The Complainant is Samsung Electronics Co., LTD of Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Bruce Pelton of Laguna Niguel, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 7, 2010, GoD, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 9, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2010.
The Center appointed Anders Janson as the sole panelist in this matter on August 13, 2010. 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 is an internationally famous organization in the business of manufacturing and selling a variety of goods from consumer electronics such as refrigerators, TVs and videos, to electronic gadgets such as cellular phones, computers and printers and is a world leader in semiconductor technology.
The Complainant is one of the affiliates of “Samsung Group”. Having been established in the early 1930s, the Samsung Group has gradually become one of the most financially stable and influential companies in the world. Samsung Group has registered its name in numerous countries including the United States, where the Respondent is located. The Samsung Group is, inter alia, the owner of the following trademark registrations covering a wide variety of goods:
i. United States trademark registration No. 1,920,552 of the mark SAMSUNG, registered on September 19, 1995, Classes 1, 17 and 19
ii. United States trademark registration No. 2,214,833 of the mark SAMSUNG, registered on December 29, 1998, Classes 7, 9, 11 and 14
iii. United States trademark registration No. 1,920,554 of the mark SAMSUNG, registered on September 19, 1995, Classes 23, 24, 25 and 27
iv. United States trademark registration No. 2,882,774 of the mark SAMSUNG, registered on September 7, 2004, Classes 7, 9, and 11
v. United States trademark registration No. 1,164,353 of the mark SAMSUNG, registered on August 12, 1981, Classes 7, 9, 11 and 14
vi. United States trademark registration No. 1,634,816 of the mark SAMSUNG, registered on February 12, 1991, Classes 18, 23, 24 and 25
vii. United Kingdom of Great Britain and Northern Ireland trademark registration No. 2287093 of the mark SAMSUNG, registered on November 30, 2001, Classes 07 and 14.
The Respondent, is an individual who when he registered the disputed domain name provided the registrar with a contact address in the United States of America. The Respondent is in default and accordingly has not challenged the conclusions of the Complainant.
The disputed domain name was registered by the Respondent with GoD, Inc. on April 25, 2007. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith; and
- the disputed domain name should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is . The Complainant is the holder of the registered trademark SAMSUNG. The disputed domain name contains the Complainant’s trademark SAMSUNG in its entirety with the added suffix “lighting” and the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, gTLD shall be disregarded. The question is therefore if the addition of the suffix “lighting” renders the disputed domain name dissimilar from the Complainant’s registered trademarks.
In several UDRP decisions, the panels have found that the fact that a domain name incorporates a complainant’s registered trademark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273).
The Panel finds it established that the trademark SAMSUNG is widely known and that the ownership of it belongs to the Complainant. The Panel further finds that the generic suffix “lighting” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “lighting” to the trademark signifies a website associated with the Complainant. The Panel therefore finds that the addition of the suffix “lighting” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.
The disputed domain name must therefore be considered confusingly similar to the trademark SAMSUNG. The Panel holds that the Complainant has established element (i) of the Policy’s paragraph 4(a). B. Rights or Legitimate Interests
As mentioned above the Respondent has not filed a Response in accordance with the Rules, paragraph 5. In certain circumstances where a respondent clearly has no obvious connection with a disputed domain name, and indeed when the domain name has not been actively used, a prima facie showing from a complainant that the respondent has no right or legitimate interest may be enough to shift the burden of proof to a respondent to demonstrate that such a right or legitimate interest exists. Here, the Respondent has not submitted any Response. The Panel notes that registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Panel finds that the Complainant has made a prima facie showing and the Respondent has not participated in these proceedings or presented any evidence of rights or legitimate interests in using the disputed domain name.
The Panel therefore holds, also in view of the Panel’s further findings below, that the Complainant has established element (ii) of the Policy’s paragraph 4(a). C. Registered and Used in Bad Faith
Finally, the Panel has to consider the question of the disputed domain name has been registered and is being used in “bad faith.” Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(i) states that a circumstance indicating bad faith is registration of a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant. Paragraph 4(b)(iv) states that another circumstance indicating bad faith is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.
The Complainant has asserted that the Respondent’s registration and use of the disputed domain name is undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the well-known trademark SAMSUNG. The Panel has already established that the trademark mark SAMSUNG is recognizable.
The Complainant has claimed that the disputed domain name does not have a corresponding website despite the fact that the domain name was registered almost three years ago. Instead, if the domain name is entered, it is indicated that “this web page is parked for FREE, courtesy of GoD”. According to “Go Daddy Domain name Registration Agreement”, if a domain name registrant does not build its own website, the registrar provides with the parked page service.
With reference to the above-mentioned and the fact that it is highly unlikely that the Respondent by utter accident registered the disputed domain name, which differs from the Complainant’s trademark only by the addition of the suffix “lighting”.
The Panel finds that the Respondent by creating a likelihood of confusion with the Complainant’s mark as to the source either is trying to mislead consumers in order to attract them to an intended website making them believe that the website is associated or recommended by the Complainant or that the Respondent never have had an intention to make a corresponding website, but registered the domain name primarily for selling, renting or otherwise transferring the domain name registration to the Complainant or its competitors. The Panel finds that both these acts constitute bad faith.
The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 7. Decision
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.
Anders Janson
Sole Panelist
Dated: August 27, 2010
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