WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co. Ltd. v. Assistenza TV Color Grande Schermo Plasma Raffaele Cicino
Case No. D2008-0643
1. The Parties
Complainant is Samsung Electronics Co. Ltd., Suwon-Si, Gyeonggi-Do, Republic of Korea.
Respondent is Assistenza TV Color Grande Schermo Plasma Raffaele Cicino, Napoli, Italy.
2. The Domain Name and Registrar
The disputed domain name, <samsungassistenza.com>, is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 25, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 28, 2008, Register.com transmitted by email to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced on May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 26, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 29, 2008. 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
Complainant owns trademark registrations for the mark SAMSUNG with trademark offices around the world, including Italy, which registrations date back at least to February 1991. Complaint, Annex 6. Complainant currently has 337 offices and facilities in 58 countries and employs more than 200,000 people worldwide. The SAMSUNG mark has been used since 1938. Complaint, Annex 3. Complainant registered the domain name <samsung.com> in 1994, and is using it to resolve to a web site at which it markets its products over the Internet. Complaint, Annex 4.
Respondent registered the domain name at issue on July 18, 2006. Respondent uses the domain name at issue to resolve to a web site at which Respondent offers to sell and to repair Samsung televisions, advertising itself as the customer service provider for Samsung products. Complaint, Annex 8. Complainant has never authorized Respondent to provide services for its products, or to use its trademark in any fashion.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainant’s SAMSUNG mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue in that Complainant has never authorized Respondent to use the mark in any fashion, nor has Complainant authorized Respondent to perform service on its products, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,
2) that respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s registered mark SAMSUNG to which the common Italian term “assistenza” (“service” in English) is appended and the gTLD suffix com. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547 (<prescriptionsvalium.com>); Nokia Corporation v. IBCC aka Nokiagirls.com WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104 (<eautomotive.com>). The Panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered SAMSUNG trademark. Respondent has failed to respond to Complainant’s assertions. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the mark at issue at a time when Complainant’s mark had attained world wide fame, and Respondent could not have been unaware of Complainant’s mark. Not only did Respondent use the mark at issue to resolve to a web site on which Respondent’s famous mark was prominently featured, but the web site also suggested that Complainant had authorized Respondent to provide repair services for its products. Accordingly the Panel finds that Respondent used the domain name at issue in direct violation of paragraph 4(b)(iv) of the Policy. The Panel finds that the domain name at issue was registered and is being used in bad faith.
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 <samsungassistenza.com> be transferred to Complainant.
M. Scott Donahey
Dated: June 12, 2008