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 Albert Daniel Carter of Charlotte, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 12, 2010, the Center transmitted by email to The Registry at Info Avenue, LLC d/b/a Spirit Telecom a request for registrar verification in connection with the disputed domain name. On August 23, 2010, The Registry at Info Avenue, LLC d/b/a Spirit Telecom, 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 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 15, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 6, 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 following facts and circumstances are undisputed:
- Complainant, an affiliate of the Samsung group of companies, is a well known international company manufacturing and selling various electrical and electronic products for consumers, including TV sets and video machines, refrigerators, cellular phones, computers, printer, etc. It is also a manufacturer of semiconductor products.
- Complainant owns trademark registrations for SAMSUNG in various countries. Inter alia, Complainant owns the following registrations for SAMSUNG with the United States Patent and Trademark Office on the Principal Register: Reg. No. 2,214,833, Reg. Date December 29, 1998, covering products of International Classes 7, 9, 11 and 14, and Reg. No. 2,882,774, Reg. Date September 7, 2004, covering products of International Classes 7, 9 and 11.
- According to Interbrand’s “Best Global Brands” list for 2008, the SAMSUNG brand was ranked 21.
- The record for the domain name registration was created on April 5, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s contentions can be summarized as follows:
- Complainant owns numerous trademarks related to the corporate name SAMSUNG (meaning “three stars”), which was adopted in order to distinguish its business, products and trade identity to its consumers. The disputed domain name creates a likelihood of confusion as to the origin of the domain name and to possible affiliation between Respondent and Complainant. The disputed domain name is confusingly similar to the SAMSUNG mark, in which Complainant has rights.
- Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not affiliated with Complainant in any way. Complainant has not authorized Respondent to use or register its trademark or to seek the registration of any domain name incorporating said mark. Therefore, Respondent is not making any legitimate or fair use of the domain name, nor has Respondent any legitimate rights or interest to do so.
- The domain name in question should be considered as having been registered and used in bad faith. Currently, the disputed domain name is not actively used. Until recently, Respondent has misrepresented himself as an employee of Complainant to undertake under a so-called “Samsung Promo”, a fraudulent scam. Respondent, by using the e-mail address “[ ]@”, engaged in a typical “lottery scam” or “419 scam”, a fraud designed to extract monies from recipients of email messages in the guise of processing fees or transfer charges, without ever receiving any lottery payments. This behavior is evidence of registration and use in bad faith of the domain name, according to Policy paragraph 4(b)(iv). B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
With printouts of trademark certificates issued by various patent and trademark offices, Complainant has evidenced that it has trademark rights in the SAMSUNG mark. See section 4 above.
The disputed domain name incorporates the SAMSUNG mark in its entirety, adding the terms “mobile” and “promo”. It is well established that the addition of generic or descriptive terms to a trademark in a domain name does nothing to distinguish it from the mark. See, among many other decisions, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709) ("The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark”). “Mobile” describes one of the goods manufactured by Complainant and protected by the SAMSUNG mark. See Samsung Electronics Co., Ltd v. Jung Hyun Shin Lee,WIPO Case No. DMX2006-0004, where the domain name, incorporating the SAMSUNG mark entirely, was found to be confusingly similar to this mark since the mere addition of the generic term “mobile” does not distinguish the domain name there at issue from the complainant’s mark. The term “promo” is descriptive of the action of promoting sales of goods or services. See Sutton Group Financial Services Ltd. and Sutton Group Realty Services, Inc. v. Bill Rodger,WIPO Case No. D2005-0126, where the domain name , comprised of the distinctive element “sutton” and the descriptive element “promo”, which is an abbreviation for “promotion” or ”promotional items”, was held to be confusingly similar to the SUTTON trademarks of the complainants.
The technically necessary addition of a gTLD such as “.net” is inapt to dispel the likelihood of confusion between the disputed domain name and Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the SAMSUNG mark, in which Complainant has rights. B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated with Complainant in any way, that Complainant has not authorized Respondent to use or register its trademark or to seek the registration of any domain name incorporating said mark, and that Respondent is not making any legitimate or fair use of the domain name.
Also, Complainant alleged and evidenced with copies of emails apparently sent by Respondent or other persons in control of the disputed domain name that Respondent engaged in a “lottery scam” or “419-scam”. According to this evidence, Respondent and/or such persons, in emails sent in May 2010 from an email address located at the disputed domain name (”[ ]@”), misrepresented themselves as a “Richard Moore”, a “Promo Coordinator” (supposedly an employee of Complainant). Apparently, those involved in this scam tried to obtain from their prospective victim [ ] an initial deposit of ₤875 as “account activation”. To this effect, the senders of the emails from the address acted in concert with an accomplice, who sent emails from an email address located at a domain name corresponding to a fake “Natwest bank”.
Obviously, this “advance-fee scam” cannot be evidence of any rights or legitimate interests in the domain name. See The Prudential Assurance Company Limited v. Prudential Securities Limited v. Prudential Securities Limited,WIPO Case No. D2009-1561, where the respondent used the domain name containing the complainant’s name in emails, masquerading as a subsidiary or operating division of the complainant’s group; such use was held to be fraudulent, and inapt to form a basis for a claim to a right or legitimate interest.
Taken together, Complainant’s contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. It is the consensus view of UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Since Respondent has not presented the Panel with any comments or evidence in his own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The evidence shows that the disputed domain name has been used to commit fraudulent actions, in that Respondent or other persons in control of the domain name impersonated Complainant’s staff in order to deceive, and extract monies from, email addressees via a ”419-scam”. It is evident that the disputed domain name was designed and registered with these fraudulent actions in mind and as an exclusive purpose, i.e. the domain name registration was in bad faith. See The Prudential Assurance Company Limited (cited above) (“The Panel accepts the Complainant's submission that the most likely reason for the Respondent registering the Domain Names and using them to send fictitious emails, is that the Respondent was attempting to obtain bank account details or other personal information from the recipients of the emails, with a view to committing a “419” scam or other similar fraud”). See also MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen,WIPO Case No. D2009-0864 (“[I] n the context of these proceedings there is little room for this Panel to infer anything else than Respondent most likely attempted to deceive inadvertent Internet users, by inducing them to believe that they were connected with a legitimate MasterCard website, and thus to provide personal financial information to the operator of this fake website, which is a behavior in bad faith consistent with “phishing” and/or identity-theft purposes”). See also Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237 (“[E]vidence of duplication in the Complainant’s trading get-up, branding and imagery is direct evidence of the domain name in being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for “phishing” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith”).
Although the disputed domain name was not used in a typical website, it was used in an email address to send the scam emails described above and to solicit a reply to an “online location”. Therefore, Policy paragraph 4(b)(iv) is applicable (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”).
Accordingly, the Panel finds that the disputed domain name was registered and is being used 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.
Roberto Bianchi
Sole Panelist
Dated: October 19, 2010
Full & Egal Universal Law Academy