Decision for dispute CAC-UDRP-107793

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns the following trademark registrations:

• International word trademark registration No. 310459 for PHILIPS, registered on 16 March 1966 for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 19, 20, 21, 28, 31 and 34;
• International trademark registration No. 991346 for PHILIPS (figurative mark), registered on 13 June 2008 for goods and services in classes 3, 5, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 36, 37, 38, 41, 42, 44, and 45;
• Turkish word trademark registration No. 113073 for PHILIPS, registered on 23 October 1989 for goods in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 14, 15, 16, 17, 18 and 19; and
• The European Union trademark No. 000205971 for PHILIPS (word mark), registered on 22 October 1999 for goods and services in classes 3, 6, 7, 8, 9,10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 37, 40, 41 and 42.

The Complainant owns the well-known trademark PHILIPS and has extensive trademark registrations around the world including Turkey, which predate the registration of the disputed domain names.

The Respondents registered the four disputed domain names on 26 November 2017 using a privacy service.

The Complainant asserts that the disputed domain names are confusingly similar to its well-known PHILIPS trademark and cites passages from the following cases:

• CAC Case No. 103077 <philipspulseoximeters.com>: “There are no doubts that the Complainant’s trademarks “PHILIPS” are well-known worldwide as confirmed by the previous panel (e.g. WIPO Case No. D2010-1494)”;
• CAC Case No. 104326 <philips-orginal.com>, referencing CAC Case No. 103077 <PHILIPSPULSEOXIMETERS.COM>: “There are no doubts that the Complainant’s trademarks “PHILIPS” are well-known worldwide as confirmed by the previous panels (e.g. WIPO Case No. D2010-1494)”;
• CAC Case No. 105670 <PhilipsLumea.com>: “Due to the long existence of Complainant’s marks being well-known (see as an example CAC-UDRP-104326 <philips-orginal.com> for many others), the Respondent must have been well aware of the Complainant and its trademarks when registering the domain name”
• CAC-UDRP-104321 <msk-remont-philips.com etc.> referencing the “goodwill flowing from its widely known or famous brands”;
• CAC Case No.103871 <Philips-helper.com etc.>referencing “the Complainant’s well-known PHILIPS trademark”.

The Complainant also cites from CAC Case No. 104321 <philips-center.com> and <philips-coffee-service.com etc.>: ‘’A side-by-side comparison of the domain names and the PHILLIPS [...] trademarks demonstrates that [...] <philips-center.com> [and] <philips-coffee-service.com> [...] are confusingly similar to the marks in that they incorporate entirely Complainant's trademarks. The additions of dashes plus words do not create distinct names but suggest a relationship with Complainant which Complainant denies and does not exist.’’

The Complainant then asserts that the Respondent has no rights or legitimate interest in the disputed domain names and states:

1. the Respondent is not making use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
2. the disputed domain names were registered long after the Complainant commenced its use of the PHILIPS trademarks;
3. the Complainant has no relationship whatsoever with Respondent and has never licensed or otherwise authorised the Respondent to use the PHILIPS trademark on the websites or in the disputed domain names;
4. the Respondent is not commonly known by the disputed domain names;
5. the Respondent is not an authorised service provider but is using the disputed domain names to attract internet users to its websites to offer repair services of Philips products; and
6. the use of the trademark PHILIPS throughout the Respondent’s websites, strongly and falsely suggests that there is a connection with Complainant.

Next the Complainant asserts that the disputed domain names have been registered and are being used in bad faith.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Complainant requests consolidation of the dispute regarding all four disputed domain names, and asserts they are all owned or under the effective control of a single person or entity, or a group of individuals acting in concert.

A Complaint may deal with multiple domain names if they are registered by the same person (paragraph 3(c) of the UDRP Rules). The preliminary gatekeeper for admitting the Complaint is the administrative provider (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIP Case No. D2010-0281). The Panel then makes the final decision to allow consolidate multiple domain name disputes (paragraph10(e) of the UDRP Rules).

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at paragraph 4.11 deals with how panels address consolidation scenarios. Where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, whether the consolidation would be fair and equitable to all parties, and would be procedurally efficient. The party seeking consolidation has the burden of providing evidence in support of its request.

All the registrants of the disputed domain names have the same address in Turkey, the same phone number and use <.gmail> for their email address. It is improbable that four supposedly different registrants would share so many common characteristics unless they were the same person.

Each of the four disputed domain names use the same naming pattern consisting of the Complainant’s trademark and two words in Turkish meaning “projector”, “service” or “repair”. Evidence submitted with the Complaint shows that the disputed domain names have the same registrar, the same web host, similar website content and were registered on the same day. They bear all the hallmarks of being under common control.

The Panel finds that the registrants of the disputed domain names are the same person, and is persuaded that it is fair and equitable to all parties, and procedurally efficient to consolidate the disputes in one Complaint.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in the disputed domain name; and

the disputed domain name has been registered and used in bad faith.

IDENTICAL OR CONFUSINGLY SIMILAR

The Complainant owns trademark registrations for PHILIPS that predate the registration of the disputed domain names by over fifty years.

The disputed domain names combine the Complainant’s well-known PHILIPS mark with two descriptive terms as follows:

• <philipsprojeksiyonlambasi.com> combines the mark PHILIPS with the words “projeksiyon lambasi”, which means “projection lamp” in Turkish;
• <philipsprojeksiyonservis.com> combines the mark PHILIPS with the words “projeksiyon servis”, which means “projector service” in Turkish;
• <philipsprojeksiyonservisi.com> combines the mark PHILIPS with the words “projeksiyon servisi”, which means “projector service” in Turkish; and
• <philipsprojeksiyontamiri.com> combines the mark PHILIPS with the words “projeksiyon tamiri”, which mean “projector repair” in Turkish.

The Complainant’s PHILIPS mark is clearly identifiable in the first part of each of the disputed domain names. Where the Complainant’s trademark is recognisable in the disputed domain name, the addition of other descriptive words do not prevent a finding of confusing similarity (see WIPO Jurisprudential Overview 3.0 at paragraph 2.3). Adding to the Complainant’s well-known trademark words that mean “projector”, “service” or “repair” in Turkish do not prevent a finding of confusing similarity. This is particularly so where the words used are closely associated with the Complainant’s business.

The Panel finds that the four disputed domain names are confusingly similar to the Complainant’s trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been met.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant has provided evidence to show its longstanding rights in the PHILIPS trademark and has made out a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain names. The burden of proof now shifts now shifts to the Respondent to show that he has relevant rights.

The Respondent has not filed a Response, nor challenged any of the Complainant’s assertions. The Respondent is not commonly known by any of the disputed domain names, nor authorised to use the Complainant’s trademark or carry out any business for the Complainant nor authorise to service of repair PHILIPS products. The Respondent is not an authorised service provider. Using the Complainant’s trademark in the disputed domain names to attract internet users to its websites and offering repair services for PHILIPS products is not a bona fide offering of goods and services.

Considering these factors, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been met.

REGISTERED AND BEING USED IN BAD FAITH

It is widely accepted that the PHILIPS trademark is well-known. The mark predates the registration of the disputed domain name by over fifty years. It is also registered in Turkey where the Respondent is based. The Respondent has registered domain names that are confusingly similar to the PHILIPS mark. It is inconceivable that the Respondent did not know of the Complainant and its rights when registering the disputed domain names.

The Respondent is using the Complainant’s PHILIPS mark in the disputed domain names without permission and has combined that mark with descriptive words linked to the Complainant’s business of the servicing and repairing projectors. The most obvious reason for doing so is that the Respondent intended to drive traffic to its websites to obtain commercial gain by creating a false impression of a potential affiliation or connection with the Complainant.

Taking these factors into account, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.