Koninklijke Philips Electronics N.V. v. Elight Co.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Koninklijke

Philips Electronics v. Elight Co.

Case No.

D2001-1291

1. The Parties

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..

2. The Domain Name and

Registrar

The domain name at issue

is <philipslighting.net>, registered with Network Solutions, Inc., on

October 30, 1999.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

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.

B. Respondent

There has been no response

from the Respondent.

6. Discussion and Findings

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.

7. Decision

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

More cases by this complainant

• Koninklijke Philips Electronics N.V. v. Whois privacy services, provided by DomainProtect / Philip Vlasov — D2011-2274 · philips-shop.com · Transfer · 04 Mar 2012
• Koninklijke Philips Electronics N.V. v. Administrative Contact [3595259]: Carlos Solivera solivec36@yahoo.com — D2011-0988 · buyphilips.com · Transfer · 01 Aug 2011
• Koninklijke Philips Electronics N.V. — D2011-0330 · Terminated
• Koninklijke Philips Electronics N.V. v. Whois Agent — D2011-0059 · philipslighting.com · Transfer · 04 Mar 2011
• Koninklijke Philips Electronics N.V. v. Maksim — D2010-1701 · philips-ua.com · Transfer · 13 Dec 2010
• Koninklijke Philips Electronics N.V. v. Sergey Nikolaenko — D2010-1494 · philipsua.com · Transfer · 05 Nov 2010