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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Samsung Electronics Col. Ltd. v. Selim Civelek

Case No. DRO2008-0005

 

1. The Parties

The Complainant is Samsung Electronics Co. Ltd., of Suweon, Kyungki-do, Republic of Korea, represented by Rominvent S.A., Romania.

The Respondent is Selim Civelek, of Chicago, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <samsung.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2008. On March 25, 2008, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On March 31, 2008, RNC.ro transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2008.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 13, 2008. 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 electronics company with world-wide operations and a market leader in memory chips, system-LSI and LCDs, as well as A/V, computers, telecommunication devices, home appliances and other stand-alone products, and is the owner of the following International, European Community and Romanian trademarks:

“SAMSUNG” – a Romanian trademark, no. 028551;

- Registered in 19.02.1993;

- Expiry date 19.02.2013;

- Goods: (class 7,9,11,37,42)

a) “SAMSUNG” – a Romanian trademark, no. 002959;

- Registered in 09.06.1988;

- Expiry date 09.06.2008;

- Goods: (class 7,9,11,14)

b) “SAMSUNG” – individual figurative CTM, no. 000506873;

- Registered in 09.04.1997;

- Expiry date 09.04.2017;

- Goods: (class 1,2,4,5,10,12,17,18,20,22,23,24,28,35,36,39,41)

c) “SAMSUNG” – individual word CTM, no. 001877901;

- Registered in 28.09.2000;

- Expiry date 28.09.2010;

- Goods: (class 7,9,11,14,37,42)

d) SAMSUNG” – individual figurative CTM, no. 000506881;

- Registered in 09.04.1997;

- Expiry date 09.04.2017;

- Goods: (class 7,9,11,14,37,38,42)

e) “SAMSUNG Hi Tech” – international trademark, no. 542298, registered in Romania;

- Registered in 08.05.1989;

- Expiry date 08.05.2009;

- Goods: (class 07,09,10,14,16)

The Complainant has used the SAMSUNG trademarks in commerce in connection with a wide range of memory chips, system-LSI and LCDs, as well as A/V, computers, telecommunication devices, home appliances and other stand-alone products. These products and services are sold and distributed all over the World, including Romania, as well as over the Internet. The SAMSUNG trademark appears prominently on the Complainant’s web site, found at “www.samsung.com”. A representative sample of use of the mark in commerce has been provided to the Panel.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name is clearly identical and confusingly similar to the Complainant’s “SAMSUNG” trademark, as used and registered by the Complainant.

With respect to the domain name, specifically the “www.” prefix and the “.ro” suffix, the addition of the “www.” prefix does not render the domain name distinctive. Similarly, the “.ro” suffix, the country code top-level domain name “.ro”, also is without legal significance since use of a gTLD or ccTLD is required of domain name registrants; “.ro” is only one of several such ccTLD and does not serve to identify a specific enterprise as a source of goods or services.

Therefore, the disputed domain name is identical to the Complainant’s “SAMSUNG” trademark.

The Complainant further contends that, as a result of the significant amount of time and money the Complainant has invested into promoting the “SAMSUNG” trademark, the trademark has become famous and it is very well-known and recognized by consumers throughout the world. In fact, on the Internet alone, there are literally thousands of references to the Complainant’s SAMSUNG trademark and the goods and services promoted in connection with that famous mark.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

On information and belief, the Respondent has no prior rights or legitimate interests in or to the SAMSUNG trade name or trademark. Neither does the Respondent have prior rights to the use of the mark SAMSUNG on the Internet; the <samsung.com> domain name has been registered by the Complainant.

Further, as noted above, the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the SAMSUNG marks. Furthermore, on information and belief, the disputed domain name is not, nor could it be contended to be, in any way identified with or related to a legitimate interest of the Respondent.

On information and belief, the Respondent is not commonly known by the name

“SAMSUNG”, and is not making legitimate non-commercial or fair use of the name with an intention not to mislead consumers.

The SAMSUNG mark is well-known, internationally registered, and distinctive. The Respondent could have chosen any number of other domain names. The fact that he has chosen one identical to the Complainant’s mark implies a lack of any valid right or interest in the disputed domain name. Furthermore, the SAMSUNG name and mark is clearly associated with the Complainant and consumers have an expectation that the disputed domain name will direct them to a website controlled or authorized by the Complainant, and not one controlled by the Respondent.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))

On information and belief, prior to registration of the disputed domain name, there was no evidence of the Respondent’s use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services.

As further evidence of the Respondent’s bad faith, on information and belief, the Respondent is not currently, nor was he prior to registration of the disputed domain name, making any legitimate non-commercial or fair use of the domain name or the term SAMSUNG or any permutations thereof.

The SAMSUNG trademark is famous and has been well-known worldwide, including over the Internet, for the past 10 years. The Respondent knew or should have known of the use of the trademark prior to registering the disputed domain name. The fact that he registered the domain name anyway constitutes bad faith. See: Lancфme Parfums et Beaute & Cie v. SL, Blancel Web, WIPO Case No. D2001-0028; and America Online, Inc. v. Yeteck Communication Inc., WIPO Case No. D2001-0055.

Because of the widespread use and reputation of the trademark SAMSUNG, Internet users also in Romania and worldwide would immediately believe that the disputed domain name was in some way associated with the Complainant. This association will certainly be made by Internet users as the Complainant is the owner of many other various registered domain names, which include the word “Samsung”, all over the world. The likely explanation of the disputed domain name by the Respondent is that it was aiming at benefiting from the Complainant’s trademark in order to benefit unfairly from the reputation of the said trademark.

Moreover, as may be seen, at present, the website associated with the disputed domain name is not live. The Respondent cannot prove his good faith, by simply owning this domain name and without its use. To own a domain name in order not to use it, one cannot prove its good commercial intentions but its bad faith to block the use of it by the person who can claim a legal interest to it. The domain name does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established, which will use the disputed domain name. There is no evidence of advertising, promotion or display to the public of the domain name. In short, there is no positive action being undertaken by the Respondent in relation to the domain name. Passive holding of a domain name is indicative of bad faith use and registration, and has been found to be in violation of the paragraph 4(b) of the Policy. See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel concluded that inaction does not preclude a finding of “bad faith use” since what is relevant: “…is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith……the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.”

The fact that neither the Respondent nor the website associated with the disputed domain name has any connection with the Complainant or its products and services is indicative of bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain names at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions of fact and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a disputed domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s trademark SAMSUNG. The addition of the suffix “.ro” to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617; and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant’s trademark SAMSUNG, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through wide-spread registration around the world and use in commerce for several years prior to the registration of the disputed domain name by the Respondent.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

– whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely-known trademark SAMSUNG and its commercial use around the world, the Respondent must in all likelihood have known that, when registering the disputed domain name, the Respondent could not have – or, indeed, claimed – any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s widely-known and widely-used trademark SAMSUNG when registering the disputed domain name. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark SAMSUNG in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s widely-known and widely-used trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services (see further on this point below) and may also adversely affect the valuable goodwill that the Complainant has established in its trademark through investment and wide-spread commercial use over several years.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on its web site or location.”

Based on the record in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely-known and widely-used trademark SAMSUNG. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registration of the disputed domain name by the Respondent was coincidental, but rather more likely to have been intentionally made with the Complainant’s widely-known and widely-used mark specifically in mind.

Again, by registering and using the disputed domain name incorporating the Complainant’s widely-known and widely-used trademark SAMSUNG, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the disputed domain name includes the widely-known and widely-used trademark SAMSUNG of the Complainant, used and registered by the Complainant several years before the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.

Also, the fact that the disputed domain name does not resolve to a website or other on-line presence – in other words, a case of so-called ‘passive holding’ of a domain name by the Respondent – is in the circumstances of this case indicative of bad faith use and registration of the disputed domain name on the part of the Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Finally, the failure of the Respondent to answer the Complainant’s Complaint or take any part in the present proceedings is, in the view of the Panel, only reinforces a finding of bad faith on the part of the Respondent in this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <samsung.ro> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: May 19, 2008