WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd v. Samsungmexico
Case No. D2005-1245
1. The Parties
The Complainant is Samsung Electronics Co., Ltd, Suwon-City, Gyeonggi-Do, Republic of Korea, represented by You Me Patent & Law Firm, Seoul, Republic of Korea.
The Respondent is Samsungmexico, London, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <samsungcallingcards.com>, <samsungmexico.com> and <samsungtarjetas.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 5, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 December 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2006.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on March 2, 2006. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is the holding company of the Samsung Group and owns trademarks and domain names related to the corporate name “SAMSUNG.” The “SAMSUNG” corporate name has been used as a trademark by the Group since 1938.
4.2 The Group currently has 337 offices and facilities in 58 countries including the United States of America and employs approximately 201,000 people worldwide. The Group’s total revenue was recorded at US$119.5 billion in 2000 and US$101.7 billion in 2003.
4.3 The aforesaid evidences that the Group is well-established and possesses significant worldwide reputation and goodwill. The ability of a majority of its customers to relate to the SAMSUNG trademark and the ease of its recognition plays a major role in this regard.
4.4 The Complainant also owns registrations for the SAMSUNG trademark in more than 100 countries, including the United States of America and the United Kingdom, where the Respondent registered the domain name in issue and has its contact address. The registrations cover a wide list of goods and services within the fields of activities of the Group including the promotion and sales of electronic and telecommunication products and services.
4.5 The Complainant also owns and operates its own website at “www.samsung.com”.
5. Parties’ Contentions
(a) The Complainant contends that the disputed domain names are confusingly similar and identical to the Complainant’s trademarks for the following reasons:
(i) all three domain names comprise the famous SAMSUNG trademark.
(ii) the websites to which these domain names resolve seek to promote telephone calling cards and cordless phones bearing the SAMSUNG name and offer products and services which are confusingly similar and identical to the ones marketed by the Complainant.
(iii) the domain name <samsungmexico.com> would mislead consumers into believing that the website to which the domain name resolves is maintained by a Group member in Mexico.
(iv) the domain name <samsungtarjetas.com> when translated means ‘samsung cards’ and, therefore, conveys the impression that the products and services offered by the Respondent are actually being offered by the Complainant.
(b) The Complainant further states that the Respondent is not affiliated with the Complainant in any way and that it has not authorized the Respondent to use and register the SAMSUNG trademark nor to seek registration of any domain name incorporating the trademark. Accordingly, the Complainant contends that:
(i) the Respondent is not making any legitimate or fair use of the domain name nor has the Respondent any legitimate rights to do so.
(ii) the Respondent is merely using the reputation of the SAMSUNG trademark for personal commercial gain and with the intent to deliberately mislead consumers as to the source of the website and the goods promoted therein.
(iii) the Respondent’s actions have the potential to tarnish the reputation of the SAMSUNG trademark by promoting goods which are possibly not of the same standard as goods produced by the Group.
(iv) the Respondent is diluting not only the value of the Complainant’s trademark but also its business standards.
(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(i) the Respondent intentionally attempted to attract for his own commercial gain, Internet users to his websites by deliberately creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of his own products.
(ii) the Respondent is trying to target a mass consumer group in order to make a commercial gain by confusing them as to the origin of his products by using the reputation of the Group and its telecommunication products and services.
(iii) the Complainant has goods branded with the SAMSUNG trademark and owns websites using the trademark as a starting point for each of its domain names. This is a fact that is obvious to other businesses and consumers alike due to the long established reputation and existence of the Group. The Respondent therefore knew the Complainant, the reputation and goodwill of the SAMSUNG trademark
(iv) the Respondent is using the Complainant’s SAMSUNG trademark to ride on the Complainant’s reputation by creating a likelihood of confusion which thereby disrupts the business of the Complainant by his actions of promoting cellular phones and calling cards labeled with the SAMSUNG trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain names; and
(c) that the domain names have been registered and are being used in bad faith.
6.1 Identical or Confusingly Similar Trade Mark
Being a holding company to the SAMSUNG Group, the Panel is satisfied that the Complainant has rights to the trademark SAMSUNG. In fact, several of the trademark certificates which were adduced as evidence of rights to the SAMSUNG trademark bore the name of the Complainant as the registrant.
It is obvious that the domain names in issue reproduce the distinctive trademark of the Complainant in its entirety. The Panel notes, however, that in each domain name, certain additional descriptive words or geographic depictors have been added to the SAMSUNG trademark. In this case, “calling cards”, “mexico” and “tarjetas”. The Panel finds that such additions to the SAMSUNG mark do not change the confusing nature of the similarities between the Complainant’s mark and the domain names in issue.
In the case of Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, the panel found that the addition of a geographic depictor did not change the nature of the confusing similarity. The panel also cited the following decisions in support thereof: Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117.
The panel in the Telstra case also found that the use of the mark in the domain names complained of in conjunction with words which were descriptive of the services offered by the complainant did not alter the fundamental character of the respective domain name, in referring to some aspect of the complainant and its marks.
Based on the confusing similarity between the Complainant’s trademarks and the Respondent’s domain names, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.2 Rights or Legitimate Interests in the Domain Name
As the Complainant’s assertion that the Respondent was not authorized to use the SAMSUNG trademark remained unrebutted, the Panel could find no justification, rights or legitimate interests on the part of the Respondent to the use of the SAMSUNG trademark in its domain names. The evidence before the Panel also does not indicate that the Respondent is connected to an entity known as “Samsung” or that the Respondent is otherwise known as “Samsung”.
Moreover, the evidence adduced by the Complainant indicates that the websites to which the Respondent’s domain names resolve are actually commercial websites. There does not, therefore, appear to be any grounds that the Panel can find to support a counter-argument that the domain names are being used for legitimate non-commercial or fair use purposes.
Based on the above circumstances, the Panel is therefore satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3 Registration and Use in Bad Faith
The irresistible conclusion which the Panel draws from the circumstances surrounding the registration and use of the domain names is that the Respondent intended to divert Internet users to the Respondent’s website by relying either on:
(a) the initial interest confusion in the minds of the users as to the true owner of the domain names; or
(b) the actual confusion in the minds of the users as to the true owner of the domain names or the connection or association between the owner of the domain names and the Samsung Group.
This conclusion is drawn when one considers the fact that the Respondent decided to use a famous trademark in the mobile communications industry to offer for sale and to advertise mobile communications products (also bearing the SAMSUNG trademark) coupled with descriptive or suggestive words (i.e. “calling cards” and “mexico”).
It would not be unreasonable, therefore, to conclude that in light of the evidence adduced by the Complainant and the failure of the Respondent to submit a Response, that there was an intention from the outset to usurp the goodwill and reputation of the Complainant.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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 names <samsungcallingcards.com>, <samsungmexico.com> and <samsungtarjetas.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: March 15, 2006