Complainant is Samsung Electronics Co., Ltd of Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
Respondent is Brian Yu, iContents of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On July 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on July 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2015.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on August 28, 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
Complainant owns trademark registrations for the mark SAMSUNG in numerous jurisdictions. The trademark registrations for SAMSUNG cover a variety of goods and services beginning with consumer electronics. They include the trademark registrations below:
(i) Ireland trademark registration No. 155584 of the mark SAMSUNG and design registered on February 19, 1993 in classes 7, 9, 11, 14; and
(ii) Community trademark registration No. 506881 of the mark SAMSUNG and design registered on February 25, 2000 (filed on April 9, 1997) in classes 7, 9, 11, 14, 37, 38, 42.
Complainant has been engaged in the business of manufacturing and selling a variety of goods ranging from consumer electronics such as refrigerators, TVs and videos, to electronic gadgets such as cellular phones, and computers, and is a world leader in semiconductor technology. Complainant is one of the major companies of the Samsung Group. The mark SAMSUNG has been used since 1938. Established in the early 1930’s, in 2012 the Samsung Group acquired sales of USD 268.8 billion and net income of USD 26.2 billion, and Complainant itself acquired sales of USD 228.7 billion and net income of USD 30.5 billion in 2013. According to Interbrand’s rankings, the mark SAMSUNG was ranked 8th in 2013.
The disputed domain name was registered on March 2, 2000. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical or confusingly similar to the mark SAMSUNG which Complainant has rights. The disputed domain name consists of Complainant’s worldwide well-known mark SAMSUNG, combined with the term “sds” which stands for “Samsung Data Systems”. The disputed domain name not only has Complainant’s world famous mark SAMSUNG but also comprises the entire name of the Samsung Group’s well-known subsidiary, Samsung SDS. Therefore, the disputed domain name is sufficiently confusing similar with Complainant’s mark.
(ii) Complainant has no relationship with Respondent and has not authorized Respondent to use the mark SAMSUNG or to register or to seek the registration of any domain name incorporating said mark. Further, Complainant has never given a license or permission to Respondent to use Complainant’s mark. Thus, Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) It appears that the site resolved by the disputed domain name has not been acted or operated as a functional or a valid website for over 10 years. This evidences that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to Complainant or Complainant’s competitors for commercial gains. Respondent must have known of Complainant’s famous mark and the name of its Group’s subsidiary, Samsung SDS, prior to registering the disputed domain name. Thus, Respondent’s registration and use of the disputed domain name is to obtain a free ride on the established reputation of Complainant and to intentionally attract Internet users to believe that there is a connection between the disputed domain name and Complainant which constitutes bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to the mark SAMSUNG which Complainant has rights. It further contends that the disputed domain name consists of Complainant’s worldwide well-known mark SAMSUNG combined with the term “sds” which stands for “Samsung Data Systems”. It asserts that the disputed domain name not only has Complainant’s world famous mark SAMSUNG but also comprises the entire name of the Samsung Group’s well-known subsidiary, Samsung SDS.
The Panel finds that Complainant has provided sufficient evidence showing that it is the owner of the SAMSUNG and design mark, the registration of which predates Respondent’s registration of the disputed domain name. It, inter alia, owns Community trademark registration No. 506881 of the mark SAMSUNG and design registered on February 25, 2000 (filed on April 9, 1997) in classes 7, 9, 11, 14, 37, 38 and 42.
Accordingly, the Panel finds that Complainant’s Community trademark registrations of the SAMSUNG and design mark and in other jurisdictions sufficiently establish its rights in the mark. The Panel notes that Respondent adds the term “sds” which is a part of Samsung Group’s well-known subsidiary company name “Samsung SDS” to Complainant’s SAMSUNG mark in the disputed domain name. The Panel holds that Respondent’s addition of a part of Complainant’s subsidiary company name to the disputed domain name does not distinguish the disputed domain name from Complainant’s mark.
The Panel also finds that the “.com” is a generic Top-Level Domain (“gTLD”), and thus does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity.
Therefore, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark SAMSUNG and design especially in that it incorporates Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 (finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”).
As such, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden of production shifts to Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Complainant contends that Complainant has no relationship with Respondent and has not authorized Respondent to use the mark SAMSUNG or to register or to seek the registration of any domain name incorporating said mark. It also contends that Complainant has never given a license or permission to Respondent to use Complainant’s mark, and thus Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel finds that Respondent has no connection or affiliation with the SAMSUNG mark in the disputed domain name or in any other manner.
Complainant submits that the website to which the disputed domain name resolves has not been acted or operated as a functional or a valid website for over 10 years. The Panel agrees with Complainant’s contention, and finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is such use a legitimate noncommercial or fair use.
Under the circumstances that Respondent did not reply and that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a) has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). C. Registered and Used in Bad Faith
Complainant contends that Respondent must have known of Complainant’s famous mark and the name of its Group’s subsidiary, Samsung SDS, prior to registering the disputed domain name, and thus Respondent’s registration and use of the disputed domain name is to obtain a free ride on the established reputation of Complainant and to intentionally attract Internet users to believe that there is a connection between the disputed domain name and Complainant which constitutes bad faith.
The Panel infers that Respondent was aware of the existence of Complainant’s trademark at the time of registration of the disputed domain name in light of the reputation of Complainant’s SAMSUNG trademark, and Respondent’s reproduction of the trademark in its entirety, combined with a part of Complainant’s subsidiary company name. Therefore, the Panel holds that Respondent registered the disputed domain name in bad faith.
Complainant contends that the site resolved by the disputed domain name has not been acted or operated as a functional or a valid website for over 10 years. It submits that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to Complainant or Complainant’s competitors for commercial gains.
The Panel notes that in Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) and that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
The Panel observes that (1) Complainant’s trademark has a strong reputation and was widely known; (2) Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name; (3) the disputed domain name remains inactive for a substantially longer period of time more than 10 years; and (4) Respondent did not submit a Response to the Complaint. Therefore, the Panel holds that, similarly to the Telstra Corporation Limited v. Nuclear Marshmallows, supra, reproducing the widely known SAMSUNG mark in the disputed domain name in order to attract Internet users to an inactive website is considered as being a use in bad faith.
Therefore, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: September 8, 2015
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