WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd. v. Xiomi Chi
Case No. D2020-0983
1. The Parties
The Complainant is Samsung Electronics Co., Ltd., Republic of Korea, represented by Estela Mariel De Luca, Argentina.
The Respondent is Xiomi Chi, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <samsungcostarica.com> 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 21, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 30, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 26, 2020. 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 an internationally known 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 such as cellular phones, computers and printers, operating under the mark SAMSUNG.
The Complainant owns numerous trademark registrations for SAMSUNG in various formats worldwide, including Costa Rica Registrations Nos. 84058 (registered on October 4, 1993, in class 9); 133631 (registered on May 17, 2002, in class 9) (collectively the “SAMSUNG mark”). The Complainant and its subsidiaries further owns several domain names that incorporate the mark SAMSUNG, which are linked to their corporate websites in connection with their products and services, including <samsung.com> (registered in 1994), <samsung.com.ar> (registered in 1996), <samsung.cl> (registered in 2003), <samsung.com.mx> (registered in 1997), and <samsung.uy> (registered in 2015).
The disputed domain name was registered on March 6, 2013 and it is currently inactive resolving to a page with an Internet browser error message.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
SAMSUNG is a well-known trademark throughout the world, as it has been recognized by several prior decisions under the Policy. The disputed domain name reproduces this mark adding the geographical country name “Costa Rica”, which generates the appearance that the disputed domain name is owned by the Complainant, as the Complainant has a business location and operates in Costa Rica (and in nearly every country of the world). Further, the generic Top-Level Domain (“gTLD”) “.com” is a standard technical registration requirement that should be disregarded in the analysis of the first element of the Policy.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent, who is not a licensee of the Complainant and has not otherwise been authorized to use the Complainant’s trademark.
The disputed domain name was registered and is being used in bad faith. This is a case of misappropriation of the Complainant’s well-known trademark, with the intention to take advantage of its reputation. The disputed domain name has been registered in bad faith, trying to lure Internet users giving the impression that the disputed domain name is associated with the Complainant and its well-known trademark, preventing the Complainant from reflecting its trademark in a corresponding domain name and affecting its business. The passive holding of the disputed domain name clearly infringes the Complainant’s rights. Further, the Respondent has tried to hide his identity to avoid any claim, which supports the allegation of bad faith.
The Complainant has cited various decisions under the Policy that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant indisputably has rights in the registered trademark SAMSUNG, incorporated in the disputed domain name in its entirety followed by the term “Costa Rica”, which do not prevent a finding of confusing similarity with the mark. The mark SAMSUNG is recognizable in the disputed domain name, and the gTLD “.com” is a mere technical requirement. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the complainant bears the overall burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the respondent’s absence of such rights or legitimate interests.
The Complainant’s assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing paragraph 4(c) of the Policy circumstances, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
The disputed domain name incorporates the Complainant’s trademark SAMSUNG, followed by the geographical country name “Costa Rica”, one of the many countries where the Complainant operates and has a business location. The Panel further notes the high presence over the Internet, continued extensive use and well-known character of the trademark SAMSUNG worldwide, including in Costa Rica and the Russian Federation where the Respondent is located according to the Registrar’s verification. Therefore, the Panel considers that there is a risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant or to one of the Complainant’s divisions or subsidiaries (probably its Costa Rica subsidiary). See section 2.5.1, WIPO Overview 3.0.
It is further remarkable that, although the disputed domain name was registered seven years ago (in 2013), it is inactive. There is no evidence of use of, or preparations to use, the disputed domain name in connection to any bona fide offering of goods or services or any legitimate noncommercial or fair use. The Panel has consulted the Internet archive Wayback Machine and has found only one screen capture related to the disputed domain name dated August 4, 2018 showing a blank page.
The Panel further notes that, according to the Registrar’s verification, the Respondent is located in the Russian Federation, showing no connection to the country included in the disputed domain name (Costa Rica). Furthermore, the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all the cumulative facts and circumstances indicate the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark SAMSUNG in its entirety, adding a geographical term (“Costa Rica”) that corresponds to a country where the Complainant operates and has a business location, intrinsically creating a likelihood of confusion and affiliation; (ii) the Complainant’s trademark SAMSUNG is worldwide well known and extensively used, including in Costar Rica and in the Russian Federation (where the Respondent is located according to the Registrar’s verification); (iii) the disputed domain name is inactive and, apparently, it has not been used since its registration seven years ago (in 2013); and (iv) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered, targeting the mark SAMSUNG with the intention of obtaining a free ride on the established reputation of the Complainant, as well as to intentionally attract Internet users to believe that there is a connection between the disputed domain name and the Complainant, which constitutes bad faith.
All of the above-mentioned circumstances leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 <samsungcostarica.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: June 5, 2020