WIPO
Arbitration and Mediation Center
ADMINISTRATIVE
PANEL DECISION
Koninklijke
Philips Electronics N.V. v. SC Evergreen Consult & Aviation
SRL (Catalin Mogoseanu)
Case
No. DRO2001-0001
1.
The Parties
The
Complainant is Koninklijke Philips Electronics N.V., a public
company organized under the laws of The Netherlands, with
its principal place of business at Groenewoudseweg 1, 5621
BA Eindhoven, The Netherlands.
The
Respondent is SC Evergreen Consult & Aviation SRL. Catalin
Mogoseanu, an individual domiciled at Str. Dobotra 4, Bucharest,
Romania, shares the address, has written on behalf of SC Evergreen
Consult & Aviation SRL, and appears to be the contact
person for all official matters.
2.
The Domain Name and Registrar
The
domain name at issue is <philips.ro> (the "domain
name"). The Registrar is the Romanian National R&D
Computer Network (RNC.ro), Bd. Averescu 8-10, Sector 1, Bucharest
71316, Romania.
3.
Procedural History
The
Complaint was filed with the WIPO Arbitration and Mediation
Center (the "Center") by email on March 12,
2001 and by hardcopy on March 13, 2001. The Center acknowledged
receipt of the Complaint on March 27, 2001.
On
March 30, 2001, the Center sent to the Registrar a request
for verification of registration data. On March 30, 2001,
the Registrar confirmed: 1) that it had received a copy of
the Complaint; 2) that <philips.ro> was registered with
the Registrar; 3) that SC Evergreen Consult & Aviation
SRL, Str. Dobotra 4, Bucharest, Romania, is the current registrant
of the domain name; 4) that the Administrative, Technical
and Billing Contact are CM4929-ROTLD, person: Catalin Mogoseanu,
Str. Dobotra 4, Bucharest, Romania, email: ecgro@fx.ro, fax
number: +40 123 04 408, telephone number: +40 123 12 152;
; 5) that the Uniform Domain Name Dispute Resolution Policy
applies to the domain name; 6) that the domain name is currently
inactive and has no delegation to name servers; and 7) that
the specific language of the registration agreement as used
by the registrant for the domain name was English that disputes
arising from the use of the domain name should be settled
in accordance with the UDRP or with Romanian laws;, and 8)
that the courts of Bucharest have jurisdiction.
On
April 3, 2001, the Center requested the Registrar to lock
the domain name in order to avoid any transfer which may hinder
the prosecution of the current administrative proceeding.
The Registrar informed the Center by email of April 3, 2001
that the domain name was blocked.
On
April 23, 2001, the Center forwarded the Complaint to the
Respondent by post/courier, fax and email, with copies to
ICANN and to the Registrar. The Center formally notified the
Respondent that the Complaint satisfied the formal requirements
of the ICANN Uniform Domain Name Dispute Resolution Policy
(the "Policy"), the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") and the
Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (the "Supplemental Rules"); that payment
of the required sum had been made by the Complainant; and
that an administrative proceeding had been commenced against
the Respondent. A deadline of April 22, 2001 was fixed for
the Response.
No
Response was submitted. Accordingly, the Center issued a Notification
of Respondent Default to both parties on April 23, 2001.
On
April 23, 2001, the Respondent informed the Center by email
that it had started court proceedings against the Complainant
in Romania concerning the right of use of the domain name.
The Respondent requested the Center to suspend the arbitration
proceedings until a Romanian judge has issued a final verdict
in the case.
On
May 3, 2001, the Center notified the Parties that an Administrative
Panel composed of a single member, Dr. Kamen Troller, had
been appointed and that the Panelist had duly submitted a
Statement of Acceptance and Declaration of Impartiality and
Independence to the Center. Absent exceptional circumstances,
the Panelist was required to forward his decision to the Center
in accordance with paragraph 15 of the Rules by May 16, 2001.
The
Panelist examined all notifications of the Center, and finds
that they comply with the formal requirements of the Rules
and Supplemental Rules, and that the Administrative Panel
was properly constituted. The Panelist also examined the Complaint,
and finds that Complainant has erroneously indicated Mr. Catalin
Mogoseanu as the Respondent, instead of SC Evergreen Consult
& Aviation SRL. It appears, however, that Mr. Mogoseanu
is the Respondent’s contact person, located at the same address
as the Respondent, and that Mr. Mogoseanu personally answered
to the Complainant’s warning letter (Complainant’s Exhibits
7 and 8). For these reasons, the Panel agrees to consider
both SC Evergreen Consult & Aviation SRL and Mr. Catalin
Mogoseanu as the Respondent, and finds that the Complaint
complies with the formal requirements of the Rules and Supplemental
Rules.
4.
Factual Background
A.
The Complainant
The
Complainant is one of the world's largest electronics companies.
Complainant’s products include, amongst others, lighting,
medical systems, semiconductors, analytical instruments, broadband
networks, broadcast & communication tools, displays, monitors,
TV, video & audio products, security tools, PC peripherals
and internet devices.
The
Complainant asserts that the trademark "Philips"
has been registered by the predecessors of Complainant in
the Netherlands since 1891 and is registered in numerous jurisdictions
worldwide (the "Trademark"). It is, according to
Complainant, synonymous with a wide spectrum of products varying
from consumer electronics to domestic appliances and from
security systems to semiconductors. Complainant contends that
the "Philips" brand name is the company’s most important
asset as it has spent substantial sums on supporting its brand
worldwide.
The
Complainant owns the international "Philips" trademark
registration No. R 310459 in several countries, including
Romania (Complainant’s Exhibit 4) (the "Trademark").
The Complainant also submitted a list of the major countries
in which it alleges the Trademark to be registered (Complainant’s
Exhibit 3).
The
Complainant operates its principal website at www.philips.com.
The Panel searched on the Internet and found that the domain
name <philips.com.ro> has been registered by the Complainant’s
subsidiary, Philips Romania S.R.L., with the registrar RNC.ro.
B.
The Respondent
The
Respondent is a Romanian company. It appears from the evidence
submitted that the Respondent designs and hosts websites.
The
Respondent registered the domain name <philips.ro>.
The registration date of the domain name is not listed on
the Registrar’s Whois information. The domain name does not
resolve to any website.
The
Respondent also registered the domain name <toshiba.ro>.
C.
Facts Underlying the Dispute
On
February 12, 2001, the Complainant sent a warning letter to
the Respondent requesting that it voluntary stop using the
domain name <philips.ro> (Complainant’s Exhibit 7).
The
Complainant’s internal correspondence reflects that the Complainant’s
Romanian affiliate contacted the Respondent’s representative,
Mr. Mogoseanu, by phone for a preliminary discussion (Complainant’s
Exhibit 5). According to the Complainant,
Mr.
. Mogoseanu declared that he registered the domain name
for the purpose of obtaining a contract for designing Complainant’s
website in Romania. When asked what the Respondent wanted
for the transfer of the domain name, Mr. Mogoseanu replied
US$ 5,000 in money or products.
By
email of February 19, 2001, Mr. Mogoseanu informed the Complainant
that: "We do not want anything for the transfer of
the domain name. We just want to sign with Philips Ro[mania]
a contract for their web page design (English and Romanian
languages) and hosting" (Complainant’s Exhibit 8).
By
email of February 22, 2001, the Respondent also stated [sic]:
"1)
I have never used the domain name: www.philips.ro, not made
it public on the web, etc., therefore until today i have done
no harm towards the Philips brand name.
2)
Normally when somebody demands somenthing (in this case the
right to use this particular web address) it offers something
in exchange. Therefore i am waiting for an offer from you.
3)
If you will take action that will lead to restricting my right
to use this domain, at any further time, i will take you to
court in Romania. This can lead to a "loose/loose"
situation. It can take a long, long time, in which time Philips
Romania might loose more that it could gain by an amiable
solution that can be reached in a matter of days. I know the
laws in Romania much beeter than you and would like to inform
you that I have much higher chances to winn this case, should
we reach this stage.
4)
Hoping that you are still willing to reach a amiable solution,
i am waiting from you for a serious offer." (Complainant’s
Exhibit 7).
By
email of March 26, 2001 to the Complainant and the Registrar,
the Respondent further stated: "Philips International
BV has done no real steps to solve this dispute in an amiable
way; If Philips International BV will not come up with a solution
that will satisfy both parties involved, please note that
we intend to challenge Philips International BV’s action in
a Romanian court".
The
Complainant forwarded this email message to the Center and
informed the Center by email of March 26, 2001, that it "would
like the UDPR complaint to go on, as the Respondent’s version
of "amicable" is a transfer of the domain name for
a service performed by them [for] an amount of money exceeding
the out-of-pocket costs."
By
email of March 26, 2001, the Respondent wrote to the Complainant
[sic]:
"As
you know, WIPO will hold the domain name: wwww.philips.ro
blocked until they receive the final verdict from a Romanian
court of law.
(…)
when a Romanian company takes a foreign company to court,
the paperwork has to be processed through the Romanian Ministry
of Justince, etc., and it will take many months just for the
papers to reach you, and many more years for the court case
to end.
Why
wait until 2004-2005 when we can settle this before it starts,
as we feel that the Romanian law, is in our favor?"
5.
Parties’ Contentions
A.
The Complainant
The
Complainant contends that each of the three elements specified
in paragraph 4(a) of the Policy are applicable to the disputed
domain name. More precisely, the Complainant submits that:
(1)
the domain name <philips.ro> is identical to the Complainant’s
Trademark;
(2)
the Respondent has no rights or legitimate interests in the
domain name, because it has been registered for the following
purposes:
(i)
for the purpose of selling or otherwise transferring the domain
name to the Complainant for a valuable consideration in excess
of the Respondent’s out-of-pocket costs directly related to
the domain name;
(ii)
in order to prevent the Complainant from reflecting the Trademark
in a corresponding domain name in Romania. The Complainant
states that this intention is clearly derived from the Respondent’s
pattern of conduct, evidenced by the registration of a domain
name containing another well-known trademark, namely <toshiba.ro>;
and
(iii)
for the purpose of disrupting the business of the Complainant.
The Complainant alleges that there was no evidence of the
Respondent’s use of, or demonstrable preparations to use,
the domain names or a name corresponding to the domain names
in connection with a bona fide offering of goods or
services. The Complainant also submits that no attempt was
made after the Respondent received a letter from the Complainant
explaining its concern of the registration of the domain name;
and
(3)
the domain name was registered and is being used in bad faith,
because (i) the registration of the domain name causes unfairness
and is detrimental to the business of the Complainant, particularly
in Romania, as the mark is influential in the field of business
it was registered for; (ii) the registration was based on
a domain name speculation without real intent to use; and
(iii) the Respondent had clearly no demonstrable plan to use
the domain name for a bona fide purpose prior to the
registration of the domain name, which leads to the conclusion
that the registration was aimed at coaxing the Complainant
to buy the domain name or the Respondent’s services.
The
Complainant requests the Administrative Panel to issue a decision
that the domain name be transferred to the Complainant.
B.
The Respondent
No
formal Response was submitted.
After
having received the Notification of Respondent Default on
April 23, 2001, the Respondent informed the Center by email
that it had started court proceedings in Romania in respect
to the domain name, and that the Center will receive a legalized
translation of the court documents that prove this allegation.
The Respondent requested the Center to suspend the administrative
proceedings until the Romanian court issued a final verdict
in the case.
Until
today, the Respondent has not submitted to the Center any
official documentation that it has commenced a lawsuit against
the Complainant in Romania.
6.
Discussion and Findings
A.
Procedural Matters
Disputes
concerning second-level registrations under the .ro top-level
domain are governed by the Policy, the Rules and the Supplemental
Rules, approved by ICANN. This Policy and these Rules were
adopted on a voluntary basis by the registration authority
of .ro, RNC.ro (see the Domain Name Dispute Resolution Policy
of RNC.ro at www.rnc.ro/new/dispute-resolution-policy.html).
Paragraph
4(k) of the Policy states as follows:
"Availability
of Court Proceedings. [1]The mandatory administrative
proceeding requirements set forth in Paragraph 4 shall not
prevent either you [the domain name holder] or the complainant
from submitting the dispute to a court of competent jurisdiction
for independent resolution before such mandatory administrative
proceeding is commenced or after such proceeding is concluded.
[2]If an Administrative Panel decides that your domain name
registration should be canceled or transferred, we [the Registrar]
will wait ten (10) business days (as observed in the location
of our principal office) after we are informed by the applicable
Provider of the Administrative Panel's decision before implementing
that decision. [3]We will then implement the decision unless
we have received from you during that ten (10) business day
period official documentation (such as a copy of a complaint,
file-stamped by the clerk of the court) that you have commenced
a lawsuit against the complainant in a jurisdiction to which
the complainant has submitted under Paragraph 3(b)(xiii) of
the Rules of Procedure. [4](In general, that jurisdiction
is either the location of our principal office or of your
address as shown in our Whois database. See Paragraphs 1 and
3(b)(xiii) of the Rules of Procedure for details.) [5]If we
receive such documentation within the ten (10) business day
period, we will not implement the Administrative Panel's decision,
and we will take no further action, until we receive (i) evidence
satisfactory to us of a resolution between the parties; (ii)
evidence satisfactory to us that your lawsuit has been dismissed
or withdrawn; or (iii) a copy of an order from such court
dismissing your lawsuit or ordering that you do not have the
right to continue to use your domain name."[Numbers added
by the Panel]
It
results from the above that the mandatory administrative proceeding
requirements shall not prevent either the Respondent or the
Complainant from submitting the dispute to a court of competent
jurisdiction for independent resolution before such mandatory
administrative proceeding is commenced or after such proceeding
is concluded.
Paragraph
18 of the Rules provides that in the event of legal proceedings
initiated prior to or during an administrative proceeding
in respect of a domain name dispute that is the subject of
the complaint, the Panel shall have the discretion to decide
whether to suspend or terminate the administrative proceeding,
or to proceed to a decision.
In
the present case, the Respondent notified the Center that
it has filed a claim against the Complainant in Romania, but
did not submit any official documentation (such as a copy
of a Complaint or a file stamped by the Clerk of the Court)
demonstrating the existence of a lawsuit in Romania. Therefore,
the Panel is not in the position to verify whether a dispute
concerning the domain name is pending before a Romanian court,
or, if so, when it was filed.
Whereas
the first sentence of paragraph 4(k) of the Policy only mentions
lawsuits filed with a court before an administrative proceeding
is commenced or after such proceeding is concluded, the third
and the fifth sentence mention lawsuits in general, without
specifying when they have been commenced. The fact that the
first sentence of paragraph 4(k) does not refer to lawsuits
commenced during an administrative proceeding is logical,
because bona fide parties are likely to choose the
inexpensive and fast administrative proceeding in order to
avoid lengthy court proceedings, reserving themselves the
right to submit the dispute to a court after the Administrative
Panel has rendered a decision. , and, nNormally, it can be
expected that each bona fide party wouldill wait until
the panel has rendered its decision before deciding whether
it wishes to obtain a further decision by a court..
In
the present case, the Panel is of the opinion that,
if the Respondent has actually commenced legal proceedings
in Romania, it has done so as a delaying tactic. This is demonstrated
by the Respondent’s email to Complainant of March 26, 2001:
"WIPO
will hold the domain name: www.philips.ro blocked until they
receive the final verdict from a Romanian court of law. (…)
when a Romanian company takes a foreign company to court,
the paperwork has to be processed through the Romanian Ministry
of Justice, etc. and it will take months just for the papers
to reach you, and many more years for the court case to end.
Why wait until 2004-2005 when we can settle this before it
starts, as we feel that the Romanian law is in our favor?"
In
light of these circumstances, the Panel has decided to proceed
to a decision.
By
doing so, the Panel does not jeopardize endanger the Respondent’s
legal situation of Respondent; pursuant to paragraph 4(k)
of the Policy, if the Respondent iIn case the Respondent latter
submits to the Registrar within the ten (10) days period official
documentation that it has commenced a lawsuit in Romania within
the ten (10) days period, within the ten (10) days period,
the Registrar will not implement the Panel’s decision., in
accordance with paragraph 4(k) of the Policy.
B.
Substantive Matters
Referring
to paragraph 14 of the Rules, in the absence of a response
to the Complainant’s allegations by the Respondent, the Panel
may consider those claims in light of the unchallenged evidence
submitted by the Complainant. The Panel cannot decide in the
Complainant’s favor solely based upon the Respondent’s default,
but is entitled to draw, and in this case does draw, such
inferences as it deems appropriate and just under the circumstances
from the Respondent’s failure to respond.
Pursuant
to paragraph 4(a) of the Policy, the Complainant must prove
that each of the following three elements are present:
(i)
the Respondent’s domain name is identical or confusingly similar
to a trademark or service mark in which the Complainant has
rights; and
(ii)
the Respondent has no rights or legitimate interests in respect
of the domain name; and
(iii)
the domain name has been registered and is being used in bad
faith.
(a)
Identical or confusingly similar
The
only difference between the domain name and the Trademark
is that the domain name has ".ro" at the end. The
addition of the designation ".ro" does nothing to
distinguish the mark from the domain name.(Footnote
1)
The
Panel concludes that the domain name <philips.ro> is
identical to the trademark "Philips" in which the
Complainant has rights.
(b)
Rights or legitimate interests
Paragraph
4(c) of the Policy defines the circumstances required for
the Respondent to demonstrate "rights to and a legitimate
interest in the domain name". The Respondent is only
required to demonstrate any one of the following circumstances
(in particular and without limitation) to prove its rights
to or legitimate interest in the domain name:
(i)
before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii)
you (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired
no trademark or service mark rights; or
(iii)
you are making a legitimate non-commercial or fair use of
the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark
at issue.
The
Complainant alleges that the Respondent has no rights in the
domain name because the domain name was registered for the
purposes of (i) selling it for a valuable consideration in
excess of the out-of-pocket costs; (ii) preventing the Complainant
from reflecting the Trademark in a corresponding domain name
in Romania and (iii) disrupting the business of the Complainant.
These
circumstances may evidence bad faith use (if the requirements
of paragraph 4(b) of the Policy are fulfilled – see under
Section 6.B(c) of this decision). They do not, however, inevitably
lead to the conclusion that a Respondent has no legitimate
interest in the domain name, although some the same factors
can be common to both analysies.
The
Panel notes that the domain name does not resolve to a website,
the Respondent has not shown any other use of, or preparations
to use, the domain name in connection with a bona fide
offering of goods or services, nor has it demonstrated that
it is commonly known by the domain name or that it is making
a legitimate non-commercial or fair use of the domain name.
Respondent’s
only alleged interest in the domain name is to "sign
with Philips Ro a contract for their web page design (English
and Romanian languages) and hosting" (Complainant’s
Exhibit 8). Such use does not establish rights to or a legitimate
interest in the domain name in the sense of paragraph 4(c)
of the Policy. The Panel is of the opinion that holding the
domain name hostage unless a contract for web page design
services is negotiated, is, on the contrary, far from a legitimate
use and is, furthermore, evidence of the Respondent’s bad
faith.
The
Panel concludes that the absence of any legitimate use, the
fact that the domain name is being offered for sale, and the
Respondent’s failure to justify the use of "Philips"
in its domain name, constitute a prima facie
evidence of a lack of rights to or legitimate interest in
the domain name. (Footnote
2)
Accordingly,
the Panel finds that the Complainant has satisfied the burden
of proof with respect to paragraph 4(a)(ii) of the Policy.
(c)
Bad faith
Paragraph
4(a)(iii) of the Policy requires the Complainant to prove
use in bad faith as well as registration in bad faith.
Paragraph
4(b) of the Policy sets forth a non-exclusive list of circumstances
which shall be evidence that the registration and use of a
domain name is in bad faith:
(i)
circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration
to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
(ii)
you have registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted
to attract, for commercial gain, Internet users to your website
or other on-line location, by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of your website or location or
of a product or service on your website or location.
The
Complainant apparently relies on the first and the third element,
alleging that the domain name was registered and used in bad
faith, because "the registration was aimed at coaxing
the Complainant to buy the domain name or to have its services
engaged upon" and "the registration of the domain
name causes unfairness and is certainly detrimental to the
business of the Complainant as the mark is influential in
the field of the business it was registered for". The
Complainant also contends that "the registration was
based on a domain name speculation without real intent to
use". The Panel views this as an allegation of cybersquatting.
By
not submitting a response, the Respondent has failed to address
these allegations.
The
Panel considers that the Respondent has registered the domain
name for the purpose of selling, renting or otherwise transferring
the registration to the Complainant, for valuable consideration
in excess of its out-of-pocket costs directly related to the
domain name. This is demonstrated by the evidence submitted
(internal email of Philips Romania of February 19, 2001 (Complainant’s
Exhibit 5) and Respondent’s email to the Complainant of February
22, 2001 (Complainant’s Exhibit 7)).
Furthermore,
the Panel views the Respondent’s email seeking a contract
for web page design services in exchange for transfer of the
domain name (Complainant’s Exhibit 8) as a common play used
by cybersquatters to who do not want to make an overt demand
to sell a domain name for more than documented out-of-pocket
expenses. In light of the facts of this case, the Panel finds
based on this email that the Respondent is seeking to sell
the domain name to the Complainant for more than out-of-pocket
expenses.
The
fact that Respondent has also registered the domain name <toshiba.ro>
demonstrates a pattern of conduct whereby well-known domain
names are registered by it in Romania. This reinforces the
Panel’s conclusion that the Respondent has acted in bad faith.
Accordingly,
the Panel finds that the domain name has been registered and
is being used in bad faith.
7.
Decision
The
Panel decides that:
1)
the domain name <philips.ro> is identical with the trademark
"Philips";
2)
the Respondent has no rights or legitimate interest in respect
of the domain name; and
3)
the domain name has been registered and is being used in bad
faith by the Respondent.
Pursuant
to paragraphs 4(i) of the Policy and 15 of the Rules, the
Panel requests that the Registrar, RNC.ro, transfer the name
<philips.ro> to the Complainant.
Dr.
Kamen Troller
Sole Panelist
Dated:
May 16, 2001
Footnotes:
1. See:
Gateway, Inc. v. James Cadieux (D2000-0198);
The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395)
and Koninklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638).
2. See:
Digital City, Inc. v. Smalldomain (D2000-1283),
at p.6 and Koninklijke Philips Electronics N.V. v. Duplica
(D2001-0312).
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