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 Harry Willems of Utrecht, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2014, 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. On September 22, 2014, the Center sent an email communication in Dutch and English to the parties regarding the language of the proceeding. On September 24 and 29, 2014, the Complainant submitted a request for English to be language of the proceeding.
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 October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 23, 2014.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on October 29, 2014. 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 language of the registration agreement was said by the Registrar to be Dutch. The Complaint was filed in English. The Notification of the Complaint and Commencement of Proceedings was communicated to the Respondent in Dutch and in English. The Complainant, as it is entitled to do, submitted a request that English be the language of the Proceeding. The Respondent did provide a reply to this request. The Center decided to accept the Complaint filed in English, and any putative Response in either English or Dutch, and appointed a panel familiar with both languages. The Panel has the power to determine the language of the proceedings in these circumstances. The Respondent did not file a Response to the Complaint, nor did he avail himself of the opportunity to object to the Complainant's request to conduct the proceedings in English. He made no submissions in this regard. The Complainant indicates that as a multinational company with activity in many countries, although based in the Republic of Korea it conducts UDRP proceedings in English, and that convenience requires this to be so. The products to which the disputed domain name alludes are available in many markets and promotion for these products is routinely conducted in English on the Internet and elsewhere. Given also that the Respondent is based in the Netherlands where knowledge of English is widespread, and that he has chosen not to file a Response or to make submissions about the language of the proceedings, the Panel in its discretion holds that the proceedings will be conducted in English. 4. Factual Background
The Complainant has registered the trademark SAMSUNG in numerous countries including France, Spain, Russian Federation, European Union and the United States of America (USA). The Complainant has also registered the marks SAMSUNG GALAXY and GALAXY in a number of jurisdictions, the latter inter alia by way of International Registration No. 624861 in Class 9. The Complainant has also recently acquired the trademark registration for the mark SAMSUNG GALAXY GEAR in Class 9 in the Republic of Korea, Australia and Japan. The Complainant has also acquired trademark registrations for SAMSUNG GEAR in the Republic of Korea and in the European Union, registered on September 11, 2014 and November 13, 2013 respectively. Further, an application for the trademark SAMSUNG GEAR, filed by the Complainant in the USA was published on April 29, 2014.
The disputed domain name was registered on August 4, 2013. 5. Parties' Contentions A. Complainant
The Complainant is a major diversified multinational corporation in the field of electronics, founded in the Republic of Korea in 1930. In 2013, the Complainant's net sales figure was USD 228.7 billion. The Complainant has over 179 offices in 61 countries. The Samsung brand was ranked 8th by Interbrand in 2013. The Complainant contends that its trademark SAMSUNG is unique and perceived as distinctive by consumers. The Complainant has designed, manufactured and marketed the "Samsung Galaxy" series of Android-powered mobile computing devices including smart phones, tablet PC's, smart watches, cameras, media players, etc. and they have achieved great commercial success in the global communication devices market. The Complainant has launched a variety of products under the Samsung Galaxy brand category, and has acquired trademark rights in that brand in many different jurisdictions. Samsung Galaxy smart phones have sold at very high volumes and as a result the Complainant held a share of about 35% of the global smart phone market in 2012. Samsung Galaxy Gear is a smart watch produced by the Complainant, which was launched in September 2013, whereas the disputed domain name was registered in August of that year.
According to the Complainant the disputed domain name is identical or virtually the same as "Samsung", "Samsung Galaxy" and "Samsung Galaxy Gear", terms that the Complainant has acquired rights in. The disputed domain name consists of the Complainant's worldwide well-known mark SAMSUNG, to which the Complainant's world famous smart watch, "Galaxy Gear" is appended, and according to the Complainant it is well established that where a disputed domain name fully incorporates the Complainant's trademark, this is sufficient to constitute an identical or confusingly similar domain name. In any case the disputed domain name incorporates the SAMSUNG GALAXY GEAR mark in its entirety, causing confusion as to the commercial origin of the products or services, connection, affiliation, or association of the Respondent with the Complainant and its marks.
According to the Complainant, the Respondent has no legitimate purpose for registering domain names incorporating the Complainant's trademarks SAMSUNG and GALAXY GEAR. The Complainant has given no authorization to use the said trademarks or to incorporate them in any domain name. The Respondent is not commonly known by the disputed domain name. According to the Complainant therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
Further the Complainant contends that the registration of a domain name which incorporates the Complainant's world famous trademark without any authorization or legitimate connection with the Complainant amounts to a registration in bad faith. The Respondent must have known about the Complainant's famous trademarks before registering the disputed domain name. The disputed domain name was registered in August 2013 when the Complainant's Galaxy Gear smart watch was receiving much publicity prior to its launch in early September. According to the Complainant the object of the Respondent is to obtain a free ride on the reputation of the Complainant, and to intentionally attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks. Further, the disputed domain name resolves to a parking site where a message indicates that it has been reserved for a customer, and which also supplies contact information. According to the Complainant, this indicates that the Respondent has registered and is using the dispute domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or the Complainant's competitors for commercial gain. In the Complainant's submission all this amounts to registration and use in bad faith. 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 is identical to the trade mark SAMSUNG GALAXY GEAR which the Complainant has recently registered in Class 9 in the Republic of Korea, Australia and Japan. The Complainant has used this trademark in relation to its smart watches, one of a suit of products supplied by reference to the SAMSUNG and SAMSUNG GALAXY marks. The Complainant has acquired trademark registrations for the SAMSUNG GEAR mark in the Republic of Korea and in the European Union, registered on September 11, 2014 and November 13, 2013 respectively. The Complainant also has a pending application for the trademark SAMSUNG GEAR in the United States. Even in the absence of such registrations or applications, the disputed domain name still incorporates the trademarks SAMSUNG and SAMSUNG GALAXY in their entirety. The impression created is therefore of a legitimate connection between the disputed domain name and any website to which it resolves, and the Complainant.
Therefore the Panel holds that the disputed domain name is identical to the Complainant's trademark SAMSUNG GALAXY GEAR. B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its various trademarks or to incorporate them in any domain name. The Respondent is not known by the disputed domain name nor does it conduct any legitimate business by reference to that domain name or any of the trademarks incorporated in it. The disputed domain name resolves to a parking site indicating that the disputed domain name has been reserved for a customer. None of these factors give rise to any rights or legitimate interests vesting in the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant's SAMSUNG and SAMSUNG GALAXY trademarks are highly distinctive and have a very well established reputation in many jurisdictions, to which the sales figures of the smartphone to which they inter alia refer amply attest. The SamSung trademark acquired considerable goodwill around the world long before the registration of the disputed domain name. The registration of the disputed domain name coincided in time with the period just prior to the launch of the Complainant's Galaxy Gear smart watch, which received considerable publicity. In the circumstances it is inconceivable that the Respondent was unaware of the rights of the Complainant in the various trademarks incorporated in the disputed domain name. Further, the disputed domain name resolves to a parking website which indicates that the disputed domain name has been reserved for a customer. In the circumstances of this case the Panel cannot conceive of any form of use in good faith of the disputed domain name by the Respondent. As such, the Panel concludes that the Respondent's passive holding amounts to use in bad faith.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith by the Respondent. 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.
WiIliam A. Van Caenegem
Sole Panelist
Date: November 4, 2014
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