The Complainant is Samsung Eletrônica da Amazônia Ltda. of Manaus, Brazil, represented by Montaury Pimenta Machado & Vieira de Mello, Brazil.
The Respondent is Beats of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Megazone Corp. dba HOSTING.KR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2019, 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 January 29, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same date, the Complainant requested that English be the language of the proceeding. The Respondent did not submit any request regarding the 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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2019.
The Center appointed Andrew J. Park as the sole panelist in this matter on March 8, 2019. 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
Samsung Electronics Co., Ltd. entered into a license agreement with Samsung Eletrônica da Amazônia Ltda., the Complainant in this case, in which it granted the Complainant authorization to market its products bearing the SAMSUNG mark, and powers to act in defense of said mark. Accordingly, Samsung Eletrônica of Amazônia Ltda., the Complainant in this case, is entitled to act in the interests of the SAMSUNG mark.
The Samsung Group is a Republic of Korea-based conglomerate company that includes a number of subsidiaries. It is one of the largest businesses in the Republic of Korea, producing nearly one-fifth of the country’s total exports with a primary focus in the electronics, heavy industry, construction, and defense industries. Samsung was established in 1938 in the Republic of Korea and has since grown exponentially, becoming one of the world’s leading electronics companies today, specializing in digital media and equipment, semiconductors, memory, and integration of systems. Samsung’s current high-quality innovative products and processes are globally recognized.
In order to protect its intellectual property rights over its marks, the Samsung Group owns numerous trademarks registrations for the SAMSUNG mark, which pre-date registration of the disputed domain name.
In Brazil, Samsung is the owner of the following trademarks registrations:
Registration No.
Trademark
Class
Owner
Registration Date
826572669
SAMSUNG
9
SAMSUNG ELECTRONICS CO., LTD
August 14, 2007
817164367
40:15-20-34
SAMSUNG ELECTRONICS CO., LTD
March 18, 1997
817164383
09:55-60-80
SAMSUNG ELECTRONICS CO., LTD
February 27, 1996
817164359
09:05-15-20
SAMSUNG ELECTRONICS CO., LTD
February 14, 1995
817164391
09:25-30-35
SAMSUNG ELECTRONICS CO., LTD
February 14, 1995
817164340
37:42-44-45
SAMSUNG ELECTRONICS CO., LTD
February 14, 1995
The disputed domain name was registered by the Respondent on August 12, 2009, and resolves to a website containing links that make reference to the Complainant’s products and area of business generally. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The Complainant and the Samsung Group are the owners of numerous trademarks registrations for the SAMSUNG mark worldwide. The trademark upon which the Complaint is based is SAMSUNG and the disputed domain name is . The disputed domain name reproduces the entirety of the SAMSUNG trademark, in which the Complainant holds intellectual property rights, with the mere addition of the generic term “buy” and the generic Top-Level Domain (“gTLD”) “.com”, which are insufficient to escape confusing similarity. The Complainant’s domain name was registered on November 29, 1994, much before the registration date of the disputed domain name.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that:
i) The Respondent has no registration and/or application for the trademark SAMSUNG or “BUY SAMSUNG” before the Brazilian Patent and Trademark Office or before any other trademark office around the world.
ii) The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the disputed domain name or any other domain name reproducing its SAMSUNG trademark.
iii) The Complainant’s trademark is famous world-wide, being one of the most recognizable brand names in the world and it has been registered and used much earlier than the date on which the Respondent registered the disputed domain name.
iv) The Respondent is not commonly known or identified by the trademark SAMSUNG.
v) The Respondent does not make a legitimate use of the disputed domain name, rather, the disputed domain name was registered in a complete act of bad faith by the Respondent.
3) the disputed domain name was registered and is being used in bad faith. The Complainant insists that the Respondent, in registering the disputed domain name, intentionally sought to cause confusion between the Complainant and the disputed domain name in an effort to profit from the use of the famous SAMSUNG trademark. The fact that the Respondent (a) completely reproduced the SAMSUNG trademark in its disputed domain name and (b) the website which the disputed domain name resolves to has links that make reference to the Complainant’s products, all show that the Respondent used the Complainant’s trademark in the disputed domain name in order to attract Complainant’s customers, giving them the idea that there would be a commercial relationship between the Complainant and the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Finding
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Language of the Proceeding
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolves to a website which is in English;
3) The Complainant and the Respondent presumably use different languages, and neither of them understands the language of the other party. The Complainant uses Portuguese and the Respondent presumably uses Korean. Therefore English would not be unfair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark SAMSUNG and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the word “buy” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark and the addition of a gTLD such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademarks. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed 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, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Further, there is no evidence that the Respondent is currently using or commonly known by, or has used or has been commonly known under, or has a bona fide intent to use the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(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 online 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 claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that Samsung Electronics Co., Ltd. is a multinational electronics company headquartered in Suwon, Republic of Korea. Samsung is one of the world’s leading electronics companies and the world’s second-largest information technology company by revenue. Also the Complainant’s trademark registrations were all registered much before the Respondent registered the disputed domain name. The disputed domain name includes the Complainant’s trademark in its entirety with the addition of the term “buy”, and the website to which the disputed domain name resolves contains links that make reference to the Complainant’s products. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s Marks and its business.
Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto (particularly in view of the Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in order to attract Internet users to its website for commercial gain.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 J. Park
Sole Panelist
Date: March 22, 2019
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