DECISION

Samsung Electronics America, Inc. v. Photo Center

Claim Number: FA0208000122206

PARTIES

Complainant is Samsung Electronics America, Inc., Ridgefield, NJ, USA (“Complainant”) represented by Jaren D. Wilcoxson, of Goodwin Procter LLP.  Respondent is Photo Center, Nassau, BAHAMAS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwsamsung.com>, registered with OnlineNIC.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 21, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.

On August 26, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain name <wwwsamsung.com> is registered with OnlineNIC.com and that Respondent is the current registrant of the name.  OnlineNIC.com has verified that Respondent is bound by the OnlineNIC.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwsamsung.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <wwwsamsung.com> domain name is confusingly similar to Complainant's SAMSUNG mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1938, Complainant and its predecessors have used the SAMSUNG mark.  Complainant’s company began as an exporter of fruits and vegetables, but quickly established itself as a leader in numerous manufacturing fields.  In the 1970s, Complainant became a world leader in the electronics industry, the petrochemical industry, and the shipbuilding industry.  Today, Complainant’s enterprise includes more than twenty-five companies worldwide.  Throughout its history, Complainant’s enterprises have consistently used the SAMSUNG mark to promote its goods and services.  As a result of Complainant’s widespread use, the SAMSUNG mark has become famous worldwide.

Complainant owns nineteen trademark registrations with the United States Patent and Trademark Office including: Reg Nos. 1,164,353; 2,214,833; 1,967,460; 1,920,552; and 2,566,413.  Complainant uses a variety of media to advertise its mark in the United States and worldwide.  Complainant actively promotes its mark in newspapers, circulars, magazines, radio commercials, television commercials, direct mailings, and on the Internet at <samsung.com>.

Respondent registered the disputed domain name on June 27, 2002.  Respondent is currently using the disputed domain name to redirect Internet users to a pornographic website located at <primoincontro.com>.  When Internet users attempt to exit this website “pop-up” advertisements appear for additional pornographic material.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the disputed domain name through its continuous use and registration with the United States Patent and Trademark Office.

Respondent’s <wwwsamsung.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely adds the Internet prefix “www.” The addition of the “www” does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis because it merely takes advantage of a common typing error made by Internet users.  Therefore, the “www” does not detract from the fact that Complainant’s mark is the primary focus of the domain name.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the disputed domain name in order to divert Internet users who accidentally mistype Complainant’s URL to a pornographic website located at <primoincontro.com>.  Furthermore, when Internet users attempt to exit Respondent’s website they are subjected to “pop-up” advertisements for other pornographic websites.  The use of Complainant’s mark in a domain name in order to attract Internet users interested in Complainant to Respondent’s pornographic website and advertising material is not considered to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial, or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

Respondent has not come forward with a Response.  Therefore, there is no evidence on record that establishes that Respondent is commonly known by anything other than Photo Center.  Furthermore, based on the fame of Complainant’s SAMSUNG mark, it is very unlikely that anyone other than Complainant could be commonly known by SAMSUNG or <wwwsamsung.com>.  Without any evidence to establish that Respondent is commonly known as <wwwsamsung.com>, Respondent can be found to have no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent is profiting from the Internet traffic that it diverts to <primoincontro.com> via the disputed domain name.  Respondent is therefore commercially benefiting from a domain name that is confusingly similar to Complainant’s SAMSUNG mark.  This type of behavior is considered to be evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent). 

Respondent is engaging in a practice known as typosquatting.  Typosquatters take advantage of common typing errors in order to divert Internet users unwittingly to for profit websites unassociated with the business or entity the Internet user was attempting to reach.  This practice of “typosquatting” has been recognized as a bad faith use of a domain name under the UDRP.  See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).

Based on the fame of Complainant’s SAMSUNG mark it can be inferred that Respondent had constructive, if not actual notice of the Complainant’s rights in the disputed domain name.   Registration of a domain name that incorporates Complainant’s mark, despite notice of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <wwwsamsung.com> be transferred from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: October 17, 2002.

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