Complainant is Samsung Electronics Co., Ltd. of Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
Respondent is Maksim of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30 and August 3, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On August 4, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 26, 2010.
The Center appointed Paul E. Mason as the sole panelist in this matter on September 7, 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 corporate name “Samsung” means “three stars” (Complaint, page 8). SAMSUNG has been for many years a widely known trademark worldwide, primarily in the areas of consumer electronics, telecommunications related devices, and semiconductors.
The Samsung Group, of which Complainant Samsung Electronics Co., Ltd. is a subsidiary, was founded in the early 1930’s and has grown steadily since then. According to page 9 of the Complaint, in 2008 the Samsung Group had worldwide sales of USD 173.4 billion and net income of USD 10.7 billion.
Complainant has registered the trademark and associated service mark SAMSUNG in many countries. Annex F to the Complaint shows certificates and evidence of registrations of these marks in the United States of America, United Kingdom of Great Britain and Northern Ireland, Russian Federation and Ukraine, the latter being the country of Respondent‘s location and the country-level suffix attached to the disputed domain name in this case, i.e., “ua”. Complainant registered the trademark and service mark SAMSUNG in Ukraine in various classes, the earliest in certain classes in 1997, with its Ukrainian Trademark Registration Certificate dated February 15, 2006.
According to Interbrand rankings as shown in Annex I of the Complaint, the brand SAMSUNG was ranked 19th in the entire world in 2009 for ease of recognition.
According to information contained in Annex I of the Complaint, the disputed domain name was registered by Respondent on November 1, 2008. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant contends that the disputed domain name is essentially the same as its well-known trademark and service marks which have been registered in many countries, including Ukraine, for many years. It cites UDRP cases to show that including the trademark in its entirety in a domain name renders the domain name practically identical or confusingly similar to the mark. It further asserts that the mere addition of a country suffix does nothing to change this fact. 2. Rights or Legitimate Interests
Complainant declares it has not given or transferred any such rights or interests to use the mark SAMSUNG to Respondent. 3. Registered and Used in Bad Faith
Complainant contends that since the name and mark SAMSUNG is so well-known, Respondent must have been aware of it when registering the disputed domain name. Its very use of the domain name (see below) indicates Respondent’s bad faith intent in registering it.
Complainant has provided a screen shot of the website to which the disputed domain name resolves. It is a site dedicated to the unauthorized sales of Samsung products. This is the essence of bad faith under UDRP, i.e., using a confusingly similar domain name to direct web traffic to a site selling competing products to those of a complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is - well-settled UDRP practice that a domain name incorporating a trademark or service mark in its entirety may be identical or confusingly similar to that trademark or service mark for purposes of the Policy. A variety of UDRP cases have so held. See e.g., Samsung Electronics Co., Ltd v. Pimser Electronics Ltd. (Samsung Turkey),WIPO Case No. D2009-1630 regarding the domain name , and also Samsung Electronics Co., Ltd. v. Diversified Technologies,WIPO Case No. D2007-1365, and cases cited therein.
The mere addition of a country code top level domain (ccTLD) as a suffix does nothing to change this. On the contrary, Respondent’s adding the “ua” ccTLD for a website advertising in Ukraine where Samsung itself does business, only aggravates the confusion. See Samsung Electronics Co., Ltd. v. Pimser Electronics Ltd. (Samsung Turkey), supra.
In its Annexes, Complainant has provided more than ample evidence of the common and official Internet usage of the designation “ua” to mean “Ukraine”.1
For these reasons the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known trademark and service mark SAMSUNG. B. Rights or Legitimate Interests
According to very well-established UDRP practice, once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name at issue. However, the overall burden of proof still rests with the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), Paragraph 2.1.
Complainant in this case contends that Respondent is not affiliated with Complainant in any way nor is authorized to use Complainant’s mark. Respondent has not replied to the Complaint. Accordingly, the Panel finds Respondent has failed to meet its burden and therefore has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding registration and use of the disputed domain name in bad faith, one such indication can be Respondent’s failure to respond to the Complaint with a reply that it has been acting in good faith. Given that the mark SAMSUNG is so well-known around the world and was registered in Ukraine as early as 1997, it is quite likely that Respondent was aware of Complainant and its mark when registering the disputed domain name. And as indicated below, Respondent’s actual use of the domain name indicates bad faith intent in registering it.
Furthermore, the Final Report of the WIPO Internet Domain Name Process, April 30, 1999, recommends that a domain name registrant should represent “to the best of [the registrant’s] knowledge and belief, the registration of the domain name does not interfere with or infringe the intellectual property rights of another party . . . ,” WIPO Final Report, at 106-109.
According to the screen shot dated on or about July 9, 2010 of the website to which the domain name resolves, the website in the Ukrainian language is a sales website. It calls itself “Internet Magazine Samsung in Ukraine” and is devoted to selling and servicing various Samsung products such as Bluetooth products, video cameras, home theater, microwaves, musical devices, plasma TVs, DVD players, TVs, LCD TVs, digital cameras etc. It features pictures of several Samsung products currently being promoted for sale such as a Samsung TV LE32B350 for USD 497.00, a refrigerator-freezer Samsung RF300GCSW for USD 354.00 etc. The site also includes links to so-called online consultations, price lists, Samsung company philosophy etc.
A visit to this same site by the Panel on September 7, 2010 indicated little change in its content, merely a few new Samsung products now being promoted.
Respondent here did not post any disclaimers stating it is not affiliated in any way with Samsung, which further indicates bad faith use of the domain name.
The essence of bad faith use of a domain name under the UDRP is using a domain name confusingly similar to another’s trademark or service mark in order to divert web traffic for commercial gain to the website at the domain name using the goodwill built up by the owner of the trademark or service mark. The Panel finds this is the case here where Respondent is essentially acting as an unauthorized reseller of Complainant’s products while trying to create the opposite impression to customers – that it is so authorized.
For all these reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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 Complainant.
Paul E. Mason
Sole Panelist
Dated: September 22, 2010
1 Annexes J-1 through J-4 of the Complaint, indicating such designations by WIPO, USPTO, ISO and IANA.
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