WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Eletrônica da Amazônia Ltda. v. Domain Admin, Whois Privacy Corp.
Case No. D2018-2708
1. The Parties
The Complainant is Samsung Eletrônica da Amazônia Ltda. of Manaus, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <shoppingsamsung.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2018, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Anna Carabelli as the sole panelist in this matter on January 8, 2019. 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 is a Brazilian company belonging to the Samsung corporate group headed by Samsung Electronics Ltd (Samsung Electronics). Established in 1938 in the Republic of Korea, Samsung Electronics is one of the world’s leading electronics companies today.
Under the exclusive license (Annex 4 to the Complaint) granted by Samsung Electronics, the Complainant is authorized to import SAMSUNG electronic products (such as cell phones, tablets and computers) in the Brazilian market, and to use and sublicense various SAMSUNG registered trademarks (hereinafter also referred to as the Complainant’s Trademark) within the Brazilian territory. The above license empowers the Complainant to act in defense of the Complainant’s Trademark.
The disputed domain name, registered on October 6, 2018 in the name of Domain Admin, Whois Privacy Corp. based in the Bahamas, resolves to a website in Portuguese advertising and selling SAMSUNG smartphones and displaying the notice “SAMSUNG Authorized Reseller”. As in the Samsung Eletrônica da Amazônia Ltda. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-2034 cited in the Complaint, there is no identification of the website operator or disclaimer of affiliation with the Complainant or Samsung Electronics on the Respondent’s website. The home page of the Respondent’s website displays a Brazilian flag icon and states that the advertised products are shipped from abroad to any state of Brazil in 20-60 days.
According to the Complainant the SAMSUNG branded products displayed on the Respondent’s website are offered at prices that are lower than those of authorized reseller and this raises the question of whether they are genuine or counterfeit products.
5. Parties’ Contentions
The Complainant contends that:
1. The disputed domain name reproduces the SAMSUNG trademark in its entirety and is therefore confusingly similar. The addition of the generic term “shopping” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to avoid confusing similarity.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has no trademark registration/application for the words SAMSUNG and/or SAMSUNG SHOPPING before any Trademark Office around the world. In addition there is no evidence that the Respondent is commonly known by the disputed domain name (the WhoIs records does not even show the Respondent’s information), and has used it in connection with a bona fide offering of goods and services.
3. The disputed domain name: (i) has been registered in bad faith since the Complainant’s Trademark is world widely known and has been registered and used long before the Respondent registered the disputed domain name and (ii) is being used in bad faith to mislead the public, presenting the Respondent as an authorized SAMSUNG products reseller.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it holds a number of registered SAMSUNG trademarks.
The disputed domain name is confusingly similar to the Complainant’s Trademark, as it entirely incorporates SAMSUNG with the addition of the term “shopping”. It is a well-established principle that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The addition of the applicable Top-Level Domains (e.g., “.com”, “.site”, “.net”) is for registration purposes only, being a technical requirement of registration of a domain name, and may be disregarded for purposes of comparison under paragraph 4(a)(i) of the Policy (see WIPO Overview 3.0, section 1.11).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s Trademark.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using it to create an overall impression that the Respondent is, or is affiliate with, the Complainant. Indeed, the Respondent’s website displays the notice “SAMSUNG Authorized Reseller” which the Respondent is not since, according to the license agreement submitted as Annex 4 to the Complaint, the Complainant is the exclusive licensee of the SANSUMG trademark and sole distributor of SAMSUMG branded products in Brazil, and has no relationship with the Respondent.
The Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to Respondent to rebut the evidence (see WIPO Overwiew 3.0, section 2.1).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
SAMSUNG is a globally known trademark with a strong presence in the Brazilian market. It is not conceivable that the Respondent did not have in mind the Complainant’s Trademark when registering the disputed domain name. Indeed, the Respondent’s website offering SAMSUNG branded products and displaying the notice “SAMSUNG Authorized Reseller”, suggests that the Respondent clearly targeted the SAMSUNG mark with a website aimed at Brazilian consumers interested in smartphones.
This indicates an attempt to benefit from the reputation of the Complainant’s Trademark and to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the services offered on the Respondent’s websites. The confusion is strengthened by the improper claim to be a “SAMSUNG Authorized Reseller” and by the use of SAMSUNG trademark without any disclaimer of association with the Complainant.
All the above supports a finding of bad faith registration and use of the disputed domain name.
Accordingly the Panel finds that the Complainant has established element 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 Panel orders that the disputed domain name <shoppingsamsung.com> be transferred to the Complainant.
Date: January 22, 2019