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Philips India Limited v. Proton Engineers
[Indexed as: Philips India Ltd. V. Proton Engineers]
[Indexed as: philipsindia.com]
National Arbitration Forum
Administrative Panel Decision
Forum File FA92529
Commenced: 21 January 2000
Judgement: 7 March 2000
Presiding Panelist: Paul A. Dorf

Domain name - Domain name dispute resolution policy - India - Subsidiary rights -User Agreement - Famous mark - Advertising Costs - Breach of Trust - Bad faith registration - Deliberate delays - Damages
Complainant is a subsidiary of Philips Electronics N.V. (PENV), who are registered owners of "PHILIPS" trademark. Complainant, with written permission of PENV, has extensively advertised its electronic and lighting products in India, under the "PHILIPS" trademark for six decades. In 1998 Complainant spent approximately $9,327,699 on advertising of this trademark. Respondent, after being commissioned to develop and host a website for the Complainant, made an application for the domain name, philipsindia.com. However, instead of applying on behalf of the Complainant, Respondent made application on its own behalf.
Held, Name Transferred to Complainant
The domain name philipsindia.com is confusingly similar to the trade mark name "Philips" in which Complainant, Philips India Ltd., has rights. Due to the corporate name of Complainant, its known association with PENV, and the fact that Complainant is known to the public as "Philips India", Respondent's use of the domain name philipsindia.com would cause confusion and give the impression that it is a reference to Complainant.
Respondent demonstrated bad faith use of the mark, by registering the domain name on its own behalf after being hired to do so on behalf of the Complainant. Further, Respondent deliberately caused delays in order to subvert transfer of the name back to Complainant, even after Complainant agreed to compensate Respondent for registration costs and all work completed to date. Respondent has no legitimate rights or interests in respect of the domain name.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Dorf, Panelist: -

The above-entitled matter came on for an administrative hearing on March 6, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Philips India Limited, hereafter "Complainant," against Proton Engineers, hereafter "Respondent." There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made
PROCEDURAL FINDINGS
Domain Name: philipsindia.com
Domain Name Registrar: 9NetAvenue Concentric Network
Date of Domain Name Registration: 06 March 1997
Date Complaint was sent to Respondent in accordance with Rule 2(a): 27 Jan 2000
Response Due Date: 21 Feb 2000
The Complainant filed its complaint with the National Arbitration Forum on 21 Jan 2000. After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d) The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).
The Respondent registered the domain name with 9NetAvenue Concentric Network, the entity that is the Registrar of the domain name. By registering its domain name with 9NetAvenue Concentric Network, the Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACTS
The Complainant is a public limited Company having approximately 72,707 shareholders. The Complainant is inter alia engaged in the business of manufacture and marketing of consumer electronic and lighting products. The annual turnover of the Complainant in 1998 was Rs 16,743,445,000/- (approximately US $ 384,464,868). The Complainant is a subsidiary of Philips Electronics N.V. (PENV) of the Netherlands. PENV is the registered proprietor of the trade mark "PHILIPS" in India, as well as all over the world. "PHILIPS" is a name that is associated with PENV and in India, with the Complainant, Philips India Limited.
The Respondent is a firm inter alia engaged in the business of industrial automation, web based projects and multimedia solutions. The Respondent has registered the domain name "philipsindia.com" in its own name as more particularly set out hereinafter.
The Complainant, with the approval of PENV, has extensively and in various media, advertised the trade mark "PHILIPS' in India for the past six decades. By a Registered User Agreement dated 201h December, 1993, PENV has permitted the Complainant to use the mark .-'PHILIPS' in India, for its various products. A copy of the Agreement has been produced as Exhibit 'A'. The Complainant has spent Rs 406,220,000/- (approximately $9,327,669) on publicity and advertising of this trade mark in 1998.
Further, due to the corporate name of the Complainant and due to its known association with PENV, the Complainant is known to the general public as "Philips India". Any use by a third party of the name "Philips India" or, as in the present case, "philipsindia" would cause confusion and deception in the minds of the trade and public and would give the general public the impression that it is a reference to the Complainant.
Notwithstanding any of the above, the Complainant further submits that the domain name "philipsindia.com", was wrongfully applied for and registered in the name of the Respondent. The details of how this domain name came to be registered in the name of the Respondent and the actions taken by the Complainant to recover the same are set out hereinbelow:
1. Sometime in November 1998, the Business Electronics (BE) Division of the Complainant felt the need to have their own website for their customers. They approached the Respondent to develop and host the website.
2. The Respondent began work on the website and made an application for the domain name "philipsindia.com". However, instead of making the application on behalf of and in the name of the Complainant, the Respondent wrongfully had the domain name registered in his own name. The domain name was registered in the name of the Respondent on or about 8"' December, 1998.
3. Thereafter, on or about January 1999, the Complainant decided to develop a corporate website for the Company as a whole which was to include all the business divisions of the Company. The Complainant had entrusted the management of this website to Rediffusion Communication Ltd. As a consequence, the Respondent was instructed to stop working on the website and was requested to transfer the domain name to the Complainant. However, the Respondent raised objections, as he wished to host the site, and refused to transfer the domain name, even though the Complainant had assured him that any payments due to him in respect of registration charges and for developmental efforts already put into the website would be paid forthwith.
4. There were many discussions between the Complainant and the Respondent to resolve the issue and the Respondent, after the personal intervention of one of the Complainant's managers, agreed to take necessary action to transfer the domain name to the Complainant.
5. The Complainant informed the Respondent that all that was required was the sending of a text file in a given format with relevant details to INTERNIC. The Complainant then proceeded to send the file to the Respondent on e-mail thrice, but the Respondents at first claimed not to have received it. After further follow-up the Respondent agreed that he had received the file but had not taken any action on it.
6. Subsequently, the Manager of the Complainant personally took the file to the Respondent's office on 25-8-1999 and got the Respondent to send the same to INTERNIC. A week later, the Complainant received a copy of the mail sent by the Respondent to INTERNIC; however, the same was not in the required format.
7. The procedure was repeated once again on 25-11-1999 and the request was rejected by INTERNIC as the domain name specified in the message was not specified correctly. Instead of the domain name "philipsindia.com", the file contained the name "philipsindia.com =09=09=09". A copy of the message returned by INTERNIC showing the incorrect domain name was set forth in an exhibit.
8. The Complainant once again attempted to resolve the matter by deputing their Information Technology Manager to the Office of the Respondent on 20th December, 1999 to ensure that the file was transmitted in their presence. The Respondent did transfer the file, however this time to the wrong address. When this came to light, the Complainant requested the Respondent to send ,the file to the correct address. Once again, the Respondent sent the file to INTERNIC on 6 Jan 2000, but the same problem of the junk characters "09=09=09" was noticed by INTERNIC.
9. In the circumstances, the Complainant submits that there is no dispute that the domainname "philipsindia.com" rightfully should be registered in the name of the Complainant, The Respondent has admitted this in his conduct of repeatedly making attempts to transfer the domain name to the Complainant.
10. However, the Complainant submits that the Respondent is deliberately trying to delay or subvert the transfer for malafide reasons. The Respondent has caused undeniable delays and damage to the Complainant by his flimsy excuses such as his e-mail account being full or his dial-up account not working or insisting on payments in respect of his other projects with Complainant.

CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:
1. The domain name as registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the Respondent domain name has been registered and is being used in bad faith.
It is therefore just, right and proper that the domain name "philipsindia" be transferred to the Complainant
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "philipsindia.com" REGISTERED BY RESPONDENT, PROTON ENGINEERS, BE TRANSFERRED TO COMPLAINANT, PHILIPS INDIA LIMITED.
Dated: March 7, 2000
By Judge Paul A. Dorf, (Ret.)
Arbitrator

Domain Name Transferred to Complainant