The Complainant is Samsung Networks Inc. of Seoul, Republic of Korea, represented by Shinsegi Law & Patent Office, Republic of Korea.
The Respondent is Stan Samsung Hui of Toronto, Ontario, Canada.
The disputed domain name <samsung.tm> is registered with NIC.TM.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2009. On December 29, 2009, the Center transmitted by email to NIC.TM a request for registrar verification in connection with the disputed domain name. On December 30, 2009, NIC.TM transmitted by email to the Center a partial verification response confirming that the Registry would “suspend the ability of the Registrant to update” its contact details. On December 30, 2009, the Center again transmitted by email to NIC.TM a request for registrar verification. On January 14, 2010, the Center transmitted by email to NIC.TM a request to verify the contact details for the registrant noting those indicated in the publicly accessible NIC.TM Registry WhoIs database and stating that it would proceed to notify the complaint on the basis of the publicly available Whois details in the absence of further registrar confirmation or verification, with the assumption that the WhoIs information is accurate if the Center did not receive a by January 14, 2010. The Center did not receive a response from NIC.TM. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy, approved by NIC.TM (the “Policy”), the Rules for Domain Name Dispute Resolution Policy for .TM (the “Rules of procedure”), 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 January 15, 2010. In accordance with the Rules of procedure, paragraph 5(a), the due date for Response was February 4, 2010. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent's default on February 5, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 18, 2010. 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 of Procedure, paragraph 7.
The Complainant is one of the subsidiaries of the Samsung Group, which is one of the world largest technology and electronics conglomerates. The Complainant is responsible for managing the domain names on behalf of the member companies of the Samsung Group, including the registration and administration of many domain names for these member companies. The Complainant submits that the mark SAMSUNG is the most important trademark and service mark of the Samsung Group. The Samsung Group has registered about 300 trademarks and service marks associated with the mark SAMSUNG across all classes of goods and services in Republic of Korea. In addition, Samsung Group has registered the mark SAMSUNG in many foreign countries and as a trademark in numerous classes connected to their business. The Complainant has produced document evidence of these trademark registrations.
The Respondent is an individual with an address in Canada.
The disputed domain name was registered on May 14, 2007.
The Complainant alleges that the disputed domain name clearly incorporates the Complainant's registered trademark SAMSUNG as the dominant portion of the mark and the disputed domain name is confusingly similar to the Complainant's SAMSUNG trademark.
The Complainant asserts that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. It is incumbent upon the Respondent to come forward with some concrete evidence rebutting this assertion. The Complainant further asserts that the Respondent has not been and is not commonly known by the disputed domain name. Further, the Samsung Group has never authorized the Respondent to use the SAMSUNG mark. In addition, the Samsung Group has been using and continues to use the SAMSUNG mark in connection with its products and services for many years.
The Complainant further contends that the disputed domain name was registered or used in bad faith. The Complainant argues that the Respondent has actual or constructive knowledge of its SAMSUNG mark based upon the Complainant's extensive usage of the mark and the nature. The Complainant contends that the Respondent is not using the disputed domain name actively and just links the disputed domain name to the website associated with another domain name, <stan.hk> the resulting website associated with the domain name <stan.hk> contains only desultory personal stories together with ladies' nude pictures. The stories are irrelevant to the SAMSUNG trademark and to the Samsung Group.
The Complainant states that it has conducted searches through the WhoIs database provided by “www.nic.tm” but found no telephone number, fax number or email address of the Respondent was available therein. Further, the name appearing in the Whois database “Stan Samsung Hui” appears to be false. It is evident from the facts that the Respondent tried to conceal its true identity, which indicates bad faith according to previous panel decisions.
The Respondent did not reply to the Complainant's contentions.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 or is being used in bad faith.
Based on the documents produced by the Complainant, the Panel is satisfied that the Complainant has well proven that it is the owner of the trademark SAMSUNG through use and registration.
The relevant part of the disputed domain name is the word “Samsung”, which is identical to the Complainant's distinctive and famous trademark. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042.
The Panel finds that disputed domain name is identical or confusingly similar to the trademark SAMSUNG, in which the Complainant has rights.
The Samsung Group has never authorized the Respondent to use the SAMSUNG mark. In addition, the Samsung Group has been using and continues to use the SAMSUNG mark in connection with its products and services for many years. The Complainant further asserts that the Respondent has not been and is not commonly known by the disputed domain name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence. See, among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
It seems the Respondent's name as shown in the WhoIs database provided by “www.nic.tm” is “Stan Samsung Hui”; that no telephone number, fax number or email address of the Respondent was available therein; and the Respondent has not responded to the Complaint. The Panel has checked the record to ensure that the Center has discharged its responsibility under the Rules to notify the Complaint to the Respondent and that the procedure is fair. The Panel is satisfied that the Center has well done so.
The Panel notes the disputed domain name resolves to what appears to be a personalized webpage and that the name appearing in the Whois contains “Samsung”. This in and of itself is not sufficient to establish a right or legitimate interest in the disputed domain name, especially in light of the strength of Complainant's trademark and there is little in the record otherwise upon which the Panel could base a finding that the Respondent is making a fair or bona fide use of the domain name in relation to “Samsung”. The Respondent's position is further weakened by the absence of a Response to explain such use and counter Complainant's prima facie case.
In light of the fact that the Respondent has failed to file a Response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has continuously used the mark SAMSUNG for many decades and the SAMSUNG mark has acquired substantial recognition worldwide.
The resulting website of the disputed domain name seems to be a personal blog with some personal stories in Chinese and English. As at the date of this decision, it is still possible to visit the website. Besides the personal stories, it is noted that there are five banners on the right side of the web pages of the website, which are named “Canada AD”, “MOCIS”, “SEO” , “Fire Bay Tech” and “亚洲信息” (Asian Information in Chinese Characters). The website link “亚洲信息” (Asian Information in Chinese Characters) is inoperable and the four other banners are linked to websites which provide an Internet search engine, links to car audio or GPS related business and a telecommunication business. It seems that theses websites are related to the Respondent. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent or balance has the intention to use the disputed domain to attract Internet users to its websites for commercial gain based on the fame of the Complainant's trademark, which is not a bona fide use.
The Panel finds that the Respondent is entitled to write its personal stories or express its views via the Internet. However, this right does not extend to the use of a domain name that completely incorporates the Complainant's world famous trademark. See Adilna Ilac Sanayi Ve Ticaret A.S. v. Serhat Karadag, WIPO Case No. D2007-1146. Furthermore, the Respondent's best choice of the domain name for this purpose seems not to be the disputed domain name but could be the domain name identical to its full name “Stan Samsung Hui” for example if the Respondent's name is true. The Respondent simply utilized the trademark of the Complainant in his domain name and created a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website.
It is further noted that in the personal story in Chinese language dated November 18, 2008 on the web site, the Respondent expressed its comments on IPHONE, N95 mobile and SAMSUNG mobile. At the end of this story, it says that “…I decided to buy this SAMSUNG OMNIA, which is named as 908 domestically, 900 in Hong Kong, OMNIA in North America and PLAY in France”(English translation). From this personal story, it seems very likely that the Respondent knew of the Complainant and the Complainant's trademark based on the goodwill and fame of the Complainant's trademark in the world. Here, the fact that the Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. The Panel finds that the disputed domain name has been registered in bad faith.
There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Sporty's Farm LLC v. Sportsman's Market Inc Omega Engineering Inc, 202 F.3d 489, 498 (2d Cir. 2000); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Furthermore, the provision of false contact information by the Respondent indicates bad faith.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a) (iii) of the Policy.
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 <samsung.tm> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: March 4, 2010