The Complainant is Samsung Electronics Co., Ltd., Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is EAO Digital Solutions, Del. Benito Juarez, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 3, 2012, the Center transmitted by email to April 3, 2012 a request for registrar verification in connection with the disputed domain name. On April 3, 2012, GoD, 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 April 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on May 15, 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 part of a large multinational Group operating and doing business worldwide, including in Mexico. The “Samsung” name is very well-known for electronic and other products and is the object of a large number of trademarks registered by Complainant or its affiliates in many variations. These include registered trademarks in Mexico, where the Respondent is apparently located, and in the United States of America, where the Registrar of the disputed domain name is located. The Complainant, acting through its lawyers, on November 18, 2011 sent the Respondent a detailed and clear cease and desist letter in Spanish with respect to the disputed domain name, but apparently received no reply. 5. Parties’ Contentions A. Complainant
The Complainant emphasizes the size, fame and range of goods for which it is known all over the world (Group Sales of USD 210 Billion, offices in 61 countries), and that the registration of a domain name incorporating the well-known and trademarked name SAMSUNG is an obvious attempt to take advantage of its reputation and well-known and protected name.
The Complainant points out that the addition of the word “tienda” (store or commerce in Spanish) does nothing to dissipate this deliberate confusion with the Complainant’s name and trademarks. The Complainant asserts that it is not affiliated with the Respondent and has never authorized it to use its name or trademarks, and that the registration and use of the same is in obvious bad faith. The Complainant cites a number of other WIPO UDRP panel decisions that have transferred similar domain issues to it including the somewhat analogous case of Samsung Electronics Co. Ltd.v. Bruce Pelton, WIPO Case No. D2010-1121.
Whereupon the Complainant requests that the disputed domain name be transferred to it. 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 includes the entirety of the Complainant’s well-known and trademarked name. The addition of the word tienda does nothing to diminish the confusion and similarity engendered by the use of the Samsung name as it suggests a commercial relationship or sales point for Samsung products. Thus this first element of Paragraph 4(a)(i) of the Policy is proven. B. Rights or Legitimate Interests
There is nothing in the case file to suggest that the Respondent has any rights or legitimate interest to the trademarked name “Samsung”, or is known by that name. The Complainant has unequivocally denied any connection with the Respondent, much less any authorization to use the name Samsung. In the absence of a reply from the Respondent the Complainant has thus, prima facie, met its burden of proof under Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The recent registration of the disputed domain name including the very widely known and trademarked name “Samsung” was not serendipitous, but was obviously designed to use that name in bad faith. According to the Complaint there is not currently a website corresponding to the disputed domain name, although the November 18, 2011 cease and desist letter indicates and reproduces active use of the disputed domain name at that time, with the Respondent apparently trading on the SAMSUNG name to sell other products. In any event even the passive holding of a clearly infringing domain site can, as on the facts here, constitute impermissible “use” within the meaning of the Policy. The Respondent’s failure to reply to a particularly clear and explicit cease and desist letter explaining the Policy (and stating in bold ”[e]l nombre de dominio ha sido registrado y esta utilizado de mala fe”) is further indicia of bad faith. There is, on the other hand, no evidence or information in the case file or otherwise apparent to the Panel that is consistent with any good faith explanation of Respondent’s registration and use of the disputed domain name.
It follows that Complainant has met its burden under Paragraph 4(a)(iii) 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 domain name be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Dated: May 29, 2012
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