The Complainant is Samsung Electronics Co., Ltd of Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is of Nikiti, Sithonia, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2013, the Registrar 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 March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 17, 2013.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on April 25, 2013. 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.
On April 13, 2013 the Complainant filed a Supplemental Filing. In the exercise of its discretion, the Panel declined to consider it according to paragraphs 10 and 12 of the Rules. 4. Factual Background
The disputed domain name was first registered on February 3, 2013 (the “Relevant Date”).
The Complainant, based in the Republic of Korea, is a major global manufacturer and supplier of a variety of goods ranging from consumer electronics such as refrigerators, TV’s and videos, to electronic gadgets such as cellular phones, computers and printers. It has over 179 offices in 61 countries worldwide. The Complainant states that it is part of the Samsung Group, which was established in the early 1930’s and has become one of the most financially stable and influential companies in the world. In 2010, the Samsung Group achieved global net sales of USD 221 billion. The SAMSUNG trademark was ranked number 9 in the Interbrand (a global branding consultancy, specializing in vast brand services including brand strategy, brand analytics, brand valuation, corporate design, digital brand management, packaging design and naming) list of leading global brands in 2012, number 17 in 2011, and number 19 in 2010. As stated by the Complainant, “Samsung” translates to “three stars”.
The Complainant is the registered proprietor of, inter alia, the following trademark registrations for SAMSUNG, which it relies on:
- United States trademark registration No. 1164353 for the word mark SAMSUNG filed on March 16, 1979 in classes 7, 9 and 11 for various goods.
- United States trademark registration No. 1634816 for the device mark SAMSUNG filed on February 12, 1987 in classes 18, 23, 24 and 25 for various goods.
- United States trademark registration No. 1920554 for the device mark SAMSUNG filed on March 18, 1993 in class 24 for various goods.
- United States trademark registration No. 1920552 for the device mark SAMSUNG filed on March 18, 1993 in class 1 for various goods.
- United Kingdom trademark registration No. 2287093 for the word mark SAMSUNG filed on November 30, 2001 in classes 7 and 14 for various goods.
- United States trademark registration No. 2214833 for the device mark SAMSUNG filed on March 30, 1994 in classes 7, 9 and 11 for various goods.
- United States trademark registration No. 2882774 for the device mark SAMSUNG filed on August 29, 2002 in classes 7 and 9 for various goods.
- Chinese trademark registration No. 3038519 for the word mark SAMSUNG filed on March 14, 2003 in class 9 for various goods.
The Complainant has also asserted that it has a registered the trademark SAMSUNG in Greece, where the Respondent resides, but did not provide any evidence of this.
The Complainant asserts that SAMSUNG is a widely recognized global trademark.
Evidence shows that, as at the date of the Complaint was filed, the disputed domain name was being used to host an online retail website which closely resembled the Complainant’s website hosted at “/us”, and which was identical in many respects. In particular, the Respondent’s website:
- Prominently displayed the SAMSUNG logo;
- Used a colour scheme and layout very closely resembling the colour scheme and layout of the Complainant’s website;
- Contained photographs and other imagery identical to imagery displayed on the Complainant’s website;
- Contained promotional copy identical to certain copy displayed on the Complainant’s website.
Evidence shows that the Respondent’s website offered marked down pricing from an original price that was much higher that the regular price for the same goods on the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and 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
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark SAMSUNG as at the relevant date by way of its registered trademarks for that trademark in numerous classes long predating February 3, 2013, when the disputed domain name was registered. The Complainant’s trademark was also well-known as at that date.
The Panel considers that the Complainant’s SAMSUNG registered trademark is instantly recognizable within the disputed domain name and the descriptive words “phone” and “sale” do not sufficiently differentiate the disputed domain name from the Complainant’s trademark so that confusion will not arise. Rather, the text “phone-sale” serves to accentuate the likelihood of confusion by bringing to mind the Complainant’s products (which include mobile phones and smart phones).
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made 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; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
There is considerable UDRP jurisprudence (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 2.3) that a distributor of trademarked goods or services can be making a bona fide offering and thus have a legitimate interest in a domain name under certain conditions. These include (a) use of the website to sell only trademarked goods from the trademark holder; and (b) prominently disclosing the registrant’s relationship with the trademark holder.
While on the facts of this Complaint, it seems that the first requirement is met, the second is not. There is no indication whatever that the operator of the website at the disputed domain name is a different entity from the Complainant. Rather, consumers seeing the website at the disputed domain name would be likely to assume that it is operated by the Complainant, when it is not.
Further, the Complainant states and the Respondent accepts that it has never given the Respondent any licence or authority to use, or apply for the registration of, the disputed domain name, and the Respondent is not related in any way to the Complainant’s business.
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. Rather, the disputed domain name is being used to host an online retail website deliberately tailored to closely resemble the Complainant’s website hosted at “/us”.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed 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; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 website or location or of a product or service on the Respondent’s website or location.
The Complainant has trademark registrations SAMSUNG which well predate the Relevant Date. The evidence amply shows that the Complainant’s trademark SAMSUNG was also extremely well-known globally as at that date.
The Panel finds that the Respondent must have been aware of the Complainant’s well known trademark and business at the time it registered the disputed domain name. The inclusion of the text “phone-sale” in the disputed domain name shows that the Respondent was targeting the Complainant and its well-known trademark.
In this case, the facts and the timing of the Respondent's activities are revealing. Registration of the disputed domain name occurred on February 3, 2013 and very shortly after that the website hosted on it went live using identical images and photographs taken from the Complainant's official website and containing promotional material identical to copyright material on the Complainant's website. (Indeed the Complaint was filed only 7 weeks after the Relevant Date).
The Panel is therefore satisfied from this timing and on the facts that the disputed domain name was registered in bad faith. The Panel is entitled too to draw inferences from the Respondent's failure to respond to the Complaint.
As to the second limb, the Panel is also satisfied that the disputed domain name is being used in bad faith, in particular by hosting a website deliberately tailored to closely resemble the Complainant’s website and to attract Internet users for commercial gain. There is therefore a real risk that Internet users encountering the website hosted at the disputed domain name would believe that the Respondent’s website is operated by, or associated with, the Complainant when it is not. The Respondent's website is able to masquerade as an official Samsung website when it is not. 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.
Andrew Brown Q.C.
Sole Panelist
Date: May 8, 2013
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