LeitsätzlichesNach Ansicht des Schiedsrichters indiziert das Hinzufügen eines Schimpfwortes zu einer bekannten Marke in Verbindung mit einem Link auf die Website eines Konkurrenten des Markeninhabers den erforderlichen Bad Faith bei Registrierung und tatsächlicher Nutzung. Die Registrierung der Domain fuckphilips.com wird gelöscht.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-1041
Entscheidung vom 16. Dezember 2002
1. The Parties
Complainant is ... Philips ... Netherlands.
Respondent is Selling Domains Best ... States of America.
2. The Domain Name and Registrar
The disputed domain name <fuckphilips.com> is registered with eNom Inc, 16771 NE 80th Street, Suite #100, Redmond, WA 98052 United States.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2002. On November 12, 2002, the Center transmitted by e-mail to the Registrar a request for Registrar Verification in connection with the domain name at issue. On November 15, the Registrar transmitted to the Center its Registrar Verification confirming that Respondent is listed as the Registrant and provided contact details for the Registrant (indicating the address as shown above for Respondent; as regards Administrative Contacts, Billing Contacts and Technical Contact only "US" was mentioned). The Verification contained no further information.
In response to a Notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 18, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Resolution Policy (the "Policy"), 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 Paragraphs 2 (a) and (4) of the Rules, the Center formally notified Respondent of the Complaint and the proceedings commenced on November 19, 2002. The Notification of Complaint and Commencement of Administrative Proceeding was transmitted to Respondent by post/courier (with enclosures) and by e-mail (without enclosures). It was also transmitted to Complainant, to the Registrar and to ICANN. In accordance with Paragraph 5(a) of the Rules, the due date of the Response was December 9, 2002. The Respondent did not submit any Response. Accordingly, the Center notified Respondent's Default on December 10, 2002.
The Center appointed Mr. Henry Olsson as Sole Panelist in this case on December 13, 2002. Mr. Olsson 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 Panel finds that the Panel has been properly constituted.
4. Factual Background
Complainant in this case is a public limited company, which is incorporated in the Netherlands where it also holds its principal place of business.
Nothing is known in this case about the activities of Respondent.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant has agreed to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the principal office of Registrar is located.
5. Parties' Contentions
Complainant first asserts that the dispute is properly within the scope of the Policy and that the Administrative Panel has jurisdiction to decide the dispute, as the Registration Agreement pursuant to which the domain name at issue is registered incorporates the Policy.
As a factual background Complainant states that the trademark "Philips" has been registered by the predecessors of Complainant since 1891 and is registered in numerous jurisdictions worldwide. That trademark is, according to Complainant, synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances and from security systems to semiconductors. The "Philips" brand name is one of the most valuable assets of the company which has spent substantially on supporting its brand worldwide.
To support its contentions in this context Complainant has submitted a list of countries where the mark is registered as well as copies of registration certificates under the Madrid Agreement and of the same mark in the United States of America.
Identity or Confusing Similarity
In this respect Complainant submits that the domain name at issue is confusingly similar to the "Philips" trademark in which Complainant has rights. According to Complainant, the letters "Philips" match exactly Complainant's mark and the word "fuck" has for the average Internet user the same connotation as "suck" as both denominations indicate a hostility to the word immediately preceding it. In this respect Complainant refers, inter alia, to an earlier WIPO case where a Panel stated that the domain name <philipssucks.com> was confusingly similar to the trademark "Philips". Complainant also refers to another earlier WIPO case to stress that not all Internet users are English-speaking or familiar with the use of "sucks" for a site used for denigration; it is not unknown for companies to establish complaint or comment sites or areas of sites to obtain feedback on their products, and accordingly some people may suppose that a website of this nature is operated by Complainant.
Complainant furthermore alleges that Respondent in this case has not obtained a trademark registration for the word "Philips" and refers to still another WIPO case to the effect that Complainant has sufficiently satisfied the test in accordance with Paragraph 4.a (i) of the Policy when it was proven that Respondent had not obtained a trademark registration for elements of its domain name.
Rights or Legitimate Interests
Complainant first alleges that Respondent is not commonly known by the name <fuckphilips.com> or even by "Philips" as Registrant is an entity known as "Selling Domains Best." Respondent has, according to Complainant, not genuinely registered the domain name for the purpose of criticism of the "Philips" brand; Respondent seems to have registered a considerable number of domain names such as <fucksony.com> which incidentally happens to display an identical website as the domain name at issue. To support this, Complainant has submitted a copy of a Domain Name Investigation, dated June 12, 2002, stating that the domain name at issue was registered on October 25, 2001, by Mr. Yu Rang Moon at a Post Office Box in Springfield, Virginia, and that Registrant's contact e-mail address was firstname.lastname@example.org with which, according to a list attached, more than fifty domain name registrations are associated.
Furthermore, according to Complainant, Respondent is known as "Selling Domains Best" which infers to the Internet user that the domain name at issue is or could be for sale and also infers that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant, for valuable consideration in excess of the Registrant's out-of-pocket costs related to the domain name. Complainant refers in this context to an earlier WIPO Panel decision stating, basically, that the registration of a domain name with the purpose of selling it later for an exorbitant amount does not constitute a right or legitimate interest. Complainant stresses that in this case none of the provisions in Paragraph 4.c of the Policy or any other element beyond those non-exclusive provisions provides Respondent with a right or legitimate interest to the disputed domain name and, in addition, the website does not contain any genuine grievances and/or complaints against Complainant (apart from "Samsung" which only serves to enhance the fact that Respondent does not have a legitimate interest in the domain name).
Registration and Use in Bad Faith
Complainant's first contention in this respect is that Respondent has registered the domain name at issue primarily for the purpose of selling, renting or otherwise transferring it for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. This stems, according to Complainant, from the fact that the identity of the owner is "Selling Domains Best" and from the fact that Respondent has registered a number of domain names.
Complainant furthermore contends that Respondent has not registered the domain name as a protest/complaint site and thus should not be given protection under the Policy, which, Complainant stresses, applies only to abusive registrations. Complainant states that for a free speech case to be made it would be important to determine Respondent's intent behind the registration as either to create an Internet vehicle for the exercise of free speech and criticism or one based on bad faith elements such as linking the website to Complainant's competitor. Linking the website to a competitor hardly qualifies for a free-speech defense. Instead, Complainant stresses, Respondent has intentionally attempted to attract Internet users to the website of a competitor or another online location by creating a likelihood of confusion with Complainant; the website corresponding to the domain name at issue does not display an act of fair use or one of non-commercial context as the current website is certainly one of commercial nature. In line with the reasoning in an earlier WIPO Panel decision Complainant asserts that the suffix "fuck" is a very crude attempt to tarnish Complainantâ€™s mark. Also, according to Complainant, the fact that the website corresponding to the domain name, like <fucksony.com>, links directly to the website of a competitor enhances the confusion to the non-English speakers over the Internet as to the source of affiliation and sponsorship of the contents of the website as these entities are in the same field of business and thus falling within the broad scope of bad faith as set out in the Policy. Furthermore, Complainant contends, also with reference to an earlier WIPO Panel decision, that although the content of a site might enjoy free speech protection, the use of a trademark in the domain name does not enjoy the same protection.
Complainant also asserts that the registration was in bad faith because the contact details for Respondent, as set out in the Whois database, are, and have been, incomplete or inaccurate, and no contact details have been provided for Administrative, Billing and Technical Contacts. Complainant considers that Respondent wishes to conceal his/her identity for reasons of bad faith intentions and Respondent has also been in breach of the eNom Registration Agreement, a copy of which is provided.
Finally, Complainant contends that the registration of the domain name causes unfairness and is certainly detrimental to the business of Complainant as the mark is influential in the field of business for which it is registered; in this regard <fuckphilips.com> certainly heightens the likelihood of confusion to Internet users as to the source, affiliation or sponsorship of the website of Respondent by having it associated with the homepage of a competitor of Complainant.
In accordance with Paragraph 4.i of the Policy and for the reasons described above Complainant requests the Administrative Panel to issue a decision that the domain name at issue be cancelled.
Respondent, who has been duly communicated both the Complaint and the Notifications in this case, has not submitted any Response and is thus in Default.
6. Discussion and Findings
The Panel notes that the Registrar Verification does not include one of the elements
on which the Center requested information, namely whether the Policy is applicable to the domain name registration. The only information available in this respect is therefore the copy of the eNom. Inc. Registration Agreement that Complainant has submitted as evidence in a different context. Paragraph 4 of that Agreement contains a reference to the Dispute Policy of the Registrar and Complainant has submitted a copy of the eNom Uniform Domain Name Dispute Resolution Policy which is the one approved by ICANN on October 24, 1999. The Panel is therefore satisfied that the Policy applies to the domain name at issue and that Respondent is thus subject to the dispute resolution under the Policy.
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
Paragraph 4.a of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name, and;
- that the domain name has been registered and is being used in bad faith.
In the following part of this Decision, the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4.a (i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <fuckphilips.com>.
It is established in this case that Complainant has trademark rights in the mark "Philips" in a number of jurisdictions, including the United States; furthermore that mark is well known in connection with a great number of products primarily in the appliances field.
Complainant discusses in the Complaint the connotations of "suck" and "fuck" in the context of marks like "Philips". Regardless of the nature of those connotations it is clear to this Panel that the striking element in the domain name is "Philips." The notion "fuck" may also be striking but not in the same sense and the overall impression by Internet users would be some kind of association to Complainant's trademark either in a pejorative way or as indicating some type of links to Complainant. On the basis of those considerations, the Panel concludes that in fact there exists a confusing similarity between the domain name at issue and the trademark "Philips" in which Complainant has rights.
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
Complainant has invoked basically that Respondent is not commonly known neither by the name <fuckphilips.com> or even by "Philips," that Respondent has registered a considerable number of domain names, that the free speech defense would not be applicable and that the name of Respondent "Selling Domains Best" infers that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for a valuable consideration in excess of the documented out-of-pocket costs related to the domain name.
The Panel notes that the website "www.fuckphilips.com" contains links to Samsung which is a competitor to Complainant, and that another of Respondent's websites, "www.fucksony.com", contains an identical image and also a link to Samsung. According to the Domain Name Investigation of June 12, 2002, that Complainant has submitted, the domain name at issue was first registered on October 25, 2001, Mr. Yu Rang Moon at a Post Office box address in Springfield, Virginia, and with contact e-mail address email@example.com. The list which Complainant has submitted of domains registered by Mr. Moon under the same e-mail contact address comprises more than 50 domain names.
Several of the circumstances invoked by Complainant concerning rights and legitimate interests are also referred to under the following heading.
The Panel notes again that Respondent has not submitted any Response and has thus not, despite the opportunity given, contested any of the allegations by Complainant.
The Panel comes back to the issue of the free speech defense under the following heading and draws already here the conclusion that that defense, which Respondent has not even invoked, is not applicable in this case.
In considering the circumstances which have been referred to by Complainant the Panel comes to the conclusion that in fact Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.b of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
Complainant has invoked a number of circumstances in order to prove registration and use in bad faith. The Panel notes again that Respondent has not submitted any Response and thus has not contested any of the allegations of Complainant in this respect.
In order to show registration of the domain name in bad faith Complainant has referred to, in the first instance, Respondentâ€™s identity as "Selling Domains Best" and the fact that Respondent has registered a number of domain names as shown in an Annex to the Complaint. In the view of Complainant, this proves that Respondent has registered the domain name at issue primarily for the purpose of selling, renting or otherwise transferring the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
While the circumstances that Complainant invokes certainly point in the direction suggested by Complainant, they are, in the opinion of the Panel, not sufficient to prove Respondent's intentions in this respect as no offer to sell or transfer the domain name at issue to Complainant seem to have been made. The Panel therefore has to look for other indications to consider whether in fact registration and use in bad faith has been established.
The next circumstance invoked by Complainant is that Respondent has intentionally attempted to attract Internet users to the website of a competitor by creating a likelihood of confusion with Complainant. Complainant has referred to the fact that there is, on the website, a link to "Samsung" which is obviously a competitor of Complainant. The Panel notes in this context also that – as mentioned above - a similar link is to be found at the website at the domain name <fucksony.com>. Complainant argues that, in view of those circumstances, Respondentâ€™s website can not be said to have been registered as a protest/complaint site and thus should not be given protection as a free speech case. As mentioned under the previous heading, the Panel agrees in this respect.
Respondentâ€™s addition of the prefix "fuck" before Complainantâ€™s trademark is, in the opinion of the Panel, an attempt to tarnish Complainantâ€™s mark and is such as to confuse Internet users – in particular non-English-speaking ones – as to the source of affiliation and sponsorship of the website under the domain name at issue, the more so as the website contains a link to a competitor.
When determining whether Respondent has registered the domain name at issue in bad faith, the Panel also notes that Respondent has submitted insufficient or even inaccurate contact details which leads to the suspicion that Respondent tries to conceal its true identity.
The circumstances referred to indicate, in the view of the Panel, that Respondent has registered, and is using, as set out in Paragraph 4b(iv) of the Policy, the domain name primarily by intentionally attempting to attract, for commercial gain, Internet users to the website or other on-line location by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website. Those circumstances also point at a wish by Respondent to disrupt Complainant's business, in particular by inserting a link to a competitor of Complainant on the website and by tarnishing Complainant's trademark as mentioned above.
In considering these circumstances the Panel concludes that it has been established that Respondent has registered and is using the domain name at issue in bad faith.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainant's request for a cancellation of the registration of the domain name shall consequently be approved.
In accordance with Complainant's request and with reference to Paragraph 4.i of the Policy, the Administrative Panel requires the registration of the domain name <fuckphilips.com> to be cancelled.