WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Philips Electronics N.V. v. Cun Siang Wang
Case No. D2000-1778
1.
The Parties
The parties are Koninklijke Philips Electronics N.V. of Groenenwoudseweg 1, 5621 BA
Eindhoven, The Netherlands (Complainant) and Cun Siang Wang, PTGudang
Elektronik of Jl Puri Kembangan Raya No. 13, Jakarta Barat, WJ 11610 Indonesia
(Respondent).
2.
The Domain Name and Registrar
The domain name in dispute is “philips-indonesia.com” (“the Domain Name”). The
Registrar is eNom Inc. of Redmond, Washington, USA (“eNom”).
3.
Procedural History
The Complaint was originally filed by the Complainant with the WIPO Arbitration and
Mediation Center (“the Center”) on December 21, 2000. The Center advised the
Complainant of deficiencies in the identification of the Respondent and Registrar by
notices of January 4 and January 8, 2001. A revised Complaint was filed on
January 9, 2001.
The revised Complaint was sent to the Respondent on January 11, 2001, without
attachments by email to “philips_id@bolehmail.com”, “webmaster@domainzero.com”
and “postmaster@philips-indonesia.com” (the first being the email address of the
Respondent and the second being the email address of the Billing Technical and
Administrative Contacts for the Respondent as recorded on the Registrar’s whois
database). No return notifications were received. The revised Complaint was also sent
without attachments on the same date by fax to 912.527.4596 (being the fax number of
the Billing Technical and Administrative Contacts for the Respondent as recorded on
the Registrar’s whois database). The revised Complaint was also sent with attachments
by Federal Express to Cun Siang Wang, PTGudang Elektronik of Jl Puri Kembangan
Raya No. 13, Jakarta Barat, WJ 11610 Indonesia and to Network Commerce Inc,
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DomainZero.com, 500 Business Center Drive Suite 1000, Savannah, Georgia
31405 USA (the first being the postal address of the Respondent and the second being
the postal address of the Billing Technical and Administrative Contacts for the
Respondent as recorded on the Registrar’s whois database).
By email of January 15, 2001, eNom verified that it is the Registrar of the disputed
Domain Name, that the Uniform Domain Name Dispute Resolution Policy (“the
Policy”) applies to the Domain Name and that it had received a copy of the Complaint.
The Center’s Notification of Complaint and Commencement of Administrative
Proceeding (“the Notification”) records that the fee in the required amount had been
duly paid.
Having reviewed the file, the Panel considers that the revised Complaint complied with
the applicable formal requirements and was properly notified to the Respondent in
accordance with paragraph 2(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (“the Rules”).
On February 6, 2001, the Center sent Notification of Respondent Default by email to
“philips_id@bolehmail.com”, “webmaster@domainzero.com” and
postmaster@philips-indonesia.com”. No return notification was received. No response
to the Complaint has been received at any stage from the Respondent.
The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and
Declaration of Impartiality and Independence and was duly appointed on
February 19, 2001. In accordance with paragraph 15 of the Rules, the Panel was
required to forward its decision to the Center by March 6, 2001, in the absence of
exceptional circumstances. This case raised an important issue as to whether and in
what circumstances an unauthorized distributor of branded goods may register and use
a domain name incorporating the brand name. The Panel gave careful consideration to
its decision and in consequence exceeded this time limit by several days.
4.
Factual Background
The Complainant is a very well-known manufacturer and supplier of electrical and
electronic goods. Its primary branding is its name “Philips” and a logo incorporating
this name. It has registered “Philips” as a trademark in numerous countries, including
Indonesia.
The Respondent has registered the Domain Name and has established a website at this
address with a first page headed “Un-Official Indonesia Philips Electronics Store
Online”. The page goes on to say “Welcome To Un-Official Indonesia Philips
Electronics Store Online / Enter Store”. The last phrase links to further pages also at the
domain “Philips-Indonesia.com” which advertise and offer for sale electrical and
electronic goods apparently manufactured and placed on the market by the
Complainant’s group.
The Complainant sent the Respondent a cease and desist letter on November 20, 2000.
The evidence does not refer to any reply to this letter.
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5.
Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its
registered trademark “Philips” and that the Respondent has no rights or legitimate
interest in using it, in that it is showing a web page which is identical to a web page
from the Complainant’s own website and continues to do so after receipt of a cease and
desist letter. The Complainant further alleges that the Respondent registered and is
using the Domain Name in bad faith in order to deceive customers and with the
intention of selling it to the Complainant at a profit. The Complainant refers also to the
fact that the address in the registration of the domain name incorrectly gives the country
as the US. The Complainant submits that this is an indication of concealment and hence
bad faith.
The Respondent has not submitted a response to these contentions.
6.
Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (i) that the
Domain Name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; (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.
As to the first requirement, the Panel considers that the Domain Name is confusingly
similar to the “Philips” mark in which the Complainant has rights in Indonesia and
other countries. The Panel reaches this conclusion on the basis that the first requirement
of the Policy merely involves a mark for name comparison, and not a consideration of
whether the Respondent’s actual use is likely to deceive. The former approach accords
with the language and structure of the Policy. Whether the actual use is deceptive is a
matter to be considered under the second and third requirements, not the first.
As to the second requirement, it appears that the Respondent had already established a
website at the address with a first page headed “Un-Official Indonesia Philips
Electronics Store Online” when the Complainant wrote its letter of Complaint. The
Panel infers this from the fact that the Complaint refers to the Respondent “continuing
with the display of the existing web page even after [being] in receipt of the
Complainant’s cease and desist letter” [emphasis added]. Thus if the Respondent’s
website is a bona fide offering of goods or services, it would have an existing legitimate
interest of the kind referred to in paragraph 4(c)(i) of the Policy.
(Although paragraph 4(c)(i) refers to matters which a Respondent is expected to show
to demonstrate a legitimate interest, the Panel considers that the corresponding
requirement which the Complainant is required to prove under paragraph 4(a) must be
interpreted in the same way. Thus if the evidence submitted by the Complainant itself
indicates that the Respondent has or is likely to have a legitimate interest of the kind
recognized in paragraph 4(c), the Complaint should fail under paragraph 4(a) even if the
Respondent has not availed itself of its entitlement to respond under paragraph 4(c).)
The Respondent’s website appears to be advertising products made and placed on the
market by the Complainant’s group. There is no evidence that it is bogus in the sense
that the Respondent is not selling products at all, or that the Respondent is using it to
sell products other than those placed on the market by the Claimant’s group.
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It appears that graphics and text have been copied by the Respondent from the
Complainant’s website and/or its other marketing material. However, it is not correct to
say that the first page of the Respondent’s website is identical to a page of the
Complainant’s website. Nor does the Panel accept the Complainant’s assertion that this
page is liable to mislead consumers into believing that the Respondent’s operation is
sponsored or endorsed by the Complainant. On the contrary, the page makes it clear that
it is an unofficial site. The Panel considers that consumers would take it to be a site
selling genuine Philips goods but operated without Philips’ agreement.
The Panel notes that there have been differing decisions under the Policy on whether a
complainant can object to the use of a domain name corresponding to its mark for a
website selling the complainant’s own products. Complaints succeeded in
“heelquick.com”, “fanuc.com” and “cunardcruise.com”, but failed in “militec.com”,
“drawtite.com” and “kittinger.com”.
Under paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (“the Rules”) the Panel should decide the Complaint on the basis of any rules
and principles of law that it deems applicable. It is a widely recognized principle of
trademark law, sometimes referred to as “exhaustion of rights”, that the owner of a
trademark cannot object to the resale of goods which it has placed on the market
bearing the mark unless there is some good reason, such as interference which might
affect the quality of the goods: see for example the decisions of the US Supreme Court
in Prestonettes v Coty (1924) 264 US 359, the German Federal Supreme Court in Case I
ZR 85/71 Cinzano v Java [1974] 2 CMLR 21 and the European Court of Justice in Case
16/74 Centrafarm v Winthrop [1974] ECR 1183. This principle reflects the fact that the
primary function of a trademark is to identify the trade origin or at any rate the person
responsible for the quality of the product.
It is a controversial question as to whether this principle should apply where the resale
is in a different country or economic area to the original sale (“international
exhaustion”). However, there is no need to answer this question here, since there is no
evidence as to where the goods advertised by the Respondent were first placed on the
market or as to whether the Respondent is supplying them to customers outside
Indonesia.
Where the principle of exhaustion applies, it has also been recognized that a trader is
permitted to advertise goods using the mark under which they were placed on the
market, provided that it does not do so in a way which causes confusion or damage to
the reputation of the mark: see, for example, Volkswagenwerk v Church (CA9, 1969)
411 F2d 350, 161 USPQ 769, Case C-337/95 Parfums Christian Dior v Evora (ECJ,
1997) [1997] EC I-6013 and Case C-63/97 BMW v Deenik (ECJ, 1999) [1999] ECR I905. If this is the position under the applicable trademark law or laws, the Panel
considers that a trader in genuine branded goods can have a legitimate interest in using
a domain name incorporating the brand name for a website promoting and selling the
branded goods, provided that the trader does not use the domain name so as to cause
confusion, for example by indicating that the website is approved by the brand owner.
The Panel accepts that it is possible for a trader in branded goods to advertise and sell
goods under the brand without using a domain name incorporating the brand name.
Nevertheless such a domain name is of considerable assistance to a business selling the
branded goods. The Panel considers that a person can have a legitimate interest in using
a particular domain name even if it is not an essential requirement for him to do so.
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In this case there is no evidence that the Respondent is trading in any country other than
Indonesia and it would appear that the only applicable law is that of Indonesia. The
Complainant has not shown that the use apparently being made by the Respondent of
the Domain Name infringes the Complainant’s trademark rights under Indonesian law.
The Panel concludes that on the available evidence the Complainant has not shown that
the Respondent does not have a legitimate interest in using the Domain Name to market
and sell genuine Philips goods in Indonesia.
As to the third requirement, the Panel is not satisfied that registration or use in bad faith
has been established. None of the examples of evidence of bad faith set out in paragraph
4(b) of the Policy has been demonstrated.
There is no evidence of any attempt to sell the domain name to the Complainant or a
competitor of the Complainant. While the Respondent’s registration may block the
Complainant from using a domain name, which would be suitable for its Indonesian
subsidiary, branch or distributor, there is no evidence of such an intention on the part of
the Respondent and certainly no evidence of a pattern of such conduct. The Panel also
notes that, despite being a major international consumer products company, the
Complainant has not previously felt the need to have this particular domain name, but
has found it sufficient to have pages for Indonesia on its website at “www.philips.com”.
The Panel is not satisfied that the domain name was registered primarily for the purpose
of disrupting a competitor. Although from one point of view an unauthorized distributor
may be regarded as disrupting a distribution network, the Panel considers that this
provision of the Policy should be interpreted taking into account the principle of
exhaustion discussed above. The Panel considers that the resale of genuine products
placed on the market by the owner of the mark or with its consent in their original
condition does not constitute “bad faith” within the meaning of the Policy where it is
permitted by the applicable law, even if the distributor is not authorized by the owner of
the mark.
While the Respondent is no doubt using the Domain Name intentionally to attract
Internet users to its website for commercial gain, the Panel is not satisfied that it is
doing so by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of the website or of a product or service
on it. The first page of the Respondent’s website makes it clear that it is not affiliated to
or sponsored or endorsed by Philips. While the website indicates that the products
offered for sale are products manufactured and placed on the market by the
Complainant’s group, if in fact this is true, it is not causing confusion. In the absence of
any evidence that the Respondent is not selling genuine Philips products, the Panel is
unable to conclude that the Respondent is using the Domain Name in bad faith on this
basis.
Although the Respondent may have infringed the Complainant’s copyright in part of the
content of its website, this is something which is outside the scope of the present Policy
(see paragraph 168 of the Final Report of the WIPO Internet Domain Name Process)
and the Panel does not consider that it is sufficient to establish bad faith within the
meaning of the Policy.
The incorrect inclusion of the US as the country in the Respondent’s address in the
Registrar’s whois database is not evidence of bad faith. The address gives the city as
“Jakarta Barat” and the state as “WJ”, which are presumably correct. The reference to
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the US is probably due to a failure to amend a default in the Registrar’s registration
form.
The Panel concludes that the Complainant has not shown that the Domain Name was
registered and is being used in bad faith.
7.
Decision
The Panel decides that the Complaint should be rejected.
Jonathan Turner
Sole Panelist
Dated: March 15, 2001
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