The Complainant is Samsung Electronics Co., Ltd. of Yeongtong-gu Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Seoul, Republic of Korea.
The Respondent is Private Registration of Sydney South, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2016. On March 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 16, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 29, 2016. 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 Panel has determined that the language of the proceeding is English. 4. Factual Background
Established in 1930, the Complainant is the flagship affiliate of the Samsung Group, a multinational company headquartered in the Republic of Korea. The Complainant consists of numerous subsidiaries and affiliated businesses throughout the world and has long been a major manufacturer of electronic components such as lithium-ion batteries, semiconductors, chips, flash memory and hard drive devices. In recent years, the Complainant has diversified into consumer electronics, manufacturing mobile phones, smartphones, home appliances, televisions and computers. The Complainant is known as the world’s largest manufacturer of LCD panels, the world’s largest television manufacturer, the world’s largest manufacturer of mobile phones and a multinational leader in the field of semiconductor technology. With the success of its electronics business, the Complainant has been recognized globally as an industry leader in technology and now ranks as a top 10 global brand.
The Complainant recently manufactured a product called “Samsung Gear VR”, a mobile virtual reality headset developed by the Complainant in collaboration with Oculus, an American virtual reality technology company. The Complainant is currently making this product available in its mobile phones. The letters “vr” are known to be a descriptive abbreviation for “virtual reality” in the consumer electronics industry.
The Complainant holds a large number of word and design marks for SAMSUNG (the “SAMSUNG Mark”) in numerous countries worldwide, including the Republic of Korea, France, Spain, Russia, the European Union and the United States of America.
The Respondent registered the Disputed Domain Name on October 21, 2014. The Disputed Domain Name resolves to a parking page of the Registrar displaying the following under the Disputed Domain Name: “Domain name is registered and secured with CrazyD.” 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the SAMSUNG Mark based on both longstanding use as well as its numerous trademark registrations. The Disputed Domain Name consists of the SAMSUNG Mark appended by the letters “vr”, and followed by the generic Top-Level Domain (“gTLD”) “.com”. As described above, the letters “vr” are known in the electronics industry to signify “virtual reality” and are therefore descriptive in nature.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Weight Watchers International, Inc. v. Kevin Anthony,WIPO Case No. D2011-2067.
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its SAMSUNG Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Disputed Domain Name resolves to a parking page hosted by the Registrar. While there is nothing per se illegitimate in using a domain name parking service, linking a domain name to such a service with a trademark owner’s name in mind in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking page is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s SAMSUNG Mark.
Second, the Respondent’s action of registering the Disputed Domain Name evidences a clear intent to disrupt the Complainant’s business by attracting Internet users to the Disputed Domain Name and website to which it resolves by creating a likelihood of confusion with the Complainant’s SAMSUNG Mark as to the source, sponsorship, affiliation or endorsement of the parking page to which the Disputed Domain Name resolves. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its SAMSUNG Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy”).
Third, the Respondent knew or should have known of the Complainant’s rights in its widely-used SAMSUNG Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name decades after the Complainant first used and obtained its numerous trademark registrations for the SAMSUNG Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its SAMSUNG Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). In addition, it is unlikely that the Respondent did not have the “Samsung Gear VR” in mind when registering the Disputed Domain Name.
Fourth, that the Disputed Domain Name currently resolves to a parking page, akin to being passively held, does not prevent a finding of bad faith. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without obvious use for an Internet purpose, may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: May 1, 2016
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