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 Brendan Furlong of Stamullen, County Meath, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013 via email. On September 12, 2013, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On September 13, 2013, IEDR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an amended Complaint on September 27, 2013, 2013 by email and on October 11, 2013 by courier.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2013. In accordance with the Rules, paragraph 5.1, the due date for Response was November 15, 2013. Further to the Complainant’s request, the proceedings were suspended on October 24, 2013. Upon the Complainant’s request, the proceedings were reinstituted on November 21, 2013. From October 22, 2013 to November 21, 2013, the Respondent sent several email communications to the Center, stating that he wished to settle the case amicably (the content of which is reproduced under Section 5.B below). No formal Response has been filed.
The Center appointed James Bridgeman as the sole panelist in this matter on January 6, 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. 4. Factual Background
The Complainant is a world-famous manufacturer of electrical and electronic goods with over 179 offices in 61 countries.
The Complainant is the owner of the trade mark SAMSUNG, (which means “3 stars”) and has registered the SAMSUNG trademark in numerous jurisdictions across the world, including Community Trade Marks protected in the two jurisdictions on the island of Ireland viz.
- Community Trade Mark SAMSUNG & Design, registration number CTM 8429731, dated 27 January 2010, registered for goods in international class 2 for “toner cartridges for printers, photocopiers; ink cartridges for printers and photocopiers, xerographic toners, ink and toners for photocopiers and printers”.
- Community Trade Mark SAMSUNG, registration number CTM 1877901, dated 23 May 2002, in goods and services in international classes 07 (machinery), 09 (electrical and scientific apparatus), 11 (environmental control apparatus), 14 (jewellery, precious metals), 37 (construction and repair services), 42 (scientific and technological services); and
- Community Trade Mark SAMSUNG & Design, registration number CTM 506881, dated 25 February 2000, in goods and services in international classes 07 (machinery), 09 (electrical and scientific apparatus), 11 (environmental control apparatus), 14 (jewellery, precious metals), 37 (construction and repair services), 42 (scientific and technological services).
The Complainant is also the owner of the Irish registered trade mark SAMSUNG & Design, registration number 155584, dated 19 February 1993, registered for goods in international classes 07 (machinery), 09 (electrical and scientific apparatus), 11 (environmental control apparatus) and 14 (jewellery, precious metals);
The Respondent is a sole trader engaged in the service and repair of domestic appliances.
The disputed domain name was registered on August 9, 2012.
On receipt of the Notification of Complaint and Commencement of Administrative Proceeding October 18, 2013 the Respondent sent an email to the Center, which is quoted in extenso below, in which he stated that he would notify his registrar that the registration was to be terminated immediately and apologized for his error in registering the disputed domain name as he is not a legal expert and believed that he was entitled to register the disputed domain name because it was available.
As recited above, on October 24, 2013 the Center suspended the proceedings until November 23, 2013 at the request of the Parties to facilitate an amicable resolution of the dispute.
The Parties were subsequently advised by the IEDR Registry that the disputed domain name registration would remain locked and the disputed domain name could not be transferred to the Complainant until these proceedings were terminated.
In the circumstances, on November 21, 2013 the Complainant formally requested the reinstitution of these proceedings. 5. Parties’ Contentions A. Complainant
The Complainant relies on its rights in the Samsung trademark and submits that the disputed domain name is identical to the Complainant’s SAMSUNG trademark.
The Complainant submits that the disputed domain name is identical to the Complainant’s famous SAMSUNG trade mark and creates a false impression for the general public that the disputed domain name and the Respondent are connected to the Complainant and/or its SAMSUNG trademark leading to confusion regarding the commercial origin of the products offered and the possible affiliations between the Respondent and the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark or to seek the registration of any domain names incorporating said mark. Therefore, the Respondent is not making any legitimate or fair use of the disputed domain name nor has the Respondent any legitimate right or interest to do so.
The Complainant further submits that the disputed domain name was registered or is being used in bad faith. Because the Complainant’s mark is famous and is well-known worldwide, the Respondent must have had knowledge of the Complainant’s SAMSUNG trademark prior to registering the disputed domain name.
Although the disputed domain name does not resolve to an active website, it must be presumed that the Respondent registered the disputed domain name with the intention of selling, renting, licensing or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the registrant’s documented expenses, which are directly related to the registration of the domain name, and not for the need of their actual use.
The Complainant argues that whether the Respondent’s intention was to sell the disputed domain name or to create a corresponding website to the domain name; both acts constitute bad faith.
By registering the disputed domain name, the Respondent would have intended for consumers to believe that the disputed domain name belonged to the Complainant or was affiliated with the Complainant in some way. Consumers would have believed this affiliation existed between the domain name and the Complainant, as the names are exactly identical, and this intended deception by the Respondent therefore constitutes bad faith.
The Complainant further submits that bad faith can also be defined as a means of interrupting or diminishing the reputation of another. Thus, if it is assumed that the Respondent registered the disputed domain name hoping that it would interfere with the business of the Complainant, or hoping that the Complainant would not want to run the risk of another party having a domain name identical to its own name, thereby offering to pay the Respondent in exchange for ownership of the domain name, the Respondent must be regarded as having used and registered the disputed domain name in bad faith as described under the Policy. B. Respondent
While the Respondent has not filed a formal Response, on October 22, 2013, when he received notification of these proceedings. The Respondent sent an email to the Center in which he stated that he is a sole trader and has been engaged in the service and repair of domestic appliances since 1985. He claimed to have registered the disputed domain name in good faith “as it was unused and not registered and shown as available to register”. He asserted that he has never acted in bad faith to any of his customers or suppliers. He was shocked to receive the notification as he believed that the domain name was available to him to register. He stated that he would notify his registrar that the registration was to be terminated immediately and concluded by stating: “Please except my apologies for this error as I am not a legal expert and did not realise that if a name is up for registration on the register, it does not mean a person can register it.” 6. Discussion and Findings
Paragraph 1 of the IEDR Policy places on the complainant the obligation to prove that:
1.1.1 the domain name is identical or misleadingly similar to a Protected Identifier in which the complainant has rights; and
1.1.2 the respondent has no rights in law or legitimate interests in respect of the domain name; and
1.1.3 the domain name has been registered or is being used in bad faith.
Paragraph 1.3.1 of the IEDR Policy provides inter alia that the concept “Protected Identifiers” for the purpose of the IEDR Policy includes trade and service marks protected in the island of Ireland. A. Identical or Confusingly Similar
The Complainant has furnished evidence of its ownership of the famous SAMSUNG trademark and its rights in the mark as a Protected Identifier within the definition in Paragraph 1.3.1 of the IEDR Policy on the island of Ireland.
The disputed domain name is identical to the Complainant’s SAMSUNG trademark.
It follows that the Complainant has satisfied the first element of the test in paragraph1 of the IEDR Policy. B. Rights in Law or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. When he received the Complaint, the Respondent apologized for his misunderstanding that he was entitled to register the disputed domain name merely because it was available; he immediately offered to transfer the disputed domain name to the Complainant; and made no claim to any rights in law or legitimate interest in the disputed domain name.
In the circumstances, the Complainant has also succeeded in the second element of the test in paragraph1 of the IEDR Policy. C. Registered or Used in Bad Faith
In the circumstances described above, on the balance of probabilities, the Respondent was aware of the Complainant’s SAMSUNG mark and the worldwide reputation of the Complainant when he registered the disputed domain name.
The Respondent has not given any explanation as to why he registered the disputed domain name on August 9, 2012 and has since not established any active website at the domain name address. The Panel finds, on the balance of probabilities, that the Respondent registered the disputed domain name because it referred to the Complainant and/or its products and to that extent he registered the disputed domain name in order to take advantage in some way of the Complainant’s rights and reputation. This may have been a naïve act as the Respondent has submitted or it may have been a more calculated act to profit from the Complainant’s reputation; however, this does not excuse the Respondent’s conduct which is in contravention of the Policy.
It would appear from the file that the Complainant did not make any contact with the Respondent prior to the issue of these proceedings. The Complainant was entitled to proceed in that way as the IEDR Policy and Rules do not require any such prior contact. The Respondent’s immediate response on receiving the Complaint was to offer to cancel the registration without any request for remuneration. In the circumstances, it would appear that he did not register the disputed domain name to hold it for ransom as the Complainant has suggested.
The Respondent may well have naïvely believed that he was entitled to register the disputed domain name and may even have had no particular plan in mind as to what he would do with the registration; however, this is not excusable under the Policy.
This Panel finds however, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights in the SAMSUNG mark when he chose and registered the disputed domain name; that he chose and registered the disputed domain name because it was identical to the Complainant’s famous SAMSUNG trademark; and that he registered the disputed domain name in order to take advantage in some way of the Complainant’s rights and reputation in the SAMSUNG trademark. In such circumstances, on the balance of probabilities, the Respondent’s registration of the disputed domain name was made in bad faith, regardless of the Respondent’s claimed belief that he was entitled to register the disputed domain name merely because it was available.
Under the IEDR Policy, once the Panel finds that the disputed domain name has been registered in bad faith it is not necessary for the Complainant to establish that the disputed domain name is being used in bad faith in order to succeed.
In the circumstances, the Complainant has also succeeded in the third element of the test in paragraph1 of the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: January 9, 2014
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