The Complainant is Samsung Electronics Co., LTD of Gyeonggi-do, Republic of Korea represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Lee, kee, Lee, Kwangjae of Kyunggido, Republic, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSecure L.L.C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2011. On April 29, 2011, the Center transmitted by email to NameSecure L.L.C. a request for registrar verification in connection with the disputed domain name. On April 29, 2011, NameSecure L.L.C. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Response was filed with the Center on May 28, 2011.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on June 23, 2011. 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.
The Complainant filed the Additional Submission on July 4, 2011. The Panel issued the Procedural Order No. 1 stating to the effect that the Panel has decided to accept the additional submission and give the Respondent the opportunity to submit a counter-statement on its own discretion by July 14, 2011. The Respondent filed the Additional Submission on July 13, 2011.
On July 21, 2011, the Complainant filed a further unsolicited Supplemental Filing, which was received by the Panel only after the rendering of its decision. Given the opportunities provided to the parties and the fact the decision has been rendered, the Panel declined to accept the Complainant’s further unsolicited Supplemental Filing. Accordingly, the Panel sees no reason to give the opportunity to the Respondent to provide any counter comments. 4. Factual Background
The Complainant owns trademark registrations for the mark SAMSUNG in numerous countries, including the Unites States of America, the United Kingdom of Great Britain and Northern Ireland and the People’s Republic of China. The trademark registrations for SAMSUNG cover a variety of goods and services beginning with consumer electronics. They include the trademark registrations below:
(i) The United States trademark registration No. 1,920,552 of the mark SAMSUNG registered on September 19, 1995 in classes 1, 17, 19;
(ii) The United States trademark registration No. 2,214,833 of the mark SAMSUNG registered on December 29, 1998 in classes 7, 9, 11, 14.
The Complainant has been engaged in the business of manufacturing and selling a variety of goods ranging from consumer electronics such as refrigerators, TVs and videos, to electronic gadgets such as cellular phones, and computers, and is a world leader in semiconductor technology. The Complainant is one of the major companies of the Samsung Group. The mark SAMSUNG has been used since 1938. Established in the early 1930’s, the Samsung Group has over 179 offices in 61 countries worldwide. In 2009, Samsung Group acquired sales of 172.5 billion USDs and net income of 13.8 billion USDs, and the Complainant itself acquired sales of approximately 100 billion USDs and net income of about 4 billion USDs. According to Interbrand’s rankings, the mark SAMSUNG was ranked 19th in 2010.
The disputed domain name was registered on January 13, 2000. 5. Parties’ Contentions A. Complainant
(1) The Complainant contends in the Complaint that:
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
- 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.
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel issue a decision that the disputed domain name be transferred to the Complainant.
(2) The Complainant’s Additional Submission
The Complainant contends in its additional submission that:
- The mere sales agreement of December 22, 2010 with a third party “Samsung Bio Corporation” which was established on January 8, 2008, cannot be persuasive as a ground for the Respondent’s having legitimate interests in the disputed domain name because the disputed domain name was registered more than 10 years ago.
- SAMSUNG was well-known as the Complainant’s trademark and trade name at the time of registration of the disputed domain name and the disputed domain name was registered shortly after the Samsung Group informed the media that they were planning to increase investment in biotechnology as evidenced by newspaper articles. As such, the Respondent registered the disputed domain name to sell or rent or otherwise transfer the disputed domain name registration to the Complainant at a high price. B. Respondent
(1) The Respondent contends that:
- The disputed domain name is neither identical nor confusingly similar to the Complainant’s trademark because i) the term “samsung” is a generic noun, not a proper noun which has several meanings; ii) there are a lot of “Samsung companies” which are non-affiliates of Samsung Group, which include Samsung Pharm Co., Ltd. established in 1929 earlier than the first affiliate of Samsung Group established in early 1930’s; and iii) two corporations use “Samsung Bio” as the name of the corporation and domain name.
- The Respondent has been operating business as a sales representative of Samsung Bio Corporation, and thus it has rights and legitimate interests in respect of the disputed domain name.
- The Under Construction Page has been provided by the Registrar simply according to its registration and service, and thus the Respondent has no part in the Under Construction Page. There was no corresponding website by the disputed domain name, and thus there was no intention of the Respondent for consumers to believe that the disputed domain name belonged to the Complainant. The fact and circumstances above would not suggest that the Respondent registered the disputed domain name in bad faith.
(2) The Respondent’s Additional Submission
The Respondent contends in its additional submission that:
- The Complainant’s claim that the Respondent does not have a legitimate right to the disputed domain name because the Respondent did not use the disputed domain name immediately after registration of the disputed domain name is not persuasive in light of the fact that it requires many years to start up a business as can be seen in the case that Samsung Group took more than ten (10) years to have Samsung Biologies established in 2011 since its announcement of investment in biotechnologies in 1999.
- The Complainant cannot explain the ample proofs that many other companies are legitimately using the name Samsung combined with other word(s) as the company name and domain name. The words of bio or biotechnology were not invented by Samsung Group. The Respondent did not register the disputed domain name to sell or rent or otherwise transfer the disputed domain name to the Complainant at a high price but to use on its business purpose. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Respondent contends that the disputed domain name is neither identical nor confusingly similar to the Complainant’s trademark because i) the term “samsung” is a generic noun, not a proper noun which has several meanings; ii) there are a lot of “Samsung companies” which are non-affiliates of Samsung Group, which include Samsung Pharm Co., Ltd. established in 1929 earlier than the first affiliate of Samsung Group established in early 1930’s; and iii) two corporations use “Samsung Bio” as the name of the corporation and domain name.
However, although the term “samsung” has various meanings, it is not considered as being descriptive in respect of the goods and services of the Complainant’s trademark registrations, and thus it is considered as being distinctive. The term “bio” of the disputed domain name is an abbreviation of or an affix of “biology” referring to life or to the study of living things, and thus it does not have distinctiveness as a trademark in respect of “bio-industry”. The part “.com” is a mere gTLD suffix. In this respect, the portions “bio” and “.com” do not constitute essential elements in comparing the disputed domain name and the Complainant’s trademark. Given the analysis above, the prominent portion “samsung” of the disputed domain name and the Complainant’s trademark are identical with each other, and thus the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SAMSUNG.
The Respondent contends that the disputed domain name should not be considered as being confusingly similar to the Complainant’s trademark in light of the co-existence precedents of company names containing the term “samsung”. However, such co-existence precedents do not necessarily preclude the likelihood of confusion between the disputed domain name and the trademark SAMSUNG. B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of production will then shift to the respondent.
The Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark or to seek the registration of any domain name incorporating the said mark.
The Respondent contends that it has been operating business as a sales representative of Samsung Bio Corporation, a third party, and thus it has rights and legitimate interests in respect of the disputed domain name. As evidence, the Respondent has submitted a copy of the sales agency agreement between the Respondent and the Samsung Bio Corporation. However, there is no clue or evidence to see that the Respondent has made a bona fide offering of goods or services under the disputed domain name resolving to a website even since December 22, 2010 when the Respondent and Samsung Bio Corporation entered into the sales agency agreement.
The Panel does not find that a mere entering into a sales agency agreement without a bona fide offering of goods or services even after the lapse of a substantial period of time after entering into the sales agency agreement is considered as being demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4 (c)(i) of the Policy. Although the Respondent is arguing that the launching plan for a website using the disputed domain name has been postponed because of the filing of the complaint against the disputed domain name, the Panel finds it not persuasive because the Respondent did not make a bona fide offering of goods or services under the disputed domain name resolving to a website even for more than four (4) months prior to the filing of the Complaint against the disputed domain name since December 22, 2010 when the Respondent and Samsung Bio Corporation entered into the sales agency agreement. The non-use of the disputed domain name for such a long period of time over ten (10) years can serve to sufficiently infer that the Respondent does not have a right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The Panel recognizes the well-known status and fame of the Complainant’s trademarks from the fact below:
Established in the early 1930’s, the Samsung Group has over 179 offices in 61 countries worldwide. In 2009, Samsung Group acquired sales of 172.5 billion USDs and net income of 13.8 billion USDs, and the Complainant itself acquired sales of approximately 100 billion USDs and net income of about 4 billion USDs. According to Interbrand’s rankings, the mark SAMSUNG was ranked 19th in 2010.
It is also noted that the disputed domain name was registered on January 13, 2000 shortly after the announcement of Samsung Group’s investment plan in biotechnology was reported in various newspapers in December 1999 as evidenced by newspaper articles.
The Panel takes presumption from the fact above that the Respondent registered the disputed domain name with knowledge of the worldwide fame of the Complainant’s trademark and the Samsung Group’s investment plan in biotechnology, and thus the Respondent registered the disputed domain name in bad faith. The timing of registering the disputed domain name comprising of “samsung” and “bio” shortly after Samsung Group’s announcement of its investment plan in biotechnology is not coincident.
The Respondent keeps arguing that there was no corresponding website by the disputed domain name, and thus there was no intention of the Respondent for consumers to believe that the disputed domain name belonged to the Complainant. The Respondent continues to argue that the fact and circumstances above would not suggest that the Respondent registered the disputed domain name in bad faith.
However, the Panel notes that the website using the disputed domain name offers various search categories for electronic products which are main products of the Complainant. The contents of the website are likely to cause misunderstanding among consumers as to the relationship between the operator and the Complainant. The Respondent is arguing to the effect that the Under Construction Page has been provided by the Registrar simply according to its registration and service, and thus the Respondent has no part in the Under Construction Page. However, the Respondent is responsible for the contents of the disputed domain name and should have left it under its full control.
Although the Respondent is arguing that the launching plan for a website using the disputed domain name has been postponed because of the filing of the complaint against the disputed domain name, the Panel finds it not persuasive because the Respondent did not make a bona fide offering of goods or services at the website resolving to the disputed domain name even for more than four (4) months prior to the filing of the complaint against the disputed domain name since December 22, 2010 when the Respondent and Samsung Bio Corporation, a third party, entered into the sales agency agreement. The non-use of the disputed domain name for such a long period of time over ten (10) years can serve to sufficiently infer that the passive holding of the disputed domain name for such a substantial period of time is considered constituting the use of the disputed domain name in bad faith. Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered use of the domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005. 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 disputed domain name be transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Dated: July 22, 2011
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