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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Koninklijke Philips Electronics NV -v- French [2003] DRS 998 (8 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/998.html Cite as: [2003] DRS 998 |
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Nominet UK Dispute Resolution Service
DRS 00998
Koninklijke Philips Electronics N.V. –v- Nick French
Decision of Independent Expert
1. Parties
Complainant: Koninklijke Philips Electronics N.V.
Country: The Netherlands
Respondent: Nick French
Country: Great Britain
2. Domain Name
philipsdictation.co.uk and philips-dictation.co.uk (“the Domain Names”)
3. Procedural Background
The Complaint was lodged with Nominet on 8 May 2003. Nominet validated the Complaint and informed the Respondent on 13 May 2003 that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 4 June 2003) to submit a Response.
No response was received. The Complainant was informed accordingly and on 17 June 2003, the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 6 of the Nominet DRS Policy (“the Policy”).
On 24 June 2003 Nominet appointed Andrew Clinton (“the Expert”). On 30 June 2003 the Expert confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal / Procedural Issues
The Respondent has made no response to the Complaint.
Clause 15b of the Procedure for the conduct of proceedings under the DRS (“the Procedure”) provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the Complaint.
The Expert is of the view that there are no exceptional circumstances and as the Respondent has failed to respond to the Complaint within the specified time limit the Expert can proceed to a Decision.
Clause 15c of the Procedure states that, in the absence of exceptional circumstances, if a Party does not comply with any provision in the Policy or the Procedure the Expert will draw such inferences from the Party’s non compliance as he or she considers appropriate.
5. The Facts
The Domain Names were both registered on 22 March 2002 in the name of the Respondent.
6. The Parties Contentions
6.1 Complaint
The Complaint, so far as is material, reads as follows:-
“That the trademark “Philips” has been registered by the predecessors of Koninklijke Philips Electronics N.V. (KPENV), in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide. The trademark “Philips” is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, and from medical systems to semiconductors. “Philips” brand name is one of the company’s most important assets as it has spent substantially on supporting its brand worldwide. List of countries in which the trademark is registered with is attached herewith as Annex [1] as well as a copy of the “Philips” trademark certificate in the United Kingdom, as Annex [2]
The domain name is similar to the Complainant's mark "PHILIPS". The first 7 letters correspond exactly to the Complainant's name and mark. The remaining letters comprise of "dictation". This word is descriptive in nature and can be associated with the products sold by the speech processing division of the Complainant. The distinctive component of the Domain Name is, therefore, the name "PHILIPS", which will inevitably be seen in this context for exactly what it is - a famous brand name obviously relevant to such goods or services. – (See also Nokia Corporation v. Andrew Stone (DRS 00068); Nokia Corporation v. Just Phones Limited (DRS 0058); GE Capital Corporation (Holdings) v. Richard Perry (DRS 00186))
The domain names, in the hands of the Respondent are an abusive registration for the following reasons, in accordance with section 3 of the DRS Policy:-
Evidence of Abusive Registration:-
(i) In accordance with paragraph 3 of the policy, a non-exhaustive list of factors may be provided, as evidence that the domain names are of an abusive registration, on the balance of probabilities. The Respondent, in this case, takes unfair advantage of the Complainant’s rights since the domain names have been registered primarily for the purpose of unfairly disrupting the business of the Complainant in a way, which potentially confuses people, or the businesses into believing that the domain names are registered to, operated or authorised by, or otherwise connected with the Complainant. Although the Respondent uses these domain names in connection with a genuine offering of goods and services as well as states on its website that it is not associated with the Philips Company, the fact remains that the Respondent makes no independent use of the domain names, but merely links it directly to its homepage at www.data-supplies.co.uk. It would be reasonable to infer that Internet users who search the web by use of the domain names, would expect to find a site connected with the Complainant’s business. In the case of “Truck ‘n Trolley Ltd v. Eastern Storage Equipment Ltd (DRS00468), the Panel stated “the fact that the Respondent indicated to the customer that it was not the Complainant does not retract from the fact that by then the confusion has occurred.” This confusion is further enhanced by the fact that the Respondent has adopted features of the Complainant’s “look and feel” approach on its websites, in particular the use of the Complainant’s shield emblem and wordmark on the websites corresponding to the domain names in dispute. A copy of these web pages are attached herewith as Annex [3]. Internet users can easily be misled into believing that the web sites corresponding to the domain names belong to the Complainant. The Respondent’s intention is obviously to increase traffic to its websites by diverting users who hope to find “Philips” related products in the field of speech processing. This would certainly fall within the non-exhaustive scope of an “abusive registration” as it’s a clear attempt by the Respondent to capitalize upon the goodwill attaching to the Complainant’s name and reputation. In addition, the Respondent is a secondary unauthorised dealer, who also happens to sell brands other than Philips on its websites and the use of the Complainant’s shield emblem and wordmark, only serves to enhance confusion to the Internet users, taking unfair advantage of the Complainant’s rights which is detrimental to the Complainant’s business, since it creates an impression that the websites have been sponsored, affiliated or endorsed by the Philips Group, whilst the Respondent is only a secondary dealer. This follows the analysis by the Court of Appeal in the leading UK case, “British Telecommunications plc and Others v. One in a Million Ltd and Others” ([1999] ETMR 61), where the Court stated that “The placing on a register of a distinctive name makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name.” In view of the fact that the Respondent operates a business in the same field as the Complainant, the Respondent could be seen to leech business from the Complainant. In the case of Jackson-Stops and staff v. Michael Jackson Stops Fanzine (DRS 00073), the Panel stated that “the likelihood of confusion and the potential or detriment to a Complainant business arising out of the use of a Domain Name is capable of amounting to an abusive registration even though there is no evidence that any particular person has actually been confused and the criteria of paragraph 3 a ii do not in terms apply.” The Panel in the case of GE Fanuc v. Pennine Automation Limited stated that “the effect of the Respondent’s use of the Domain Name is to bring its own website to the attention of at least some individuals who intend, in fact, to access the Complainant’s website. That is plainly to take advantage of the Complainant’s goodwill and absent strong grounds for concluding to the contrary, it is an advantage that it is likely to be unfair.” This stand was further re-iterated in the case of Panavision Int’l, L.P. v Toeppen, 141 F.3d 1316 (9th Cir. 1998) that a customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name. A domain name mirroring a corporate name/product name may be a valued corporate asset, as it facilitates communications with a customer base. Thus, customers expect to find a “Philips” website (or a company affiliated/sponsored by Philips) when accessing philipsdictation.co.uk and/or philips-dictation.co.uk but instead, consumers who connect to these domains will discover “Data Supplies” on these websites and may assume a connection to the Complainant, if the internet users detects the use of the Complainant’s shield emblem and wordmark. In this regard, the Complainant infers that the Respondent has registered the domain name based on a deliberate attempt to attract users to its web site for commercial gain due to the confusion with the Complainant’s mark which amounts to an abusive registration since the domain name contains information on the goods/services of the Complainant’s in addition to the offering of these goods/services for sale. (See also Ifi Limitednd v. iNET Learning Limited – DRS 00161; Barclays Bank PLC v. Game (DRS 00115), British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61; Starbucks Corp. v. David Bucknall – DRS 00402; Holyland Fox Limited v. Alexander Seven Marketing Company Limited – DRS 00488; Nokia Corporation v. Just Phones Limited – DRS 0058);
(ii) In accordance with paragraph 3(I)(a) of the Policy, the Complainant argues that the Respondent has registered or otherwise acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the domain name. The Complainant’s indirect subsidiary, Philips Speech Processing in the United Kingdom, had sent the Respondent a letter offering to buy the domain names for £600, being the registration and transfer costs for these names as well as a goodwill gesture. A copy of the letter is attached herewith as Annex [4]. The Respondent responded by stating “that over a six month period these domain names have realised approximately £2,000 in profit to us, and I expected that to grow, so that over the two years we had them registered, they would realise at least £10,000.” A copy of the Respondent’s letter is attached herewith as Annex [5]. This inevitably draws the Complainant to the conclusion that the Respondent is quite happy to relinquish the domain names to the Complainant for a considerable amount of potential profit even though the domain names seemed to have been “profitable” for the Respondent, past and present. This infers a clear intention to profit from the sale of the domain names, undoubtedly, making its “legitimate interest” secondary to the Complainant’s concern. The Complainant’s cease and decease letter to the Respondent is also attached herewith as Annex [6] (See also Space Imaging LLC v. Stephen J. Brownell – AF 0298a-0298d; Societe Nationale des Chemins de Fer Francais (SNCF) v. Queilles Philippe – WIPO D2002-0603; Guerlain S.A. v. Peikang – WIPO D200-0055; Wnbridge Inc. v. Youngchul (Michael) Chang and IG Communication Inc. – WIPO D2001 – 0576; Don Cornelius Productions, Inc. v. Bob Williamson d/b/a 1Domains – WIPO D2001 – 1376; The Law Society v. M.A. Sears – WIPO D2000-0342);
(iii) The Complainant has not licensed or otherwise permitted the Respondent to register the domain names incorporating the word “Philips” within the domain names. In the case of Chase Manhattan Corp. v. Whitely (WIPO D2000-0346), the Panel had even stated that the “Respondent could only defeat Complainant’s trademark rights by showing prior registration and/or use or a license or Complainant’s acquiescence in Respondent’s trademark use or similar.” In this case, the Respondent cannot prove any of the above elements which consequently proves that this is an abusive registration in accordance with paragraph 3(a) of the policy which states that “a non-exhaustive list of factors” may be evidence of an abusive registration (see also Nokia Corporation v. Andrew Stone (DRS 00068); Nokia Corporation v. Nokiagirls.com a.k.a. IBCC – D2000-0102; Veuve Clicquot Ponsardin v. Net-Promotion, Inc. – D2000-0347; Cyro Industries v. Contemporary Design – WIPO D2000-0336; PrintForBusiness B.V. v. LBS Horticulture – WPO D2001-1182; La Francaise Des Jeux v. Visotex S.A. – WIPO D2000-0924; Adecco S.A. v. XXXXXX – Reg. ID C953978-LRMS; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp. – WIPO D2000-0464; Telstra Corporation Limited v. Nuclear Marshmallows – D2000-0003; Pharmacia & Upjohn AB v. Dario H. Romero – D2000-1273).
(iv) When one registers a co.uk extension, Nominet has explicitly stated on its site under “Infringing Third Party rights” that “care must be taken to avoid infringing the rights that a third party might have in the name, intentionally or otherwise. This term applies to businesses and individuals alike.” A copy of this statement by Nominet is attached as Annex [7]. In short, the Respondent should have taken heed of Nominet’s advice and conducted a trademark search or consulted legal advice, before registration of the said domain name.
In accordance with section 4 of the DRS Policy:-
(v) The Respondent is not commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name since the Respondent is known explicitly as “Data Supplies and Accessories Ltd” – (See also Uniroyal Engineered Products, Inc. v. Nauga Network Services – WIPO D2000-0503; also Nokia Corporation v. Nokiagirls.com a.k.a. IBCC – D2000-0102; Veuve qClicquot Ponsardin v. Net-Promotion, Inc. – D2000-0347; Cyro Industries v. Contemporary Design – WIPO D2000-0336; PrintForBusiness B.V. v. LBS Horticulture – WIPO D2001-1182; La Francaise Des Jeux v. Visotex S.A. – WIPO D2000-0924; Adecco S.A. v. XXXXXX – Reg. ID C953978-LRMS; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logisitics Corp. – WIPO D2000-0464).
(vi) The Respondent has not made legitimate non-commercial or fair use of the domain name since the activities carried out on the website corresponding to the domain name in dispute, is clearly one of commercial use as the Respondent is in the business of selling the Complainant’s products as well as that of other brands, using the domain names in dispute which leads to a non-fair use of the name (See also Vodafone Group PLC v. Knights Independent Traders – DRS 00445).”
The Complainant seeks transfers of the Domain Names.
6.2 Response
No response was received from the Respondent.
7. Discussion and Findings
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: first, that it has Rights in respect of a name or mark which is identical or similar to the Domain Names; and, secondly that the Domain Names, in the hands of the Respondent, are an Abusive Registration.
7.1 Complainant’s Rights
The Complainant has provided evidence of its rights in the very well known trade mark “Philips”. The Complainant is the registered proprietor of the trade mark number 927851 in class 9 issued on 10 July 1968 and renewed for a period of 14 years on 10 July 1989.
It is clear to the Expert that the Complainant has rights in the word “Philips”. The first seven letters of both of the Domain Names are identical to the Complainant’s mark. The remaining portion of the Domain Names consist of the non distinctive suffix “dictation”, the only difference being that in one domain name a hyphen appears before the suffix. The Expert finds that the Complainant has rights in a mark which is similar to the Domain Names.
7.2 Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy is as follows:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details.
The Complainant argues that the Respondent has no right to the Domain Names incorporating as they do the extensively used trade mark Philips. The Complainant says that it has not licensed or otherwise permitted the Respondent to register domain names incorporating the trade mark Philips. The Complainant also says that the Respondent operates a business in the same field as the Complainant.
The Domain Names both direct to a website at www.data-supplies.com which offers various Philips’ dictation systems for sale. The website states:
“Please note that we are an independent reseller of Philips products. To go to the official Philips site click the logo below”.
There is also a notice that all trade marks, trade names, service marks and logos referred to belong to their respective companies.
The Logo takes you to www.speech.philips.com which appears to be a website belonging to the Complainant offering speech processing and dictation systems for sale.
The Complainant argues that the Respondent has registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant in a way which potentially confuses people or businesses into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant.
There is no evidence of actual confusion, indeed the Complainant refers only to the potential for confusion, and paragraph 3(a)(ii) of the non-exhaustive list of factors (circumstances indicating that the Respondent is using the Domain Name in a way which has confused people) is therefore not made out as, in the Expert’s view, it requires evidence of confusion.
The Complainant also relies upon paragraph 3(a)(i)C, ie circumstances indicating that the Respondent has registered or otherwise acquired the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant.
The Complainant asserts that the Respondent’s intention is seemingly to increase traffic to its website by diverting users who hope to find Philips related products in the field of speech processing for sale but, instead find themselves at the website of an unauthorised secondary dealer in Philips goods. It is argued that customers expect to find a Philips website (or a company affiliated/sponsored by Philips) but instead consumers who connect to the Domain Names discover, after arriving at the website, that there is no such connection. In essence Philips complains of initial internet confusion, people will believe they are accessing an official Philips website and it is only once they have accessed the site that they will or may discover there is no official connection to Philips.
The Appeal Panel in the case DRS 00248 (seiko-shop.co.uk) had to consider whether the registration and use of a domain name, incorporating a supplier’s registered trade mark together with other non distinctive characters, by a legitimate trader in that supplier’s goods, but without the approval of the supplier, took unfair advantage of the Complainant’s supplier rights. The Appeal Panel held, on the facts and evidence of that case, that it was unfair for the Respondent to appropriate the Complainant’s trade mark as a domain name.
Each case will turn on its facts and it is of course for the Complainant to prove its case on the balance of probabilities. In the Expert’s view if the Domain Names make, or are liable to be perceived as making, the representation that there is something approved or official about the website that would constitute unfair advantage being taken by the Respondent or unfair detriment caused to the Complainant and it would amount to Abusive Registrations.
The Respondent has not put forward an explanation for his choice of domain names. However, in the letter dated 7 November 2002 from the Respondent (which is attached to the Complaint) the Respondent claims that the Domain Names have realised approx £2,000 in profit over a 6 month period. In the absence of a formal explanation by the Respondent for the choice of the Domain Names the Expert is of the view that the Domain Names do make or are liable to be perceived as making a representation that there is something approved or official about the website and thus it goes beyond a mere representation that it is a business that sells Philips goods. The Expert therefore finds that the registration and use of the Domain Names amounts to an Abusive Registration in that it has taken unfair advantage of or has been unfairly detrimental to the Complainant’s Rights.
The Complainant also relies upon paragraph 3aiA of the Policy (valuable consideration in excess of documented out-of-pocket expenses). It seems to the Expert that the letter from the Respondent dated 7 November 2002 does offer some support to the Complainant but in view of the finding above there is no need to make a finding on this contention.
The Expert would like to record his concern at the repeated references to WIPO decisions during the course of the Complaint. A complaint under the DRS is decided according to the terms of the Policy and decisions reached under a different procedure offer no assistance.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4a of the Policy as follows:-
i. Before being informed of the Complainant’s dispute, the Respondent has:
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
The Respondent has not filed a Response and there is no evidence on behalf of the Respondent to suggest any of the factors in paragraph 4 are made out.
Decision
The Expert finds that on the balance of probabilities the Complainant has rights in a name which is similar to the Domain Names and that the Domain Names are, in the hands of the Respondent, Abusive Registrations. The Expert directs that the Domain Names be transferred to the Complainant.
Andrew Clinton
Date: 8 July 2003