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Koninklijke Philips Electronics N.V. v. Cho Sanghyuck

WIPO Case No. D2002-0426

Outcome
Cancellation
Domain names
sonyphilips.com
Complainant
Koninklijke Philips Electronics N.V.
Respondent
Cho Sanghyuck
Panelist
Rindforth
Decided
08 Jul 2002
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0426.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Koninklijke

Philips Electronics N.V. v. Cho Sanghyuck

Case No.

D2002-0426

1. The Parties

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").

2. The Domain Name and

Registrar

The dispute concerns the

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

The Registrar is Network

Solutions, Inc., Herndon, Virginia, United States of America.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

A. 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.

B. Respondent

The Respondent has not

contested the allegations of the Complaint.

6. Discussion and Findings

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.

1. Identical or Confusingly

Similar Trademark?

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.

2. No Rights or Legitimate

Interest?

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.

3. Registered and Used

in Bad Faith?

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.

7. Decision

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

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