Koninklijke Philips Electronics NV -v- Punjab Record Centre Ltd [2003] DRS 778 (10 February 2003)

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The Complaint was lodged with Nominet on 18 December 2002. Nominet validated the Complaint and informed the Respondent on 23 December 2002 that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 17 January 2003) to submit a Response.

No response was received. The Complainant was informed accordingly and on 20 January 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 21 January 2003 Nominet appointed Andrew Clinton (“the Expert”). On 22 January 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.

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.

Clause 2a specifies how a complaint may be sent to the Respondent and states, so far as is material, as follows:-

‘We will send a complaint to the Respondent by using, in our discretion, any of the following means:

i. sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in our Domain Name register database entry for the Domain Name in dispute;

A. postmaster@<the Domain Name in dispute>; or
B. if the Domain Name resolves to an active web page (other than a generic page which we conclude is maintained by an ISP for parking Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or
iii. sending the complaint to any address provided to us by the Complainant under paragraph 3(b)(iii) so far as this is practicable.”

On the 23 December 2002 a copy of the Complaint was sent by Nominet to the Respondent’s address at 78-80 Cranbrook Road, Ilford, Essex, IG1 4NH and to the address c/o Domain Names Administrator, 35 Marsh Lane, London, NW7 4QJ. The Nominet register entry as at 23 December 2002 specified the Admin and Billing contacts to be Domain Names Administration. The Complaint was also sent by e-mail to postmaster@philip-sales.co.uk and to sales@prcdirects.co.uk.

The Expert is of the view that there are no exceptional circumstances and as the Respondent has failed to reply 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.

“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 security 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 "sales". This word is descriptive in nature and can be associated with the products sold by the sales 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 name, in the hands of the Respondent is an abusive registration for the following reasons, in accordance with section 3 of the DRS Policy:-

The Respondent has used the domain name in a manner, which takes unfair advantage of and is unfairly detrimental to the Complainant’s rights. The Respondent has registered the domain name as a convenient alias to its homepage, www.prcdirect.co.uk. The Policy contains a non-exhaustive list of factors that may be provided as evidence that the domain name is an abusive registration and the Complainant bears the burden proof on the balance of probabilities. In this regard, the Complainant here argues that the Respondent has registered the domain name 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 name is registered to, operated or authorized by, or otherwise connected with the Complainant. Internet users are mislead into believing that the web site corresponding to the domain name belongs to the Complainant. The Respondent’s intention is seemingly to increase traffic to its website by diverting users who hope to find “Philips” related products for sale through the proper Philips channel, but instead, find themselves at the homepage of the Respondent, who also happens to sell brands other than Philips. This is an obvious attempt to take unfair advantage of the Complainant’s rights and could be seen as detrimental to the Complainant’s business. 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. The web page corresponding to the domain name in dispute is attached herewith as [Annex 3]. 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 communication with a customer base. Thus, customers expect to find a “Philips” website (or a company affiliated/sponsored by Philips) at philips-sales.co.uk, instead, consumers who connect to philips-sales.co.uk will discover that there is no such connection. This creates confusion among the consumers and may result in an economic loss for Philips. 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 as well as other trademarks, in addition to the offering of these goods/services for sale.(See also Ifi Limited 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))

In accordance with Paragraph 3(a) (iii), the Respondent has registered a number of domain names containing other well-known trademarks such as such as “sony-sales.co.uk”, “jvc-sales.co.uk” as well as “panasonic-sales.co.uk, which incidentally, bears an identical set-up as the domain name in dispute. This clearly infers an abusive registration, as well and further displays a potential pattern of conduct as the Respondent could on the balance of probabilities, repeat this behaviour in the future or possibly sell the domain name to a competitor or a third party for purposes detrimental to the Complainant’s business. Furthermore, the Respondent has not responded to the Complainant’s two sets of cease/desist letters, both of which are attached herewith as [Annex 4]. In the case Pickford Limited v. Anglo Continental Limited (DRS 00187), it was stated that the Respondent’s failure to provide an answer will lead in the great majority of cases to a finding of abusive conduct.

The Complainant has not licensed or otherwise permitted the Respondent to register the domain name incorporating the word “Philips” within the domain name – (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)

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 [5]. 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.

(vi) 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 “PRC Direct” – (See also Uniroyal Engineered Products, Inc. v. Nauga Network Services – WIPO D2000-0503)

(vii) 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 name in dispute which leads to a non-fair use of the name (See also Vodafone Group PLC v. Knights Independent Traders – DRS 00445)

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 Name; and, secondly that the Domain Name, in the hands of the Respondent, is 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 under registration number 927851 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 the Domain Name are identical to the Complainant’s mark. The remaining portion of the Domain Name consists of a hyphen followed by the non distinctive suffix “sales”. The Expert finds that the Complainant has rights in a mark which is similar to the Domain Name.

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 Name incorporating as it does the extensively used trade mark Philips. The Complainant says that it has not licensed or otherwise permitted the Respondent to register a domain name incorporating the trade mark Philips. The Complainant also says that the Respondent operates a business in the same field as the Complainant.

The Domain Name directs to a website at www.prcdirect.co.uk which offers various electrical goods for sale which include Philips goods as well as a variety of other well-known brands.

The Complainant argues that the Respondent has registered the Domain Name 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 Name is 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 Name 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 for sale through the proper Philips channels, but instead, find themselves at the homepage of the Respondent who also happens to sell brands other than Philips. 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 Name will discover 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 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 Name makes, or is 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 an Abusive Registration.

The Respondent has not put forward an explanation for his choice of domain name. In the absence of such an explanation the Expert is of the view that the Domain Name philips-sales.co.uk does make or is 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 Name 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 points out that the Respondent has registered a number of other domain names containing other well-known trade marks such as “sony-sales.co.uk”, “jvc-sales.co.uk” as well as “panasonic-sales.co.uk”. It is suggested that this infers an abusive registration and displays a potential pattern of conduct. The Expert makes no finding that the Respondent is engaged in a pattern of making Abusive Registrations.

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 therefore no evidence on behalf of the Respondent to suggest any of the factors in paragraph 4 are made out.

The Expert finds that on the balance of probabilities the Complainant has rights in a name which is similar to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Koninklijke Philips Electronics NV -v- Punjab Record Centre Ltd [2003] DRS 778 (10 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/778.html Cite as: [2003] DRS 778

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