WIPO decision affirmed in China
The Second Shanghai Intermediate People's Court has dismissed an application to set aside a decision made by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre in 2002, which had ordered the transfer of 'philipscis.com' to Philips Corporation.
Philips owns a number of registrations for the trademark PHILIPS in China and has registered the domain name 'philipscsi.com' to host a website for communication, security and imaging (CSI) products. Haixin Jiang, a Shanghai individual, registered 'philipscis.com' for a website that was an almost identical reproduction of the Philips CSI website but for some minor variations.
Philips filed a complaint with WIPO claiming that Jiang had no legitimate reason to register a domain name containing the mark PHILIPS. It produced, as evidence of bad faith on the part of Jiang, email correspondence in which he had informed Philips that he would consider transferring the disputed domain name to Philips, only if it agreed to appoint him as an authorized dealer of Philips products. Jiang responded that the disputed domain name was composed of:
- his English name Philip;
- SC, standing for Shanghai, China;
- and IS, standing for internet system/server.
Jiang claimed that he was involved in internet content provider services and was the legal representative of a Shanghai company that was an authorized dealer of Philips CSI products.
The WIPO panel found that the disputed domain name was confusingly similar to Philips's registered trademark. It held that Philips had never given Jiang any right to use the PHILIPS trademark or to register domain names containing that mark. The panel also noted that Jiang had failed to produce evidence that he had Philips's authority to reproduce its website. It cast doubt on the veracity of Jiang's claim that he had authority to deal in Philips CSI products or to provide installation, maintenance and related support services. It stated that even if that were the case, it could not constitute evidence that he had the right to reproduce Philips's website and register domain names containing the PHILIPS trademark. The panel concluded that Jiang registered the disputed domain name in bad faith, with the intent of creating confusion and attracting internet users to his website so as to gain commercial benefit. Thus, it ordered the transfer of the disputed domain name to Philips.
This decision has now been upheld by the Second Shanghai Intermediate People's Court.
Rebecca Lo, Rebecca Lo & Co, Hong Kong
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