WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd. v. Kunal Gangar
Case No. D2013-0578
1. The Parties
The Complainant is Samsung Electronics Co., Ltd. of Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Kunal Gangar of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <samsunghub.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2013. The Response was filed with the Center on April 27, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 3, 2013. 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.
On May 16, 2013, the Complainant filed with the Center an unsolicited supplemental filing, described as a “Counter-Statement”. The admissibility of this statement is discussed below.
4. Factual Background
Established in the 1930s in Korea, the Complainant is an internationally famous organization in the business of manufacturing and selling a variety of goods ranging from consumer electronics such as refrigerators, TVs and videos, to electronic gadgets such as cellular phones, computers and printers. The Complainant is also a world leader in semiconductor technology. By 2010, the Samsung Group had sales of USD 220. 1 billion and net income of USD 21. 2 billion, and the Complainant itself had sales of KRW 165. 0 trillion (approximately USD156 billion) and net income of KRW 16. 2 trillion (approximately USD 15 billion). The Complainant has over 179 offices in 61 countries worldwide.
The Complainant is the owner of a number of trademarks consisting of the word “SAMSUNG” (the SAMSUNG Mark), in jurisdictions across the world, including the United States, where the SAMSUNG Mark was registered in 1981, and the United Kingdom of Great Britain and Northern Ireland, where the SAMSUNG Mark was registered in 1993. Consumer studies indicate that the Samsung brand is one of the most well-known brands worldwide.
The Domain Name <samsunghub.com> was registered on March 21, 2006. The Domain Name resolves to a website (the “Respondent’s Website”), located at “www.sammyhub.com’’ which reports on the activities of the Complainant, with particular emphasis on the Complainant’s new products. The Respondent’s Website was located at “www.samsunghub.com” from March 21, 2006 to July 10, 2011 after which it was re-directed to “www.sammyhub.com”. The Respondent’s Website does not reproduce the SAMSUNG Mark, except in the context of its news articles nor does it represent that it is connected to the Complainant, but does contain some advertising maintained by Google Ads.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SAMSUNG Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SAMSUNG Mark. It owns trademark registrations for the SAMSUNG Mark in various jurisdictions around the world.
The Domain Name consists of the SAMSUNG Mark and the word “hub” which can refer to the center of an activity. The Domain Name is confusingly similar to the SAMSUNG Mark as the dominant part of the Domain Name is the Complainant’s SAMSUNG Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the SAMSUNG Mark or to seek the registration of any domain name incorporating the SAMSUNG Mark.
The Domain Name was registered and is being used in bad faith. The Domain Name is currently unused, redirecting to the Respondent’s Website at “www.sammyhub.com”. The Domain Name was registered with full knowledge of the SAMSUNG Mark. The Respondent’s Website contains advertisements by Google AdSense so it can be assumed that the Respondent is making revenue from each user who visits the website. Furthermore, it appears that the Respondent is using the Domain Name to disrupt and interfere with the Complainant’s business. The Respondent’s Website has contained advertisements for companies that retail products that are identical to the Complainant’s products. The Respondent has registered and used the Domain Name in bad faith while being aware of the Complainant’s rights and using the Domain Name for financial gain.
On May 16, 2013, the Complainant filed with the Center an unsolicited supplemental filing, described as a “Counter-Statement”. This filing was filed late, after the Panel had prepared its draft decision in this matter. Furthermore, it contained no explanation for why it was filed late, nor did it contain any information that was unavailable to the Complainant at the time it filed the original Complainant. While such filings are irregular and not provided under the Policy, the Panel has exercised its discretion to review the Counter-Statement. Given its finding in this matter, the Panel did not consider it necessary to provide the Respondent an opportunity to file a reply. The Counter-Statement merely repeats the Complainant’s earlier submission that because the Respondent’s Website contains advertisements by Google AdSense, the Respondent earns revenue from each user who visits the Respondent’s Website and that for that reason the Respondent is using the Domain Name in bad faith.
The Domain Name was registered on March 21, 2006 and has been operating continuously since then. The Respondent’s Website, initially located at the Domain Name, was created to report on the latest happenings around Samsung products and services. In other words, the Respondent’s Website is a fan site. Over the years, the Respondent’s Website has reported on number of Samsung products and has built a solid trust amongst the readers who seek to read about Samsung and its products. It is one of the most widely read websites when it comes to Samsung related news, and readers have a clear idea that it is a fan site and not officially endorsed by the Complainant.
The Complainant claims that the mere fact that the Domain Name consists of the SAMSUNG Mark is enough to cause confusion as to the origin of the Domain Name and possible affiliations between the Respondent and the Complainant. However, the Respondent’s Website accurately discloses the fact that the Respondent is not affiliated with the Complainant in any way. The Respondent has not in any way diverted consumers or tarnished the SAMSUNG Mark.
The Complainant alleges that the Domain Name does not have a corresponding website and the Respondent never had an intention of making a corresponding website under the Domain Name. However, the Respondent maintained a website corresponding to the Domain Name from March 21, 2006 to July 10, 2011 before redirecting the website to the domain name <sammyhub.com>. Hence, the Complainant’s contention that the Respondent never had any intention of making a corresponding website under the Domain Name but registered the Domain Name primarily to sell, rent or otherwise transfer the registration to the Complainant or to whomever showed the greatest desire to buy the Domain Name, is false.
In August 2011, one of the Complainant’s subsidiaries, Samsung Electronics UK launched an Android recommendation app named “Samsung Hub”. As a pre-emptive measure, from July 11, 2011, the Respondent commenced using <sammyhub.com> as the domain name for the Respondent’s Website and redirected users seeking the Respondent’s Website from the Domain Name to the new domain name <sammyhub.com>. The Respondent used the redirect facility for the purpose of search engine optimization. The reason for this approach is that the Respondent retains its search engine rankings that it would otherwise lose if it did not re-direct the site.
The Complainant claims the Respondent’s Website has been advertising other companies through the services of Google AdSense. The Respondent uses the Google AdSense program which works by displaying targeted ads using Google’s proprietary technology, over which the Respondent has limited control. The ads shown on the Respondent’s Website are based on the keywords AdSense advertisers bid on with Google. The website administrator has no contact with the advertisers advertising via the Google AdSense program.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SAMSUNG Mark, having registrations for the SAMSUNG Mark as a trademark in the United States, the United Kingdom and China. Under the Policy as written, it is not necessary for the Complainant to provide proof that it owns a mark registration in the location of the Respondent.
The Domain Name consists of the SAMSUNG Mark and the word “hub”. The addition of the word “hub” suggests that the related website is a central location somehow related to the Complainant. As noted in LEGO Juris A/S v Private, Registration/Dohe Dot, WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive is likely to produce confusion since it creates an association with the Complainant. As such the addition of the word “hub” does not distinguish the Domain Name from the SAMSUNG Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SAMSUNG Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SAMSUNG Mark or a mark similar to the SAMSUNG Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
The Respondent claims that he has used the Domain Name for the purpose of developing and launching a fan site titled “Samsung Hub”. The Respondent has put on extensive evidence of the use of the Domain Name as a fan-site from 2006 to 2011. The Respondent continues to operate a fan site however it is now located at “www.sammyhub.com” and the Domain Name simply redirects towards it. As such the Domain Name is now only used for re-direction purposes.
Given the Panel’s finding under the bad faith element it has not been necessary to reach a final conclusion under this ground. To some extent a finding of whether the Respondent had rights and legitimate interests in the Domain Name when the Domain Name was used for the Respondent’s Website is relevant to and intertwined with a finding of bad faith and is more appropriately discussed below
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003. If any required element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.D2000-0270 (denying transfer of the disputed domain name because the complainant failed to prove bad faith registration).
The Domain Name has been registered for almost 7 years. In certain circumstances, “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration” AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011. There was no explanation for the Complainant’s delay in filing a complaint about the Domain Name. It is notable that the Complainant in 2011 launched Android app entitled “Samsung Hub”. Although the Panel’s decision in this case that the Complainant has failed to establish bad faith registration and use does not rest simply on the passage of time between registration of the Domain Name and the Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore, especially considering the Respondent’s extensive use of the Domain Name in that period.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name. There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors. The Domain Name has not been passively held, rather it was highly active from the day it was first registered until 2011 after which it was used to redirect to “www.sammyhub.com”.
There are no circumstances that indicate that the the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. There is no evidence that the Respondent has ever attempted to sell the Domain Name. Rather, the Domain Name has always been used for an active fan site with articles about the Complainant being published on a regular basis since 2006.
The Panel finds on the balance of probabilities that the Respondent did not register the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Domain Name was first registered in 2006. From that day forward the Respondent has maintained an active website (the Respondent’s Website) which reported and commented on the Complainant’s activities. From 2006 to 2011 the Respondent’s Website was operated from the Domain Name, while from 2011 on the Respondent’s Website was operated from “www.sammyhub”. The Panel is persuaded by the Respondent’s explanation for the redirection of the Respondent’s Website (to avoid confusion with the Complainant’s Samsung Hub app) and the reason to maintain the Domain Name (to maintain search engine optimization) and does not view either action as evidencing bad faith.
The Panel is not persuaded that the Respondent’s use of the Domain Name as a fan site is improper or that the Respondent lacked rights or legitimate interests in the Domain Name, at least from 2006 to the 2011 redirection. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), notes
“The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject).”
Other than the placement of Google advertisements on the website, the Respondent’s Website appears to be noncommercial: the Respondent is not offering any goods or services on the Respondent’s Website. The Respondent does not attempt to pass it off as the Complainant in any way; in particular it does not reproduce the Complainant’s getup or make any claim to be associated with the Complainant. When the Respondent’s Website was located at the Domain Name, it contained on the front page a disclaimer disassociating itself from the Complainant, which is now located on the “About” page.
The Panel acknowledges that the Respondent’s Website contains advertisements provided by Google AdSense, for which, depending on whether visitors to the site click on them, the Respondent may receive revenue. However, the mere fact that the Respondent’s Website involves limited commercial activity in the form of the presence of Google advertisements, does not automatically lead to the finding that the Respondent registered and is using the Domain Name in bad faith pursuant to 4(b)(iv) of the Policy. The Panel finds that this is a case in which the Google advertisements are of an ancillary or limited nature and cannot be used to imply that the Respondent registered and is using the Domain Name in bad faith, see Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001 and Nintendo of America Inc. v. Alex Jones, WIPO Case No. D2000-0998. In particular, to succeed under 4(b)(iv) the Complainant must show that the Respondent “intended to create a likelihood of confusion with the Complainant’s mark”. There is little persuasive evidence to support a contention that the Respondent registered the Domain Name to cause confusion with the Complainant for financial gain, rather it appears likely that the Respondent registered the Domain Name to accurately describe the service it was to offer, namely a “hub” for all news about Samsung.
The Complainant attempts to attribute bad faith to the Respondent by reason of the fact that the advertisements on the Respondent’s Website refer to other companies, which may or may not be competitors of the Complainant. There is no evidence in the record that casts doubt on the Respondent’s claim that the advertising links are sent automatically by a third-party (Google) advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute. In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers the existence of any particular advertisement insufficient to prove the Respondent’s intent to mislead Internet users by the registration and use of the Domain Name itself.
The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. The Respondent has provided a plausible reason for registering the Domain Name and considerable evidence in support of its factual claims. The Respondent’s conduct in holding the Domain Name for 7 years, operating an essentially noncommercial fan site without attempting to sell the Domain Name provides further support for its assertion that it did not register and does not use the Domain Name in bad faith.
The Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement, or question the assertions and evidence of the Respondent’s conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction.
For the foregoing reasons, the Complaint is denied.
Date: May 18, 2013