WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd. v. Reactivation Period / Whoisguard, Inc.
Case No. D2014-1615
1. The Parties
The Complainant is Samsung Electronics Co., Ltd. of Yeongtong-gu Suwon-si Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Reactivation Period of Bellevue, Washington, United States of America (“USA”) / Whoisguard, Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <samsunggalaxygear.org> is registered with eNom ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2014, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 10, 2014.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 4, 2014.
The Center received several informal communications from Raymond Janssen on October 13, 2014, October 14, 2014, November 4, 2014 and November 5, 2014, respectively.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 6, 2014. 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 Complainant, Samsung Electronics Company Limited (“Samsung”), is a world famous company in the business of manufacturing and selling a variety of goods ranging from consumer electronics, such as refrigerators, TVs and videos, to electronic gadgets, namely cellular phones, computers and printers. The Complainant is the flagship affiliate of the Samsung Group and has been the world’s largest information technology company. The Complainant is also known as a multinational leader in the field of semi-conductor technology. This can be seen from Annex C to the Complaint which is a copy of the Samsung Group’s timeline and its history from the website “www.samsung.com”.
Since being established in 1930, the Samsung Group has become one of the world’s most financially and stable and influential companies. In 2011 the Samsung Group had sales of USD 247.5 billion and net income of USD 18.3 billion. Attached to the Complaint at Annex E is a copy of the Samsung profile for 2013. In 2013 the Complainant’s net sales had increased to USD 228.7 billion. Annexed at Annex F to the Complaint is a copy of the Samsung Electronics 2013 Annual Report.
The Complainant submits that such figures clearly show the business capabilities, corporate valueworldwide reputation of the Complainant. Consequently consumers have come to recognise the immense growth and success of the Complainant and its affiliated services and products. It has over one hundred and seventy nine offices in sixty one different countries and has been recognised as one of the fastest growing global brands. The Samsung brand, in accordance with Interbrand’s ranking, was ranked eighth in 2013, ninth in 2012, seventeenth in 2011, nineteenth in 2010, nineteenth in 2009 and twenty first in 2008.
The Complainant owns numerous trademarks and domain names in relation to the corporate name “Samsung” which means three stars. The mark SAMSUNG is created and adopted to distinguish its business products and trade identity from others and is unique and distinctive to customers. The Complainant has acquired rights in the mark by registering its name in numerous countries, including France, Spain, Russian Federation and the USA. At Annex H to the Complaint are copies of worldwide trademark registrations for the mark "SAMSUNG".
“Samsung Galaxy” is a series of android-powered mobile computing devices including smartphone, tablet PC, smartwatch, camera, media player etc. designed, manufactured and marketed by the Complainant which will achieve great commercial success in the global communication devices market. Annexed to the Complaint at Annex I are copies of the search results for "Samsung Galaxy" in Wikipedia. It could be seen from Annex I that the “Samsung Galaxy GT-17500” was the first smartphone launched by the Complainant in June 2009 with the name of “Galaxy” further products, as set out in the Complaint followed.
As a main brand name, the Complainant has acquired rights in the mark SAMSUNG GALAXY by registering the mark in numerous countries including the USA, China, Saudi Arabia, Turkey, Republic Korea, Russian Federation and Japan. Annexed as Annex J-1 are copies of worldwide trademark registrations for "SAMSUNG GALAXY" and "SAMSUNG GALAXY" basemarks. In addition, the Complainant has acquired global rights for the GALAXY mark in Austria, Benelux, Belarus, Switzerland, Egypt, France, Hungary, Italy, Kazakhstan, Morocco, Monaco, Moldova, Poland, Portugal, Romania and Ukraine through international trademark registration number 624861, in class 9, a copy of which is annexed as Annex J-2 to the Complaint.
“Samsung Galaxy Gear” is a smartwatch produced by the Complainant, serving as a companion for all Samsung Galaxy smartphones and tablets. The development of “Samsung Galaxy Gear” came in the midst of a push towards the growing smartwatch market and its launch has become an important issue in the smart mobile communication industry due to the worldwide success of “Samsung Galaxy” product lines. The Complainant introduced a smartwatch named as the “Samsung Galaxy Gear” on September 4, 2013 during a “Samsung unpacked event” in Berlin, just after the Respondent registered the disputed domain name “<samsunggalaxygear.org> in August 2013. The Complainant acquired the trademark registration for SAMSUNG GALAXY GEAR in class 9 in Republic of Korea, Australia and Japan. At Annex M to the Complaint are copies of trademark registrations for "SAMSUNG GALAXY GEAR". In addition, the Complainant acquired the trademark registrations for SAMSUNG GEAR in Republic of Korea and in the European Union, which were registered on September 11, 2014 and November 13, 2013. Annexed at Annex N-1 are copies of trademark registrations for the mark "SAMSUNG GEAR". Further, an application for SAMSUNG GEAR was filed by the Complainant in the USA and published on April 29, 2014. The Complainant also acquired trademark registrations for the marks containing SAMSUNG GEAR covering goods in class 9 in the European Union. Copies of trademark registrations for "SAMSUNG GEAR" in Europe are annexed at Annex N-3 to the Complaint.
In the absence of a Response, the Panel finds the evidence adduced by the Complainant to be true.
5. Parties Contentions
The Complainant contends:
1. That it has trademark rights in SAMSUNG, SAMSUNG GALAXY and SAMSUNG GALAXY GEAR;
2. The disputed domain name <samsunggalaxygear.org> is identical or virtually the same as the mark SAMSUNG, SAMSUNG GALAXY and SAMSUNG GALAXY GEAR in which the Complainant has rights.
3. The Respondent has no rights or legitimate interests in the disputed domain name containing a mark identical to the Complainant’s marks.
4. The domain name was registered and is being used in bad faith because it incorporates the Complainant’s world famous SAMSUNG, SAMSUNG GALAXY and SAMSUNG GALAXY GEAR marks. The Respondent must have known of the Complainant’s trademark rights.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in the marks SAMSUNG, SAMSUNG GALAXY and SAMSUNG GALAXY GEAR as set out in the Complaint.
In these circumstances the Panel finds that the disputed domain name <www.samsunggalaxygear.org> is identical or confusingly similar to the marks SAMSUNG, SAMSUNG GALAXY and SAMSUNG GALAXY GEAR.
B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name containing a mark identical or similar to the Complainant’s marks. There is no evidence that the Respondent has been authorised to use the marks SAMSUNG, SAMSUNG GALAXY or SAMSUNG GALAXY GEAR.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
C. Registered and Used in Bad Faith
This is a case in which the Complainant’s mark is undoubtedly prominent and famous which identifies the goods of the Complainant. In these circumstances, the Respondent must have been aware of the Complainant’s famous marks prior to registering the disputed domain name. In addition, the disputed domain name was registered in August 2013, at the time when the Complainant’s smartwatch called “Galaxy Gear” received worldwide attention before its launching.
The Complainant submits that the Respondent’s registration and use of the disputed domain name is to obtain a “free ride” on the established reputation of the Complainant and to intentionally attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. This use and registration of the disputed domain name misleads Internet users to believe that there is a connection between the disputed domain name and the Complainant. This is sufficient to constitute bad faith.
In addition, when the domain name is accessed, a parking site is shown which displays the message: “This website cannot be found in Internet Explorer”. This is written in Korean on the top left corner of the webpage. The fact that the website is not actually operated implies that the Respondent registered the disputed domain name only for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to the Complainant's competitors for commercial gain.
The Respondent’s registration of the disputed domain name is to attract Internet users by creating a high likelihood of confusion with the Complainant’s marks SAMSUNG, SAMSUNG GALAXY or SAMSUNG GALAXY GEAR and to obtain unfair profits based upon the high quality of the Complainant’s products bearing the mark SAMSUNG. This would ultimately interfere and affect the Complainant’s business and diminish its fame or reputation.
In the Panel’s view, this demonstrates that the disputed domain name 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 disputed domain name <samsunggalaxygear.org> be transferred to the Complainant.
Clive Duncan Thorne
Date: November 14, 2014