The Complainant is Samsung Electronics Iberia S.A. of Madrid, Spain, of Spain, represented by Garrigues, Spain.
The Respondent is Taranga Services, Pty Ltd. of Wellington, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On December 5, 2011, Moniker Online Services, LLC.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 December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed Cherise M. Valles as the sole panelist in this matter on January 11, 2012. 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 a Spanish wholly-owned subsidiary of the South Korean entity SAMSUNG ELECTRONICS Co Ltd, parent of the SAMSUNG group, a group with an international reputation. SAMSUNG is a leading company in the electronics products market with sales close to EUR 130,000 million in 2009. According to “Interbrand Best Global Brands 2011”, SAMSUNG is ranked the 17th most valuable trademark in the world – above USD 23,000 million. The well-known character of the SAMSUNG trademark accrues from its intensive usage to identify its commercial activitysince the foundation of the Company in 1931.
It is the owner of the following trademarks, among others:
- International trademark SAMSUNG, no. 542299A, registered on May 8,1989 in classes 07, 09, 10, 14 and 16;
- International trademark SAMSUNG no. 542299B registered on May 8, 1989 in classes 07, 09 and 14.
Taranga Services Pty Ltd. is listed as the registrant of the disputed domain name.
The disputed domain name was registered on March 25, 2007 with Moniker Online Services, LLC. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on December 2, 2011, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the SAMSUNG trademark in light of the fact that it wholly incorporates the Complainant’s registered trademark. The disputed domain name differs only from the licensed trademark of the Complainant in its addition of the generic word “plasma” to the SAMSUNG trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file any reply in these proceedings and is therefore in default and the Panel shall draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark SAMSUNG. The disputed domain name incorporates the Complainant’s mark in its entirety, with the exception of the addition of the generic term “plasma”. The word "plasma" is generic because it describes a technology used for TV displays. It has been held in many prior UDRP panel decisions that when a domain name incorporates a registered mark in its entirety, it is generally accepted to be confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited,WIPO Case No. D2006-0113 and Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit any Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s well-known SAMSUNG trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021. The Complainant, who registered the trademark SAMSUNG, has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademark and that the Respondent has no relationship to the SAMSUNG trademark. The Panel shares the view that the registration of a domain name that is confusingly similar or identical to a well-known trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting LLC, WIPO Case No. D2005-1319.
The Complainant has provided evidence to the Panel that the Respondent has previously registered domain names conflicting with third party registered trademarks that were transferred to their legitimate owners according to the Policy. See, Eidos Interactive Limited v. Moniker privacy Services/Taranga Services Pty Ltd,WIPO Case No. D2009-0124. The evidence further suggests that the Respondent has intentionally chosen a domain name based on a registered trademark in order to make commercial use of the Complainant’s business name. The disputed domain name is “parked free” and is used to generate sponsored links or “related searches”, including SAMSUNG’s competitors and unauthorized dealers. Moreover, the Respondent has attempted to sell the disputed domain name to SAMSUNG or to its competitors, as is evidenced by the possibility to click on the link “make offer” on the website at the disputed domain name, whereby any interested party can make an offer to purchase the disputed domain name for at least USD 2,500, which is in excess of out-of-pocket costs directly related to the registration of a domain name. See, McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353. Moreover, the Respondent has ignored the cease-and-desist letter sent by SAMSUNG. Consequently, the Panel finds that the Respondent is using the disputed domain name primarily for the purpose of selling the disputed domain name in excess of out-of-pocket costs (paragraph 4(b)(i) of the Policy) and to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy. 7. Decision
For 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.
Cherise M. Valles
Sole Panelist
Dated: January 25, 2012
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