WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd v. Alan Donohoe
Case No. DIE2015-0002
1. The Parties
The Complainant is Samsung Electronics Co., Ltd of Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Registrant is Alan Donohoe of Dublin, Ireland.
2. The Domain Name and Registrar
The disputed domain name <samsung.ie> is registered with IE Domain Registry Limited ("IEDR").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2015, via email. On March 13, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On the same day, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 20, 2015, and on March 25, 2015, by courier.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on March 30, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was April 28, 2015. The Registrant did not submit any response. Accordingly, the Center notified the Registrant's default on April 29, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on May 4, 2015. 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 world famous company, incorporated in the Republic of Korea, engaged in the business of man manufacturing and selling a variety of goods ranging from consumer electronics such as refrigerators, TVs and videos to electronic gadgets, namely mobile phones, computers and printers.
In 2011, the worldwide turnover of the Complainant's group was of the order of some USD 250 billion.
The Complainant owns numerous trade marks worldwide for SAMSUNG including Irish trade mark no. 155584 dated February 19, 1993, in classes 7, 9, 11 and 14.
The disputed domain name was registered on October 20, 2014.
As of March 13, 2015, there was a website at the disputed domain name displaying "Samsung Repair.IE" purportedly offering repairs of Samsung products. The homepage included a number of links to a website at "www.gsmsolutions.ie", connected with the Registrant, which offered for sale accessories for products of the Complainant's competitors.
5. Parties' Contentions
The following is a summary of the Complainant's contentions:
The disputed domain name is identical or virtually identical to the Complainant's world famous trade mark.
The Registrant has no rights or legitimate interests in the disputed domain name. The Complainant has never licensed the Registrant to use its trade mark.
The Registrant's use of the disputed domain name on a website offering competitor products and services is not a bona fide offering of goods or services.
Registration of the Complainant's world famous mark creates an inference of bad faith.
The disputed domain name has been registered primarily to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Registrant must have known of the Complainant's famous mark when registering the disputed domain name.
The website at the disputed domain name is intended to interfere with or disrupt the Complainant's business by directing users to a site offering competitor products and thereby intentionally to cause confusion with the Complainant's mark.
Likely confusion is compounded by the Registrant's use of the word "repair" in conjunction with the Complainant's mark so that Internet users would think that they have reached the site of the Complainant or a business associated with the Complainant.
The Registrant has therefore registered and used the disputed domain name in bad faith.
The Registrant did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The first condition in paragraph 1.1 of the IEDR Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the IEDR Policy, "protected identifiers" include "trade and service marks protected in the island of Ireland". The Complainant's Irish registered trade mark therefore constitutes a "protected identifier" for the purpose of the IEDR Policy.
Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (ccTLD) suffix ".ie", the disputed domain name is identical to a protected identifier in which the Complainant has rights.
B. Rights in Law or Legitimate Interests
The second condition in paragraph 1.1 of the IEDR Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.
Paragraph 3.1 of the IEDR Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests including, in paragraph 3.1.1, where the Registrant can demonstrate that, before being put on notice of the Complainant's interest in the disputed domain name, it has made demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services, or operation of a business.
For reasons explained, below, the Registrant's offering cannot be considered to be in "good faith".
Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights in law or legitimate interests and there is no rebuttal by the Registrant.
The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name and that the second condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.
C. Registered or Used in Bad Faith
In the Panel's view, paragraph 2.1.4 of the IEDR Policy applies. By using the disputed domain name, comprising the Complainant's world-famous and distinctive trade mark, in connection with a website purportedly offering repair services for the Complainant's products, but whose homepage includes a number of links to another website controlled by the Registrant offering for sale products of the Complainant's competitors, the Registrant has intentionally attempted to attract Internet users to its website for commercial gain by creating confusion with the Complainant's "protected identifier".
The Panel concludes from the foregoing that the Registrant has used the disputed domain name in bad faith and that the third condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <samsung.ie> be transferred to the Complainant.
Dated: May 21, 2015