Koninklijke Philips Electronics N.V. v. CredoNIC.com / Domain For Sale, Domain Administrator Case No. D2005-0763
1. The Parties
The Complainant is Koninklijke Philips Electronics N.V., Eindhoven, Netherlands, represented by Mr. J.J.E.C.G. Vandekerckhove, Eindhoven, Netherlands.
The Respondent is CredoNIC.com / Domain For Sale, Domain Administrator, Hallandale, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2005. On July 19, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 19, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2005.
The Center appointed Adam Taylor as the sole panelist in this matter on August 22, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, based in the Netherlands, is Europe’s largest electronics company - and indeed one of the biggest in the world - with sales of EUR 30.3 billion in 2004. It has some 160,000 employees in more than 60 countries.
One of the Complainant’s products is a power toothbrush known as SONICARE. This was introduced to dental professionals in the United States in 1992 by Optiva Corporation, which was acquired by the Complainant in 2000. The Complainant continues to market its SONICARE range of power toothbrushes widely in Europe, North America and various other countries worldwide, with more than 10 million toothbrushes being sold in the year 2001 alone.
The Complainant has trademark registrations for the word SONICARE in class 21 in a range of countries, including US trademark 1848213 filed August 31, 1992, and Benelux trademark 530306 filed January 15, 1993.
Since 2002, the Complainant has operated a website at “www.sonicare.com.” It also owns a range of country code top level Internet domain names consisting of the word SONICARE plus various domain suffixes.
The Respondent registered the disputed domain name on August 14, 2004.
The Respondent did not reply to the Complainant’s two cease and desist letters dated May 5, 2005 and June 16, 2005.
As of July 12, 2005, the domain name resolved to a webpage headed “WARNING – ADULTS ONLY,” inviting users to enter a pornographic site. At the top of this page was the statement “This Domain Is For Sale,” linking to another website of the Respondent (“www.credoinc.com”) in which various domain names were offered for sale including the disputed domain name at a price of $500.
5. Parties’ Contentions
Identical or Confusingly Similar The Complainant has established trademark rights in the term SONICARE through its trademark registrations. The disputed domain name incorporates the Complainant’s trademark in its entirety, simply adding the generic term “toothbrush” which describes the products sold by the Complainant under that trademark. It is therefore confusingly similar to the Complainant’s trademark.
Rights or Legitimate Interests The Respondent is not affiliated to the Complainant, is not a licensee of the Complainant and is not authorised to use its trademark.
Use of a domain name containing a registered trademark to redirect unsuspecting internet traffic to an adult website is not a bona fide offering of goods or services, nor can it be considered a legitimate noncommercial or fair use pursuant to the Policy.
The Respondent has not been commonly known by the domain name.
The Respondent lacks rights and legitimate interests due to its willingness to sell the disputed domain name. The fact that the offer to sell is part of the Respondent’s name strongly suggests acquisition with intent to sell.
Registered and Used in Bad Faith The SONICARE trademark is well known and the Respondent must have been aware of it when registering the disputed domain name.
The offer to sell the disputed domain name through the linked website is evidence of bad faith. $500 is well in excess of the out of pocket costs directly related to registering the disputed domain name.
The Respondent is disrupting the Complainant’s activities by using the confusingly similar domain name in connection with a pornographic site.
Redirection to such a website of itself is bad faith in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship and endorsement of the website. The commercial gain is derived from subscriptions. While users would know that the Complainant and its trademark are not connected with pornography, the Respondent has used the well known SONICARE trademark as the hook to reel in unwitting visitors in the first place.
The Respondent has engaged in a pattern of conduct in registering domain names containing trademarks of others, using them for sale and linking them to adult sites. See, e.g., The Prudential Insurance Company of America v. credoNIC.com and DOMAIN FOR SALE, National Arbitration Forum Case No. FA234367 (March 23, 2004) and Six Continents Hotels, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2004 0987 (February 4, 2005).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established extensive rights in the trademark SONICARE.
The disputed domain name includes the Complainant’s trademark in its entirety together with the generic word “toothbrush.” This additional generic term fails to dispel the connection between the domain name and the trademark; indeed, it reinforces the link. See, e.g., Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (February 13, 2003) ().
It is well established that domain name suffixes are disregarded for the purpose of this comparison.
The disputed domain name is therefore confusingly similar to the Complainant’s SONICARE trademark.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides the following examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of the absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070 (March 24, 2003).
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraphs 4(c)(i) and (iii) of the Policy, the Respondent has used the disputed domain name in connection with an offering of services, namely a pornographic website. Such use has no connection whatsoever with the disputed domain name and has in these circumstances been consistently held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, e.g., Prudential Insurance Company of America v. credoNIC.com and DOMAIN FOR SALE, National Arbitration Forum Case No. FA234367 (March 23, 2004); McClatchy Management Services, Inc. v. Peter Carrington a/k/a Party Night Inc., National Arbitration Forum Case No. FA155902 (June 2, 2003).
Furthermore, the Panel has concluded below that the Complainant used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has ever been commonly known by the disputed domain name.
The Respondent’s offer to sell the disputed domain name – underlined by the inclusion of the words “DOMAIN FOR SALE” in the registrant field for the disputed domain name – is further evidence of lack of rights and legitimate interests. See, e.g., Prudential Insurance Company of America v. credoNIC.com and DOMAIN FOR SALE, National Arbitration Forum Case No. FA234367 (March 23, 2004).
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is obvious from the nature of the disputed domain name that the Respondent registered it with the Complainant in mind.
The Panel is satisfied that the Respondent registered the disputed domain name primarily for the purpose of selling it at a profit to the Complainant and, in the meantime, to use it for commercial gain and to mislead internet users by encouraging them to visit the website connected to the domain name in the belief that it was connected with the Complainant. Whether or not users would know that the Complainant and its trademark were not connected with pornography, the Respondent has used the Complainant’s trademark to attract unwitting Internet users. See National Spiritual Assembly of the Bahá’ís v. Buy This Name, WIPO Case No. D2001-1302 (December 18, 2001).
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith in accordance with paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.