WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Corporation Ltd, Co. v. Tristar Networks
Case No. D2003-0746
1. The Parties
The Complainant is Samsung Corporation Ltd, Co., Gyeonggi-do, Republic of Korea, represented by Aram International Law Offices, Republic of Korea.
The Respondent is Tristar Networks, Tempe, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <samsungplaza.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2003. On September 23, 2003, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Dotster, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and informing that the administrative, billing, and technical contact is Paul Lee. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2003. The Respondent did not submit any response to the notification. Accordingly, the Center notified the Respondent’s default on November 14, 2003. For sake of completeness it is added that Mr. Paul Lee, the administrative contact of the Respondent, sent two emails to the Center, one before the Complaint was notified to the Respondent, and one after notification (which cannot, however, be considered as Response of the Respondent in accordance with the Rules). These emails are mentioned here, because the Panelist refers to them in his decision.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on November 12, 2003. 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 the holding company of the Samsung Group and owns and manages the trademarks and domain names related to the corporate names "Samsung" and "Samsung Plaza". According to its submission, the name SAMSUNG has been used since the establishment of the Complainant in 1938. Starting in the textile and food industries field, the group today has affiliated companies in the areas of electronics, machinery, chemicals, construction, finance, trading, wholesale and retail trading. It has several hundred operations in 65 countries, including the United States, and employs approximately 174 000 people worldwide. In 2001 the group had total sales of US$ 98,7 billion. In 2000, Samsung Electronics, one of the affiliates of the Complainant obtained 1442 Patents in the United States.
In November 1997, the Group has also opened, in Korea, a department store under the name SAMSUNGPLAZA. The sales of this department store amounted in 2001 to US$ 400 million and in 2002 to US$ 660 million.
The Complainant owns trademark registrations for the trademark SAMSUNG in over 100 countries, including Korea and the United States. It also owns trademark registrations in Korea for the trademark SAMSUNGPLAZA, both in Korean script and in Latin script. The registrations cover a wide list of goods and services within the fields of activities of the group. The Complainant also operates websites under the domain names <samsung.com> and <samsungplaza.co.kr>.
All these submissions of the Complainant have been evidenced in annexes to the Complaint and have not been contested by the Respondent.
The value of the SAMSUNG brand has been estimated by Business Weekly Magazine in the year 2002 at US$ 8,3 billion, thus ranking 34th among the world’s top brands (leaving e.g. NIKE behind on rank 35). SAMSUNG is therefore clearly a world famous trademark, that is well-known at least in Korea and in the United States, where the Respondent is located.
The Respondent registered on March 7, 2000, the domain name <samsungplaza.com>.
According to the submission of the Complainant, which has not been contested by the Respondent, the domain name has not been activated for a website under that name.
At present the domain name does not even lead to any website. However, before the Complaint was lodged and at least until October 14, 2003, the Respondent used the domain name for a link to a website "www.sextoy.com" respectively "www.asksextoy.com" that is offering adult products through the Internet and links to other pornographic websites. This is submitted by the Complainant in its Complaint and confirmed by the Center, which on October 14, 2003, sent the notification of the commencement of the administrative proceeding, amongst others, to an address which included the trademark SAMSUNG and the domain name <asksextoy.com>, an address that, at the date of notification (October 14, 2003), was known to the Center.
5. Parties’ Contentions
The Complainant submits that (1) the domain name <samsungplaza.com> 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 respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent’s domain name <samsungplaza.com> is identical to the trademark SAMSUNGPLAZA in which the Complainant has rights in Korea (the gtld .com cannot be taken into consideration as an element which would exclude or diminish identity or confusing similarity). The domain name <samsungplaza.com> is also confusingly similar to the trademark SAMSUNG, in which the Complainant has rights in many countries all over the world, including Korea and the United States, where the Respondent is located, and which is well-known in these countries. The addition of the descriptive term "Plaza" to the distinctive trademark SAMSUNG cannot exclude confusing similarity, the more as this term will easily be understood by consumers as a location where products of the Complainant are offered for sale.
B. Rights or Legitimate Interests
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name until recently led to a website "www.asksextoy.com", offering adult toys and providing links to other pornographic websites. Even if the Respondent does not use its domain name to promote commercial activities of its own, the Panelist is satisfied that providing a link to such websites cannot be considered to be non-commercial. It would make no sense for the Respondent to provide links to a pornographic website, if it where not to attract a fee, the more as such arrangements are common. Therefore the Respondent’s use of the domain name <samsungplaza.com> is commercial, but cannot be considered to be a bona fide offering of goods or services. Finally, for the same reason that the Respondent apparently does not promote its own commercial activities with the help of the domain name <samsungplaza.com>, the Respondent has not been able to become known under the name <samsungplaza.com>.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no right or legitimate interest in the domain name <samsungplaza.com>.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Respondent had knowledge of the Complainant’s mark SAMSUNG, being well-known in the United States and one of the most well-known marks in Korea. It is also very likely that the Respondent was aware of the Complainant’s trademark SAMSUNGPLAZA. The latter conclusion could not be easily drawn if the person who registered the domain name were of American origin. However, that person is clearly of Korean origin. Not only is the administrative and the billing contact a Mr. Paul Lee, Mr. Lee also wrote two emails to the Center in the name of the Respondent. In the second email, dated October 17, 2003, (after the notification of the Complaint) he wrote, using the email address of the Respondent:
"I can’t no English very well. Korean is easy to me. So, I want to Korean letter concern with complaint. Is it possible? Please answer to me. Please. Sincerely, Lee"
The Center correctly responded to Mr. Lee that the language of the Proceeding is English, since that is the language of the Registration Agreement. However, the email strongly indicates that Mr. Lee, who apparently registered the domain name <samsungplaza.com> under the fantasy name Tristar Networks, is of Korean origin. This assumption is confirmed by Mr. Lee’s name, being one of the most common Korean names, and by the contents of Mr. Lee’s first email to the Center, dated October 9 (before the Complaint was officially notified to the Respondent), where he wrote amongst others:
"Samsung, as far, as I know, is one of common name used in thousands of fields…I did not do any proposal on this domain to anybody. Even to then, I have my own business to sell some products for Koreans in America." The contents of this email confirms that Mr. Lee is identical to the Respondent and that he has never used the domain name <samsungplaza.com> for a commercial activity of his own. Indeed, he refers to his own business as a separate business. The mail also confirms to the satisfaction of the Panelist that Mr. Lee, acting under the name of the Respondent, was aware of the name SAMSUNG. In the absence of any submission and evidence in a Response after notification of the Complaint, Mr. Lee’s assumption that this name is a common name used in thousands of fields cannot be taken seriously (the Panelist is not aware of any use of the name "Samsung" except for products of the Complainant). It only underlines the strength of that name as a consumer brand in the United States. Reading the email of Mr. Lee carefully, it is clear to the Panelist that he did not express the view that "Samsung" is a common personal name. In the absence of any submission to the contrary the Panelist is therefore satisfied that "Samsung" is a distinctive word and Mr. Lee’s knowledge of this name can only emanate from products of the Complainant, sold under that name that are known to him.
This alone is already a strong indication of registration in bad faith. The Panelist is satisfied that the Respondent indeed registered the domain name in bad faith, taking into account the use which the Registrant was making of it.
As said before, the Respondent used the domain name <samsungplaza.com> as a link to a pornographic website. Thus it directed visitors to this website. By such use the Respondent intentionally attempted to attract Internet users, expecting to arrive at a website of the Complainant, to an other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. That behavior was detrimental to the reputation of the Complainant’s mark. The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion, as rightly has been concluded in the decision Royal Bank of Canada v. Personal, WIPO Case NO. D2001-0761.
In the absence of any submission of the Respondent, the Panelist has no doubt that the Respondent made that use of his domain name for commercial gain. Thus it was pursuing an activity, which must be considered to be bad faith under the Policy. Even if one interprets paragraph 4(b)(iv) of the Policy to refer to the website or other location of the Respondent, whilst the Respondent uses its domain name primarily in order to revert the visitor to other websites, the Panelist considers the circumstances of the case to be evidence of registration and use in bad faith, at least comparable to the circumstances listed in paragraph 4(b)(iv) of the Policy. If one considers the website, which was appearing when an Internet user typed the Respondent’s domain name, to be "an other on-line location", the Respondent’s activity clearly was covered by paragraph 4(b)(iv). Be it as it may, the circumstances as listed in paragraph 4(b)(i) to (iv) are not exhaustive and the Panelist is satisfied that the pattern developed by the Respondent is evidence of registration and use in bad faith. The very fact that the Respondent apparently ceased to make that use after the Complaint has been lodged does not alter this conclusion. It would be too easy for a Respondent to escape from the conclusion of use of a domain name in bad faith if it were sufficient to cease making such use after receipt of a Complaint.
With the registration of the domain name <samsungplaza.com>, the Respondent has also prevented the Complainant from registering the name and trademark of its affiliate wholesale company trading under that name "Samsungplaza" as a domain name in the .com top level domain.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <samsungplaza.com> be transferred to the Complainant.
Gerd F. Kunze
Date: November 25, 2003