Leitsätzlichesbuyaphilips.tv und widescreenphilips.tv enthalten die bekannte Marke "Philips"; die Wortkombinationen sind dazu geeignet, Verwechslungen bzgl. Der Zugehörigkeit des Domain-Inhabers bzw. des Web-Angebots zu dem Unternehmen Philips hervorzurufen. Die Domains wurden übertragen.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: DTV2002-0004
Entscheidung vom 20. Juli 2002
1. The Parties
The Complainant is ... Philips ... The Netherlands.
The Respondent is A.H., ..., United Kingdom.
2. The Domain Name and Registrar
The domain names at issue are <buyaphilips.tv> and <widescreenphilips.tv>.
The Registrar is Easyspace Ltd, 2 Park Court, Pyrford Road, West Byfleet, Surrey, KT14 6SD, United Kingdom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on June 13, 2002, and hardcopies were received by the Center on June 17, 2002. The Center acknowledged receipt of the Complaint on June 15, 2002.
On the same day the Center sent Easyspace Ltd a request for verification of registration data. On June 19, 2002, Easyspace Ltd confirmed that it is the Registrar, that the Respondent is the Registrant and the administrative contact of the domain names <buyaphilips.tv > and <widescreenphilips.tv>.
The Center verified that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied that this is the case.
On June 20, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Respondent, on July 11, 2002.
On July 17, 2002, the Center notified the parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panelâ€™s decision is July 31, 2002.
4. Factual Background
The Complainant is an internationally leading company in the field of consumer electronics and domestic appliances, including television sets.
The Complainant is the owner of registrations for the trademark "Philips" in many countries all over the world for products belonging to its before mentioned activities. Together with a list of about 150 countries, the Complainant has submitted a copy of its British registration No 927851 dated July 10, 1968, for a wide list of products in class 9, and a copy of its international registration No. 579620 dated November 21, 1991, for products in classes 7,8,9,10,11,35,36,37,38,40,41 and 42. Furthermore, the trademark "Philips" is clearly an internationally well-known mark in the field of consumer electronics and household appliances. It enjoys therefore, even in countries where it may not be registered, the far-reaching protection of a well-known mark.
The Respondent registered on November 9, 2000, the domain names <buyaphilips.tv> and <widescreenphilips.tv>, which it uses to provide a link to the "sex in Britain.com" website (as evidenced by Annex 6 to the Complaint).
5. Partiesâ€™ Contentions
The Complainant submits that (1) the domain names <buyaphilips.tv> and <widescreenphilips.tv> are identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.
The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainantâ€™s submissions, and all inferences that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant:
1) The domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain names; and
3) the domain names have been registered and are being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain names <buyaphilips.tv> and <widescreenphilips.tv> are not identical with the trademark "Philips" in which the Complainant has rights. However, the domain names integrate in their entirety the word mark PHILIPS, combined with the descriptive terms "buy a" and "widescreen" respectively. Such combination of the trademark PHILIPS with terms that are descriptive of the product or its characteristics is, under trademark law principles, likely to be understood by consumers as being a variation of the trademark PHILIPS or an invitation to buy a product of the Complainant. Whilst it is recognized that the gtld, used for a domain name in combination with a mark of the Complainant, cannot be taken into consideration as an element which would exclude or diminish confusing similarity, in the present case the gtld ".tv" even increases the confusing similarity, as users will generally not understand it as reference to Tuvalu, rather as the common abbreviation for "television". When used as a domain name, the combinations chosen by the Respondent are for the same reasons likely to be understood by visitors as providing a link to a website belonging to the Complainant or to a website of an authorized sales agent of the Complainant. The domain names <buyaphilips.tv> and <widescreenphilips.tv> are therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.
2) Legitimate rights or interests in respect of the domain names
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain names for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain names lead to a website of "sex in Britain.com", offering adult videos, which also promotes "Starlight" condoms. Even if the Respondent does not use its domain names to promote commercial activities of its own, the Panelist is satisfied that providing such a link to that website cannot be considered to be non-commercial. It would make no sense for the Respondent to provide links to a pornographic website, if it where not to attract a fee, the more as such arrangements are common (in the present case, the Respondent may even have a commercial interest in providing links to that website; see below at 3). Finally, for the same reason that the Respondent does not promote its own commercial activities, the Respondent has not been able to become known under the name <buyaphilips.tv> or under the name <widescreenphilips.tv>.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests vis-Ã -vis the Complainant in the domain names <buyaphilips.tv> and <widescreenphilips.tv>.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
The Respondent has not attempted to sell the domain names to the Complainant. When receiving a cease and desist letter from the Complainant dated March 6, 2002, he replied by e-mail explaining that due to his being away on business he could not draft a letter in reply until March 25, 2002. However, he never replied to the Complainantâ€™s letter. The Complainant draws the conclusion from this behavior that the Respondent simply tried to gain time and intended to continue with his bad faith use of the domain names. For its assumption that the Respondent registered and uses the domain names in bad faith, the Complainant submits the following:
The Respondent had knowledge of the Complainantâ€™s mark PHILIPS, when it registered the domain names <buyaphilips.tv> and <widescreenphilips.tv>. Such a conclusion cannot only be drawn from the very fact that PHILIPS is an extremely well-known mark, particularly for television sets, but also from the combination of the words "widescreen" and "philips" in one of the two domain names and from the fact that the Respondent chose to register the two domain names in the .tv domain, since for many users "tv" stands for "television". This alone is already a strong indication of registration in bad faith. The Panelist is satisfied that the Respondent indeed registered the domain names in bad faith, taking into account the use which the Registrant is making of them.
As said before, the Respondent has been using the domain names <buyaphilips.tv> and <widescreenphilips.tv> as a link to a pornographic website. Thus it directs visitors to this website and they cannot escape. By such use the Respondent intentionally attempts to attract Internet users to an on-line location, which creates a likelihood of confusion with the Complainantâ€™s mark as to the source, sponsorship, affiliation, or endorsement of that location and at the same time is detrimental to the reputation of the Complainantâ€™s mark. The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion, as rightly has been concluded in the decision Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761.
In the absence of any submission of the Respondent, the Panelist has no doubt that the Respondent makes that use of his domain names for commercial gain. Thus it is pursuing an activity, which must be considered to be bad faith under the Policy. Even if paragraph 4(b)(iv) of the Policy refers to the website or other location of the Respondent, whilst the Respondent uses its domain names primarily in order to revert the visitor to another website, the Panelist considers the circumstances of the case to be evidence of registration and use in bad faith, at least comparable to the circumstances listed in paragraph 4(b)(iv) of the Policy. If one considers the website, which is appearing when an Internet user types one of the Respondentâ€™s domain names, to be "another on-line location", the Respondentâ€™s activity clearly is covered by paragraph 4(b)(iv). Be it as it may, the circumstances as listed in paragraphs 4(b)(i) to (iv) are not exhaustive and the Panelist is satisfied that the pattern developed by the Respondent is evidence of registration and use in bad faith. This conclusion is confirmed by some additional facts:
There seems to be a link between the Respondent and the "Starlight" business also advertised on the "sex in Britain.com" website. The Complainant has submitted a printout of the decision DRS 00205 of the Nominet UK Dispute Resolution Service in the case M.E.Mail Order v. Starlight, and in that decision the Respondent of the present case is cited as contact for the Respondent ("Starlight"). Consequently it can even be assumed that the Respondent provides the domain names <buyaphilips.tv> and <widescreenphilips.tv> as links to a website in which he has a commercial interest.
Indeed the Respondent seems to have registered and used a good number of domain names to provide a link to that website, where also "Starlight" condoms are promoted. Examples referred to by the Complainant are <buyasony.tv> and <global-telecomms.co.uk>.
Even if these are only additional elements, they confirm that the Respondent has developed a pattern that must be considered to be registration and use of the domain names <buyaphilips.tv> and <widescreenphilips.tv> in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain names <buyaphilips.tv> and <widescreenphilips.tv> be transferred to the Complainant.