant.

There has been no response from the Respondent.

Evidently, the inclusion of the word "philips" in any registered domain name does not in itself warrant its transfer to the Complainant. However, in this particular case, even if arguments adduced by the Complainant are based to a considerable extent on speculations about the Respondent’s intentions, the circumstances tell conclusively against the Respondent.

A. The domain name <philipslighting.net> is confusingly similar, although in a non-textural way, to the registered trademark "Philips". The added gTLD <.net> and the component "lighting" do not affect this assertion. The trademark "Philips" ("philips") is a well-known mark with worldwide recognition in a market sector of a broad range of electronic equipment, much of which relates to "lighting". The public to which the trademark "Philips" is directed will, because of its connection to the word element "lighting" in the domain name, relating to a Philips’ market sector as mentioned, clearly be confused to believe that the domain name refers to products and services of the Complainant or to someone authorised by the Complainant.

B. Evidence provided by the Complainant shows that the Respondent has no rights, nor any legitimate interest, in respect of its domain name. Any use by the Respondent of the trademark in connection with the word "lighting" in one name, for any possible goods or services in the market of electronic equipment etc., would require permission, ultimately by the Complainant. No such permission has been given and it is not a legitimate interest worthy of respect to be allowed to register a domain name "on expectation" that permission may one day be given to activate a "sleeping" domain name of confusing similarity to an established mark such as that of the Complainant.

C. The Respondent has been shown to have registered the domain name in bad faith and to misuse the domain name system to the detriment of a legitimate trademark right holder, the Complainant. The Respondent’s continued possession of the registration of the domain name <philipslighting.net>, characterised as described here above, constitutes conclusive evidence that the name is being used in bad faith. An attitude of "wait and see" or a policy of extended and current inactivity under the standard phrase "under construction" for the website on the part of the Respondent – neither responding to letters from the Complainant nor to the formal complaint now before the Panel – does not deserve legal recognition under the circumstances evidenced in the case.

D. The Administrative panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case.

The Administrative Panel requires that the registration of the domain name <philipslighting.net> be transferred to the Complainant.

Gunnar Karnell
Panelist

Dated: December 29, 2001