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 Nextnet Tech, Domain Dept of Woodside, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the Respondent’s contact details and noting that the Domain Name registration had been placed on Registrar Lock and was due to expire on August 2, 2015. In response to an enquiry by the Center, on July 22, 2015, the Registrar confirmed that the Domain Name would remain on Registrar Lock after the lapse of the expiry date until the conclusion of this administrative proceeding, in accordance with ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7., but should the Domain Name go into redemption status after its expiration, the Domain Name could be deleted, if it was not renewed. On August 3, 2015, the Registrar confirmed that the Domain Name registration had been renewed by the Complainant.
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 July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 14, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 21, 2015. 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 Samsung Group of companies was established in 1930. The Complainant, a member of that group, manufactures and sells a variety of electronic goods including refrigerators, television sets, cellular phones, computers and printers and is the registered proprietor of numerous SAMSUNG trademarks, including United States of America federally registered trademark No. 1,164, 853, registered on August 12, 1981.
In 1989 the Samsung Group established with BP (formerly British Petroleum) a subsidiary company under the name Samsung BP Chemicals Co., Ltd. to produce chemical products.
The Domain Name was registered on August 2, 2005. It resolves to a parking site displaying “This domain may be for sale. Contact […] ”. 5. Parties’ Contentions A. Complainant
The Samsung brand is world famous. The Domain Name is identical or confusingly similar to the Complainant’s SAMSUNG mark.
It is easily recognized that the name SAMSUNG and/or SAMSUNG BP is commonly used to refer to the Complainant or its products or services whereas the Respondent has not been commonly known by the Domain Name. The Complainant has not authorized the Respondent to use the mark SAMSUNG nor to register any domain name incorporating that mark. The Domain Name, consisting of the dominant part of the Group’s subsidiary name, Samsung BP Chemicals, will deceive customers or prospective customers of the Complainant or its group as to the origin, source or sponsorship of the Respondent’s commercial activities. The Respondent has no relationship or connection with the Complainant or its group, and thus the Respondent has no rights or legitimate interests in respect to the Domain Name, which was registered and is being used in bad faith. The evidence indicates that the Respondent registered the Domain Name which wholly incorporates the Complainant’s world famous SAMSUNG mark with the term BP, which is also a well-known name of the Samsung Group’s subsidiary. The Respondent has neither relationship nor connection with the Complainant or its goods or services. Such facts create a strong presumption that the Respondent registered and used the Domain Name in bad faith.
When the Domain Name is entered into the Internet browser, it is directed to a parking site displaying “This domain may be for sale. Contact […] ” on the top of the webpage. Further, the Domain Name has been registered since August 2005, and it appears that the website has not been operated as a functional or a valid website for over 10 years. This clearly attests that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or the Complainant’s competitors for commercial gain.
The Respondent must have known of the Complainant’s famous mark as well as the name of the Group’s subsidiary, Samsung BP or Samsung BP Chemicals, prior to registering the Domain Name. Thus, the Respondent’s registration and use of the Domain Name is to obtain a free ride on the established reputation of the Complainant and intentionally to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Such use and registration of the Domain Name by the Respondent, therefore, mislead Internet users to believe that there is a connection between the Domain Name and the Complainant or its Group which constitutes bad faith. Hence paragraphs 4(b)(i) and (ii) [sic] of the Policy are satisfied. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) the Policy, a complainant requesting the transfer of a domain name must prove the following three elements: 1) the respondent’s domain name 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 the domain name; and 3) the respondent has registered the domain name and is using it in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. A. Identical or Confusingly Similar
The Complainant’s registration of the SAMSUNG mark on the United States Patent and Trademark Office’s Principal Register satisfies the requirement that the Complainant has rights in the mark.
The Domain Name wholly incorporates the Complainant’s mark, with the addition of “bp” and “.com”. The “bp” addition does nothing to detract from the Complainant’s distinctive SAMSUNG mark and indeed evokes the Complainant’s related company Samsung BP Chemicals Co., Ltd. The generic Top-Level Domain “.com” is generally considered inconsequential when determining confusing similarity. See, e.g., News Holding Limited v. Steve Kerry/WWW Enterprise, Inc., WIPO Case No. D2006-1374.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s SAMSUNG mark. The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Panel finds that the SAMSUNG mark is distinctive and famous. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element of its case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative and non-exclusive circumstances, which shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 website or location or of a product or service on its website or location.
The Panel notes the passage of ten years since the Domain Name was registered, for which the Complainant has provided no explanation. In some circumstances a respondent might be able to show that it has, over such a period, acquired rights or legitimate interests in a disputed domain name or has used it in good faith. In the absence of any Response, there is no evidence to support any such conclusion in this case.
The Complainant submits that the evidence demonstrates circumstances falling within paragraphs 4(b)(i) and (ii) of the Policy but its supporting argument indicates that the Complainant intended to refer to paragraphs 4(b)(i) and (iv).
The only use to which the Domain Name has been put, on the evidence before the Panel, is to offer the Domain Name for sale to any Internet user arriving at the parking page to which the Domain Name resolves. In the Panel’s view, this does not indicate that the Respondent registered the Domain Name primarily to sell, rent or otherwise transfer it to the Complainant or to a competitor of the Complainant. Paragraph 4(b)(i) is not satisfied.
Because of the confusing similarity of the Domain Name to the Complainant’s mark, Internet users would be induced erroneously to expect the Domain Name to resolve to a website operated by the Complainant. The Respondent must have intended this. The Respondent stood to gain commercially from this confusion proposing to sell the Domain Name. These circumstances fall within the Policy, paragraph 4(b)(iv).
Further, the Panel considers the following additional circumstances as indicative of bad faith registration and use:
(I) the distinctive nature of the Complainant’s famous mark;
(II) the likelihood that anyone other than the Complainant trading under the Domain Name would infringe that mark;
(III) the establishment, prior to the registration of the Domain Name, of the Complainant’s related company, Samsung BP Chemicals Co., Ltd., of which the Panel infers the Respondent must have been aware prior to registering the Domain Name; and
(IV) the Respondent’s failure since 2005 to use the Domain Name otherwise than to offer it for sale generally.
Accordingly the Panel finds that the Domain Name has been registered and is being used in bad faith. The Complainant has established this element of its case. 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.
Alan L. Limbury
Sole Panelist
Date: September 2, 2015
Full & Egal Universal Law Academy