WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Samsung Electronics Co., Ltd. v. Alan Donohoe

Case No. DIE2015-0007

1. The Parties

The Complainant is Samsung Electronics Co., Ltd. of Gyeonggi-do, Republic of Korea, represented by Youme Patent & Law Firm, Republic of Korea.

The Respondent is Alan Donohoe of Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <samsungrepair.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 December 22, 2015, via email. On December 22, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On January 4, 2016, IEDR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 11, 2016.

The Center verified that the 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 Respondent of the Complaint, and the proceeding commenced on January 11, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was February 8, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 9, 2016.

The Center appointed James Bridgeman as the sole panelist in this matter on February 12, 2016. 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 engaged in the manufacture and sale of electronic products and the provision of technology services and is the owner of Irish Trade Mark SAMSUNG design, registration number, 155584 for which the application was made on February 19, 1993.

The Complainant is also the owner of the following Community Trade Marks which are protected in both jurisdictions on the island of Ireland:

- CTM registration number CTM 8429731, SAMSUNG design, registered on January 27, 2010 for goods in international class 2;

- CTM registration number 1877901, SAMSUNG, registered on May 23, 2002 for goods and services in international classes 7, 9, 11, 14, 37, 42;

- CTM registration number 506881, SAMSUNG design, registered on February 25, 2000 for goods and services in international classes 7, 9, 11, 14, 37, 38, 42.

There is no information available about the Respondent except for that provided in the Complaint and the Registrar’s WhoIs.

The disputed domain name was registered on May 15, 2012.

The disputed domain name resolves to an active website at “www.samsungrepair.ie” offering repair services for the Complainant’s products and competing products, and which in turn has links to two other active websites at “www.gsmsolutions.ie” and “www.allcom.ie” which also offer goods and services from competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has rights in the SAMSUNG trade mark, which are protectable on the island of Ireland, through the above-listed trademark registrations and at common law because of the worldwide reputation of the Complainant as the source SAMSUNG branded electronic devices and technology services. The Complainant asserts that it carries on a worldwide business with more than 179 offices in 61 different countries and has annual sales of USD 247.5 billion.

The Complainant alleges that the disputed domain name <samsungrepair.ie>, which consists of the Complainant’s SAMSUNG mark in its entirety to which the common term “repair” is appended together with the “.ie” suffix, is identical or virtually identical to the Complainant’s world-renowned SAMSUNG mark. The Complainant argues that SAMSUNG mark is the only distinctive element of the disputed domain name, that the “repair” element lacks any distinctiveness and that the “.ie” suffix is merely a technical addition with no legal significance for the purposes of comparison under the IEDR Policy. Citing: Volkswagen AG v. PrivacyProtect.org / Aditya Roshni, Web Services Pty, WIPO Case No. D2014-0058; Giorgio Armani S.p.A Milan, Swiss Branch Mendrisio v. Min Zhi, WIPO Case No. D2013-0020.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name <samsungrepair.ie>. The Complainant asserts that it has no relationship with the Respondent and has not authorized the Respondent to use and register the SAMSUNG trademark, or to seek the registration of any domain name incorporating the Complainant’s SAMSUNG trademark. Neither has the Complainant ever given any license or permission to the Respondent to use the Complainant’s trademark.

Furthermore the Complainant states that it is not aware of any evidence that the Respondent has ever acquired any rights or legitimate interests in, or has ever indicated any legitimate use of, the disputed domain name.

The Complainant refers to evidence annexed to the Complaint showing that the disputed domain name resolves to a website which in turn links to subsidiary websites that offer products or services from competitors of the Complainant. The Complainant argues that such use does not amount to a bona fide provision of goods or services and in fact gives rise to a strong presumption that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant submits that the disputed domain name has been registered and used primarily in order to prevent the Complainant from reflecting its SAMSUNG trademark, which is a protected identifier in which the Complainant has rights, in a corresponding domain name.

The Complainant further submits that given the renown of the Complainant’s SAMSUNG trademark, the Respondent must have had actual knowledge of the Complainant’s trademark prior to registering the disputed domain name and it is therefore unlikely that the Respondent selected the disputed domain name for genuine reasons.

The Complainant refers to evidence that it has adduced in an annex to the Complaint, demonstrating that the disputed domain name was in actual use on the date of the Complaint, resolving to a website offering repair services for SAMSUNG electronic devices including mobile phones, cameras, laptops and tablet repairs, with active links to two other websites at “www.gsmsolutions.ie” and “www.allcom.ie”. The Complainant submits that all three websites offer competing goods and services and appear to be associated with the Respondent.

The Complainant submits that such use is an attempt on the part of the Respondent to attract Internet users to its website for commercial gain, and to the websites of third parties offering competing goods and services by creating a likelihood of confusion with the Complainant’s SAMSUNG mark as to the source, affiliation or sponsorship of the Respondent’s website. Accordingly, the Complainant argues that the disputed domain name is being used in order to interfere with and disrupt the Complainant’s business, and to cause Internet users to falsely associate the services being offered by the Respondent with the Complainant’s services.

Furthermore, the Complainant argues that the Respondent has altered the Complainant’s mark by adding the word “repair” and displayed the mark in a distinguished font size on the main page of its website. Such design of the website creates further confusion by causing visitors to the Respondent’s website to believe that they have reached the Complainant’s website or the website associated with the Complainant’s business.

Finally, the Complainant submits that the panel in the recent Samsung Electronics Co., Ltd v. Alan Donohoe, WIPO Case No. DIE2015-0002, brought by the Complainant against Respondent on March 13, 2015, for the domain name <samsung.ie> held that “by using the disputed domain name [<samsung.ie>], 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 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 Complainant submits that by continuing to use the disputed domain name which is the subject of the present Complaint, following that finding in Samsung Electronics Co., Ltd v. Alan Donohoe, supra, is further evidence that the disputed domain name is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 1 of the IEDR Policy requires a Complainant to prove that:

- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights [paragraph 1.1.1.]; and

- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; [paragraph 1.1.2.]; and

- the disputed domain name has been registered or is being used in bad faith [paragraph 1.1.3].

The IEDR Policy further provides at paragraph 1.3 that trade and service marks protected in the island of Ireland are protected identifiers for the purpose of this Policy.

A. Identical or Confusingly Similar

The Complainant has provided evidence to prove that it has rights in the SAMSUNG trademark through its above-listed trademark registrations and its worldwide use of the mark in association with its technology and electronics business. The above-listed trademarks are protected in the island of Ireland and are therefore protected identifiers as defined in paragraph 1.3 of the IEDR Policy.

The disputed domain name consists of the Complainant’s SAMSUNG mark in its entirety to which the descriptive term “repair” is appended together with the “.ie” suffix. Having compared both, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected identifier: that the distinctive SAMSUNG trade mark is the dominant element of the disputed domain name; that the additional wording “repairs” adds nothing to the distinctiveness of the domain name; and that in the present case the “.ie” ccTLD suffix may be ignored for the purposes of comparison.

The Complainant has therefore satisfied the first element of the test in paragraph 1 of the IEDR Policy.

B. Rights in Law or Legitimate Interests

The obligation lies on the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Once the prima facie case is established, the evidential onus shifts to the Respondent. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001 and Samsung Electronics Co., Ltd v. Alan Donohoe, supra.

The Complainant has established a prima facie case: the Complainant is the owner of the SAMSUNG trademark; the disputed domain name is confusingly similar to the Complainant’s trademark and the website to which it resolves is directing Internet traffic to third parties offering competing products; the Complainant has no relationship with the Respondent; the Complainant has not authorized the Respondent to use and register either the SAMSUNG trademark or any domain name incorporating the Complainant’s SAMSUNG trade mark; the Complainant has never given any license or permission to the Respondent to use the SAMSUNG trade mark; there is no evidence available to the Complainant that the Respondent has ever acquired any rights or legitimate interests in, or has ever indicated any legitimate use of, the disputed domain name; and the Respondent is not known by the disputed domain name or any similar name.

This Panel is conscious that this is not a simple case of a re-seller advertising the repairs of the Complainant’s goods. In such circumstances in Comité Interprofessionel du Vin de Champagne (CIVC) v. Richard Doyle, WIPO Case No. DIE2007-0005 the panelist applied the criteria set out in the UDRP case OKI Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 which were expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as follows¹ : “A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the Respondent’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark”.

In the present case the Respondent does not fit within those criteria as he is taking predatory advantage of the Complainant’s reputation to attract Internet users to his site and other sites which offer competing goods and services.

No response has been filed. In the circumstances the Respondent has failed to rebut the Complainant’s prima facie case and the Complainant is entitled to succeed in the second element of the test in paragraph 1 of the IEDR Policy.

C. Registered or Used in Bad Faith

This Panel has considered the evidence adduced with the Complaint and decides that on the balance of probabilities the disputed domain name was both registered and is being used in bad faith by the Respondent.

The Complainant’s reputation was well established when the disputed domain name was registered on May 15, 2012. It is clear from the evidence that the disputed domain name was registered in bad faith for its reference to the Complainant’s SAMSUNG trademark and the reputation of the Complainant. In the absence of any explanation from the Respondent, this Panel finds on the balance of probabilities that the Respondent registered the disputed domain name not only to promote its sales of and repair services for, the Complainant’s products, but also to take predatory advantage of the Complainant’s SAMSUNG mark in order to redirect Internet users seeking information about the Complainant’s products to information about competing products and services.

The Complainant has therefore satisfied the third and final element of the test in paragraph 1 of the IEDR Policy and is entitled to succeed in this proceeding.

7. Decision

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 <samsungrepair.ie> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: February 16, 2016

¹ While the Complaint is brought under the IEDR Policy, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it and the WIPO Overview 2.0 throughout.