WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd. v. Grupoinova
Case No. D2012-0569
1. The Parties
Complainant is Samsung Electronics Co., Ltd. of Yeongtong-gu Suwon-si, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
Respondent is Grupoinova of Sevilla, Spain.
2. The Domain Name and Registrar
The disputed domain name is <centralitassamsung.com> which is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2012. On March 20, 2012, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com. a request for registrar verification in connection with the disputed domain name. On March 21, 2012, CSL Computer Service Langenbach GmbH dba Joker.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” or “UDRP”), 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 March 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2012. On April 12, 2012, the Center received an email communication with annexes from Respondent. On April 13, 2012, the Center acknowledged receipt of Respondent’s email communication and informed the parties that the Response due date was April 15, 2012. Respondent did not file any further communication or formal response with the Center. On April 19, 2012, the Center notified the parties the commencement of the panel appointment process.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 26, 2012. This Panel finds that it was properly constituted. This 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.
On April 30, 2012, the Center received a supplemental filing from Complainant. On the same date, the Center sent a communication to the parties informing the parties that the supplemental filing would be forwarded to the Panel for determination pursuant to its discretion.
4. Factual Background
Complainant is a Korean company that forms part of the Samsung Group, engaged in the manufacturing and sale of a variety of goods ranging from consumer electronics, such as, refrigerators, TVs and videos, to electronic gadgets, such as, cellular phones, computers and printers, as well as in semiconductor technology.
Complainant has rights over several trademarks under SAMSUNG, such as: SAMSUNG CRYSTAL AMPLIFIER, Registration No. 2859869 with the Spanish Office of Patents and Trademarks, registered in May 2009, class 9; SAMSUNG DEUCE, Registration No. 083575991 with the National Institute of Industrial Property of France, registered in May 2008, class 9; SAMSUNG ACE, Registration No. 3410845 with the United States Patent and Trademark Office, registered in April 2008, class 9; and SAMSUNG, Registration No. CT1877901 with the Cayman Islands Patent and Trade Mark Register, registered in March 2003, classes 7, 9, 11 and 14 (which registration expired in September 2010)1.
The disputed domain name was created on November 23, 2009.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
The Samsung Group was established in the early 1930’s and has gradually become one of the most financially stable and influential companies in the world. Complainant is an affiliate of the Samsung Group and Complainant itself had revenues of about USD 135 billion and net income of about USD 14 billion, as reported in its 2010 annual report. Complainant has over 179 offices in 61 countries worldwide and is recognized as one of the fastest growing global brands that makes the name “Samsung” easy to identify among consumers.
Complainant owns numerous trademarks and domain names relating to the corporate name “Samsung” (meaning “3stars”) in many stylized formats, which has adopted in order to distinguish its business, products and trade identity to its consumers. According to Interbrand’s rankings, the SAMSUNG mark was ranked 17th in 2011, 19th in 2010 and 2009, and 21st in 2008.
The disputed domain name consists of Complainant’s word renowned mark SAMSUNG to which the common term “centralitas” (a Spanish word meaning private branch exchange or PBX) and the gTLD suffix “.com” are appended. The gTLD suffix “.com” is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of Complainant’s mark and the disputed domain name.
It is also well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words. Thus, the mere addition of the common word “centralitas” to the distinctive element “samsung” cannot avoid the likelihood of confusion or similarity.
Considering that the term “centralitas” is relatively non-distinctive, especially in Spain, the dominant portion of the disputed domain name must be “Samsung”, which is identical to the name of Complainant and its world-famous trademarks, and thus the disputed domain name is confusingly similar to the trademark to which Complainant has rights.
Respondent is not affiliated with Complainant in any way at this time. Complainant has not authorized Respondent to use and register its trademark or to seek the registration of any domain name incorporating said mark. Therefore, Respondent is not making any legitimate or fair use of the disputed domain name nor has Respondent any legitimate right or interest to do so.
The same entity as Respondent, Gestion Integral Inovages2, entered into a distribution contract with CTA S.L., a wholesaler of SAMSUNG products authorized by Samsung Electronics (UK) Limited, which is Complainant’s subsidiary, for reselling and installing to final customers SAMSUNGTelecoms PBXs and associated products, from January 1, 2009, to December 31, 2009.
After the distribution agreement between CTA S.L. and Gestion Integral Inovages (Respondent) expired on December 31, 2009, through a letter dated January 19, 2010, CTA, S.L. requested Respondent not to announce themselves as a Samsung distributor anymore. Despite the above, Respondent had the disputed domain name registered within one month following [sic] receipt of said letter announcing the termination of the distribution agreement. Accordingly, Respondent’s registration of the disputed domain name is based on no rights or legitimate interests.
Even though the distribution agreement between Respondent and CTA S.L. expired on December 31, 2009, Respondent still owns the disputed domain name and is using the SAMSUNG trademark on the website associated to the disputed domain name. Hence, the general public may have a false impression that Respondent is connected to Complainant or to the SAMSUNG trademark.
The disputed domain name should be considered as having been registered and used in bad faith by Respondent.
Despite that CTA, S.L. informed Respondent of the termination of the distribution agreement on January 19, 2010, Respondent did not suspend the use of the SAMSUNG trademarks and the disputed domain name. Therefore, on November 17, 2011, Complainant and its Spanish branch office, Samsung Electronics Iberia S.A., sent a warning cease-and-desist letter to Respondent. Respondent’s representative, Mr. […], called Complainant’s Spanish branch office on November 22, 2011, asserting that Respondent’s use of the SAMSUNG trademark and the ownership of the disputed domain name were based on a legitimate right. Nevertheless, Mr. […] called Complainant’s Spanish branch office a second time, on December 26, 2011, and stated that Respondent was willing to transfer the disputed domain name to Complainant for unreasonable monetary compensation.
Considering the above, Respondent owns the disputed domain name based on bad faith and is deriving a lot of unfair profit from Complainant. Whether Respondent’s intention was to sell the disputed domain name or to create a corresponding website to the disputed domain name, both acts constitute bad faith.
By holding the disputed domain name, Respondent would have intended for consumers to believe that the disputed domain name belonged to Complainant or was affiliated with Complainant in some way. Consumers would have believed this affiliation existed between the disputed domain name and Complainant since the names are identical, and by definition alone, this intended deception by Respondent constitutes bad faith.
In addition, bad faith can also be defined as a means of interrupting or diminishing the reputation of another. Thus, if it is assumed that Respondent registered the disputed domain name hoping that it would interfere with the business of Complainant, or hoping that Complainant would not want to run the risk of another party having a domain name identical to its own name, thereby offering to pay to Respondent in exchange for ownership of the disputed domain name, then Respondent must be regarded as having used and registered the disputed domain name in bad faith as described under the Policy.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not file a formal Response with the Center. Respondent sent an email communication to the Center, attaching several documents (namely distributor agreements, invoices and email communications) alleging that such documents showed the falsehood of the manifestations made by Luis Ariza of CTA S.L., and that based on such documents Respondent can distribute Complainant’s products and use the latter’s image and brand.
6. Discussion and Findings
A. Procedural Issues
Even though Respondent’s email communication of April 12, 2012 was filed with the Center within the timeframe set forth in the Rules to submit a response, it cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). Notwithstanding that, upon receipt of Respondent’s email communication, the Center reminded Respondent that the deadline to submit a response was April 15, 2012. Respondent disregarded such communication from the Center and chose not to make any further filing. Thus this Panel has decided not to take into account such email communication from Respondent3.
The Center received a supplemental filing from Complainant on April 30, 2012. The Rules do not explicitly provide for unsolicited supplemental filings. Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition” and empowers the panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Since such supplemental filing from Complainant addresses Respondent’s email communication of April 12, 2012, and given the conclusion reached under the precedent paragraph, this Panel has decided not to take into account such supplemental filing.
This Panel notes, however, that these submissions contain claims and counter claims many of which would appear to go beyond the limited scope of this Panel’s authority under the Policy to assess the merits and weight seemingly conflicting claims and matters of evidence which may be more appropriate for litigation in fora which include mechanisms for cross examination and multiple rounds of pleading and evidence.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith4.
In examining the Complaint and its annexes, this Panel considers that Complainant could have put forward stronger arguments and more evidence. As past UDRP panel decisions have demonstrated, it is not enough to merely rely on the strength of a company or the international recognition of a trademark5.
B. Substantive Elements of the Policy
(i) Identical or Confusingly Similar
It is undisputed that Complainant has rights over several trademarks that incorporate the word “samsung”, being such word the dominant element in the registered trademarks supplied by Complainant. It is also undisputed that Complainant and Complainant’s products are well-known internationally.
The disputed domain name entirely incorporates the SAMSUNG mark after the term “centralitas”, which is descriptive of a product that Complainant produces and sells. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion6.
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s marks.
(ii) Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that it has never authorized Respondent to use or register its trademarks nor to register a domain name incorporating Complainant’s trademarks, and that Respondent is not affiliated with Complainant in any way at the present time.
Complainant accepts that Respondent was a distributor pursuant to a certain Samsung Telecoms Distribution Agreement dated June 1, 2009 (the “Agreement”) between Respondent and CTA, S.L., Complainant’s authorized wholesaler7. The Agreement simply sets forth the terms and conditions of purchase of Samsung Telecoms products by Respondent through December 31, 2009. The Agreement is silent on the use of Complainant’s trademarks by Respondent. Complainant asserts that the Agreement was not renewed and expired precisely on December 31, 2009. Complainant produced a letter dated January 19, 2010, whereby CTA, S.L. informed Respondent on the expiration of the Agreement, that there was no intention to renew it and asking Respondent to no longer show themselves as official distributors of Samsung.
Contrary to Complainant’s assertion, the disputed domain name was created on November 23, 2009, that is, almost 2 months before the date of the letter Complainant asserts CTA, S.L. sent to Respondent. In any event, almost 2 years lapsed after registration of the disputed domain name before Complainant itself had a cease and desist letter sent to Respondent on November 17, 2011.
Complainant contends that Respondent is using the SAMSUNG trademark on the website associated to the disputed domain name and hence the general public may have a false impression that Respondent is connected to Complainant or to the SAMSUNG trademark.
Complainant produced a printout of the website associated to the disputed domain name which shows the word “samsung” along with a design, preceded by the word “centralitas”, and a few paragraphs advertising and promoting Samsung’s Officeserv series PBXs.
Paragraph 4(c)(i) of the Policy clearly establishes that Respondent might have a right or legitimate interest where prior to any notice of the dispute Respondent’s use of the disputed domain name corresponds to a bona fide offering of goods or services.
This Panel is aware of relevant prior UDRP panel decisions dealing with the issue of whether a reseller of trademarked goods may have rights or legitimate interests in a domain name that contains such trademark, and of the different views reflected in such decisions8. Since long ago several UDRP panel decisions have considered that an unofficial or unauthorized reseller or distributor of trademarked goods may have a right or legitimate interest in using another’s trademark in a domain name under paragraph 4(c)(i) of the Policy9 provided certain criteria are met. It seems to this Panel that the critical test under such paragraph 4(c)(i) is whether the offering of goods and services may be deemed bona fide.
The oft-cited Oki Data standard deals with such bona fide test and has been applied in several UDRP panel decisions involving unofficial or unauthorized resellers10. In brief, said Oki Data standard calls for (i) the Respondent to actually be offering the goods or services at issue; (ii) the Respondent to use the website to sell only the trademarked goods; (iii) the website to accurately disclose Respondent’s relationship with the trademark owner, that is, not falsely suggesting that it is the trademark owner or that the website is the official site, if, in fact, it is only one of many sales agents; and (iv) the Respondent not trying to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The evidence in the file shows that prior to having any notice of the dispute Respondent’s use of the disputed domain name corresponded to an offering of SAMSUNG products. The word “centralitas” added to the word Samsung in the disputed domain name apparently corresponds to the type of products Respondent appears to be offering through the disputed domain name, thus on its face the disputed domain name reflects the business conducted by Respondent under the disputed domain name. Complainant made no argument (and there is no evidence in the file) that suggests that Respondent might be using the website associated to the disputed domain name to promote and sell non-original SAMSUNG products or others’ products. Likewise, the Complaint makes no reference as to whether Respondent might be trying to “corner the market” in all relevant domain names and there is no evidence in the file that suggests that Respondent had engaged in such a pattern of conduct11.
In the printout of the website associated to the disputed domain name supplied by Complainant the name of Respondent as Grupo Inova (along with a design) is prominently displayed at the top of the page; at the bottom of the page the name Grupo Inova also appears along with full contact information (i.e. street address, phone and fax numbers, email address); the word “centralitas” also appears prominently followed below by the word “samsung” and a design and a few paragraphs advertising and promoting Samsung’s Officeserv series PBXs.
This Panel sees nothing on such printout that suggests that Respondent is (or is misleading claiming to be) Complainant’s authorized distributor or reseller or that such website is Complainant’s official site or that Respondent owns the SAMSUNG mark. Likewise, nothing in the file suggests to this Panel that Respondents’ website resembles Complainant’s official site. Complainant’s contention that the general public may have a false impression that Respondent is connected to Complainant because Respondent is using the SAMSUNG trademark on the website associated to the disputed domain name has given this Panel pause for thought, especially in view of the widely-recognizable nature of the SAMSUNG mark. However, this Panel further notes that Complainant’s contention in this regard is not supported by any evidence and even if it had been it would still need to be considered in light of the circumstances overall. The Oki Data standard is not meant to lay down an inflexible test, and the effect of otherwise of respondent claims or disclaimers on the website, or of any resultant risk of misrepresentation or customer confusion, need to be considered in the particular context and evidence of record. From the evidence that is in the file in this case it seems to this Panel that Respondent is displaying the SAMSUNG mark precisely to offer products bearing such trademark and not to hold itself out as if it were officially connected to Complainant or to otherwise engage in bait and switch activities with other non-SAMSUNG branded products. Thus this Panel does not on balance find that Internet users are more likely than not to believe they are dealing with an authorized agent of Complainant or that such website corresponds to Complainant’s official site, or that Internet users are in fact being misleadingly offered goods competitive with those of Complainant via the disputed domain name.
This Panel concurs with other learned panelists that it would be highly advisable for Respondent to clearly include in the website linked to the disputed domain name an express notice disassociating Respondent from Complainant and indicating that the SAMSUNG trademark belongs to Complainant. In this particular case, however, this Panel considers that the lack of such explicit notice (not even asserted by Complainant) does not in these particular circumstances clearly alone serve to bring down a bona fide use finding12.
This Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names (i.e. cybersquatting), but not as a means of litigating all disputes involving domain names. Particularly in cases such as the present where there are indicia of record that Respondent may have rights or legitimate interests in a domain name based on established bona fide use principles for purposes of the Policy, where there would appear to be a history of contractual dealings between Respondent and an authorized wholesaler of Complainant, and where there would appear to be various contested matters of fact which would appear to this Panel to go beyond the limited scope of the Policy, trademark owners may instead wish to consider their options via the courts under national law. In any event, administrative Panel determinations made under the Policy in no way limit such options.
In the aggregate, this Panel considers that Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name. For purposes of the Policy, the opposite may in fact be concluded from the documentation that is on the present record as on its face it seems to this Panel that Respondent is conducting a bona fide offering of products as per Paragraph 4(c)(i) of the Policy. Therefore, this Panel finds that Complainant failed under paragraph 4(a)(ii) of the Policy.
Given the aforesaid, this Panel considers unnecessary to discuss whether Complainant might have succeeded under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Dated: May 10, 2012
1 Complainant produced copies of 10 nominative trademark registrations. Except for the Cayman Islands trademark registration for SAMSUNG alone, all such registrations are for SAMSUNG along with other word(s).
2 Complainant regards Respondent and Gestion Integral Inovages as the same entity based on the fact that the website of Grupo Inova (printout attached to the Complaint) shows that Respondent is a company born from the merger of Gestion Integral Inovages and Inova Servicios in 2007.
4 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
5 In The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661, it was established: “The [p]anel suspects [...] that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”. See also GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2000 0419.
7 See footnote 2 above. Further, such Complainant’s authorized wholesaler appears in the documents under several names (i.e. CTA, S.L., CTA Telecomunicaciones, S.L., and Centralitas Telefónicas Andaluzas, S.L.) but in all of them the same CIF number is shown, thus this Panel assumes it is the same entity.
8 See item 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at www.wipo.int/amc/en/domains/search/overview2.0/index.html.
10 See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Le Creuset SA v. Vineyards Direct Limited, WIPO Case No. D2004-0551; Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.
11 In parallel to the present case this Panel has been entrusted with WIPO Case No. D2012-0570 involving Complainant and the domain name “samsungcentralitas.com”. In the present case the Complaint makes no cross-reference at all to such other case. This Panel reiterates that it is not this Panel’s role to elaborate arguments on behalf of the parties, nor to look for evidence not produced by the parties.
12 See Le Creuset SA v. Vineyards Direct Limited, WIPO Case No. D2004-0551: “While the Panel believes that the Respondent could have gone further, by expressly stating that it was not connected with the Complainant, the Panel does not believe that there is any misrepresentation in this case sufficient to undermine a finding of bona fide use”.