Koninklijke Philips N.V v. Esraa Shetaa
Claim Number: FA2308002056262
Complainant is Koninklijke Philips N.V (“Complainant”), represented by Carlos Mendez of Cooperatie SNB-React U.A., Netherlands. Respondent is Esraa Shetaa (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philipslumea.co>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on August 7, 2023; Forum received payment on August 7, 2023.
On August 8, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <philipslumea.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@philipslumea.co. Also on August 9, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Complainant requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). The Complainants make this request in light of the English language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a formal response, and thereby also failed to argue that the language of proceeding should be in any other language. However, the fact that the Registration Agreement is in English is enough to for the Panel to decide that the proceeding should be in English.
A. Complainant
The Complainant states to be the owner of one of the most widely recognized and well-known trademarks around the world: PHILIPS. The Complainant has in the last 10 years transformed itself into a health technology company. While Complainant’s focus is now on health solutions, the PHILIPS trademark also has a strong heritage in consumer products (such as lighting, televisions, kitchen appliances and personal health products), and continues to be used and licensed for use by others.
Complainant further states that the disputed domain name <philipslumea.co>incorporates Complainant’s well-known trademark in its entirety, only adding “LUMEA”, which is a trademark used by the Complainant for its popular line of IPL (Intense Pulsed Light) hair removal devices, thereby further increasing the confusing similarity. The disputed domain name is thus a combination of two registered trademarks owned by Complainant.
Respondent is not making 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; and the Complainant has been the rights holder of the “PHILIPS” trademark since at least 1966, while the disputed domain name was registered first on December 30, 2021.
The Respondent has no rights or legitimate interests to use the Complainant’s well-known trademark, and has no relationship with Complainant. The Respondent cannot demonstrate any legitimate offering of goods or services under the “PHILIPS” or “LUMEA” trademarks.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but are intending to use it for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name is being used to participate in an affiliate program of an e-marketplace, Amazon, and obtain the associated revenue per the Respondents own statement at the bottom (footer) of the front page: “philipslumea.co is a participant in Amazon Services LLc Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon. Certain content that appears on the site comes from Amazon Services LLC. This content is provide 'As Is' and is subject to change or removal at any time.” Using a domain for such purposes does not create rights or legitimate interests. Respondent has not only failed to provide an accurate and prominent disclosure of its lack of a commercial relationship with Complainant but is intently attempting to impersonate Complainant. Complainant refers to the “About Us” section, which mentions the following: “About Philips Lumea IPL: At Philips Lumea IPL, we help millions of people choose the right and affordable treatment for them.” Furthermore, Respondent has placed a misleading copyright notice in the footer of the website to which the disputed domain name resolves: “Copyright © 2023 Philips Lumea IPL”.
The Respondent’s registration of the disputed domain name at issue, and continuous use of the same, going as far as describing itself as “Philips Lumea IPL”, and using a reproduction of the official Philips Lumea IPL logo appears to be an attempt to exploit the fame and goodwill of Complainant’s “PHILIPS” and “LUMEA” trademarks by diverting Internet traffic intended for Complainant’s web page to its own web page in order to generate affiliate revenue.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's trademark/s as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Finally, it is also relevant that Respondent used a privacy protection service to hide its true identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and regional trademark registrations, such as:
- The International Trademark Registration No. 310459 PHILIPS (word), registered March 16, 1966 for goods in Intl Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 19, 20, 21, 28, 31 and 34, designating Austria, Bosnia and Herzegovina, Switzerland, Czech Republic, Germany, Egypt, Spain, France, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco, Montenegro, Portugal, Romania, Serbia, Slovenia, Slovakia, San Marino, Viet Nam;
- The International Trademark Registration No. 991346 PHILIPS (word), registered June 13, 2008 for goods and services in Intl Classes 3, 5, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 36, 37, 38, 41, 42, 44, and 45, designating Antigua and Barbuda, Australia, Bahrain, Bonaire, Sint Eustatius and Saba, Botswana, Curaçao, European Union, Georgia, Iceland, Japan, Korea (Republic of), Norway, Singapore, Sint Maarten (Dutch part), Syrian Arab Republic, Turkmenistan, Türkiye, USA, Uzbekistan, Zambia, Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Bhutan, Belarus, Switzerland, China, Cuba, Algeria, Egypt, Croatia, Iran (Islamic Republic of), Kenya, Kyrgyzstan, Korea (Democratic People's Republic of), Kazakhstan, Liechtenstein, Morocco, Monaco, Moldova (Republic of), Montenegro, Republic of North Macedonia, Mongolia, Mozambique, Namibia, Serbia, Russian Federation, Sudan, Sierra Leone, San Marino, Eswatini, Tajikistan, Ukraine, Viet Nam;
- European Union Trade Mark registration No. 000205971 PHILIPS (word), registered October 22, 1999 for goods and services Intl Classes 3, 6, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 25, 28, 35, 37, 38, 40, 41 and 42; and
- The International Trademark Registration No. 1033502 LUMEA (word), registered March 1, 2010 for goods in Intl Class 8, designating Australia, European Union, Japan, Mexico, Türkiye, USA, Belarus, Switzerland, China, Iran (Islamic Republic of), Kazakhstan, Russian Federation, Ukraine.
Respondent registered the <philipslumea.co> domain name on December 30, 2021.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the PHILIPS and LUMEA trademarks based upon registration with multiple international trademark agencies including WIPO (e.g., Reg.No. 310459 PHILIPS, registered March 16, 1966, and Reg.No. 1033502 LUMEA, registered March 1, 2010). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark according to Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the PHILIPS and LUMEA trademarks under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
Next, Complainant asserts Respondent’s <philipslumea.co> domain name is identical or confusingly similar to Complainant’s trademarks PHILIPS and LUMEA, as it is a clear combination of the two trademarks, only adding the “.co” ccTLD.
Creating a domain name by combining two or several trademarks owned by the same company indeed fail to sufficiently distinguish a domain name for the purpose of Policy ¶ 4(a)(i). See Czech Arbitration Court, 104965, (finding that the simple combination and use of two marks owned by the same party (the Complainant) in the case of <PHILIPSLUMEA.NET> would by no means be considered sufficient to distinguish a domain name from a trademark.”
The Panel therefore find that the <philipslumea.co> domain name is confusingly similar to the PHILIPS and LUMEA trademarks under Policy ¶4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <philipslumea.co> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PHILIPS and/or LUMEA trademarks. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Esraa Shetaa ”
As noted above, Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent registered and uses <philipslumea.co> to falsely impersonate Complainant and unfairly compete with Complainant, which does not constitute a bona fide offering of goods or services or noncommercial fair use.
The Panel fully agrees with Complainant’s conclusion, based on the evidence provided by the Complainant.
Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered and uses the <philipslumea.co> domain name in bad faith as Respondent registered the disputed domain name to compete with Complainant, falsely identifying itself as related to – or even to be – the Complainant, and disrupting Complainant’s business. Registration of an identical domain name with the intent to disrupt business by passing off as a complainant is indeed a clear evince of bad faith registration and use per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
As noted above, Complainant provides screenshots of the disputed domain name offering identical goods/services as the Complainant, and falsely identifying itself as the Complainant by copying the Complainant’s web sites and adding copyright notes and other references directly and falsely indicating relationship with the Complainant. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philipslumea.co> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 13, 2023
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