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Samsung Electronics Co., Ltd v. ABC Group [2004] GENDND 778 (9 June 2004)

1. The Parties

The Complainant is Samsung Electronics Co., Ltd, of Suwon-si, Gyeonggi-do, Republic of Korea, represented by Mr. Vu Thai Ha of D&N Intellectual Property Law Firm, VietNam.

The Respondent is ABC Group, Heaven, VietNam.

2. The Domain Name and Registrar

The disputed domain name <samsungfunclub.net> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2004. On April 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to 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 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2004.

The Center appointed Zentaro Kitagawa as the sole panelist in this matter on May 28, 2004. 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.The Panel finds that this dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

4. Factual Background

The Complainant is Samsung Electronics, the holding company of the Samsung Group and owns and manages the trademarks in over 100 countries, including Vietnam. The name Samsung has been used since the establishment of the Samsung Group in 1938. The trademark registrations cover a wide list of goods and services. Samsung is therefore clearly a world famous trademark that is well known at least in Korea and in Vietnam, where the Respondent is located.

The Respondent, ABC Group owns the domain name <samsungfunclub.net>. According to the submission of the Complainant, to which the Respondent has not answered, the Respondent, ABC Group, whose true name is Duy Linh Trading Company is working in mobile field, and selling SAMSUNG mobiles. The Respondent’s site at “www. samsungfunclub.net” offers for sale Samsung mobiles, rings tones, logos and picture messages to be downloaded on to mobile telephones.

On November 22, 2003, VinaNic, Inc., registered the domain name <samsungfunclub.net>. On March 6, 2004, there was the first meeting of the Complainant with the Registrant of the domain name. On March 10, 2004, the registrant information of the domain name was changed from VinaNic, Inc. to the Respondent, ABC Group. On March 12, 2004, the Respondent refused to cancel or transfer the domain name to the Complainant.

5. Parties’ Contentions

The Complainant submits that

(1) the domain name <samsungfunclub.net> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; and

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

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

In accordance with Paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel issue a decision that the contested domain name <samsungfunclub.net> be transferred to the Complainant.

The Respondent has failed to submit a Response.

6. Discussion and Findings

This is the default case, The Panel shall therefore decide on the basis of the Complainant’s submissions.

A. Identical or Confusingly Similar

The domain name <samsungfunclub.net> is combination of the SAMSUNG and the suffix “funclub”. In this combination the well-known trademark SAMSUNG of Samsung Electronics is the distinctive element (the gtld .net cannot be taken into consideration as an element which would exclude or diminish identity or confusing similarity). The addition of the descriptive term “funclub” to the distinctive trademark SAMSUNG cannot exclude confusing similarity, particularly as this term will easily be understood by consumers as a fan club for consumers or fans of products of the Complainant are offered for sale. The public may think that the disputed domain name is connected to the SAMSUNG trademark. The domain name <samsungfunclub.net> creates the likelihood of confusion as to the origin of the domain name and to possible affiliations between Respondent and Complainant.

The Panel finds that the domain name <samsungfunclub.net> is confusingly similar to a trademark and service mark in which the Complainant has rights in many countries all over the world, including Vietnam, where the Respondent is located, and which is well-known in these countries (Policy, Para. 4(a)(i), Rules, Paras. 3(b)(viii), (b)(ix)(1)).

B. No Rights or Legitimate Interests

With regard to the domain name <samsungfunclub.net>, the registrant information has been changed from VinaNic, Inc, which has its address in Hanoi to that of the Respondent, ABC Group. It took place on March 10, 2004, after the Complainant sent a desist and cease letter and had its first negotiation with the former Registrant. The true name of the Respondent, ABC Group is Duy Linh Trade Co., Ltd., located in Hanoi, Vietnam. The Respondent has not acquired any trademark or service mark rights in relation with Samsung. The Complainant has not licensed nor otherwise permitted the Respondent to use the domain name nor the trademark.

For the foregoing reasons, the Panel concludes that the Respondent has no rights or legitimate interests with regard to the domain name (Policy, Para. 4(a)(ii), Rules, Para. 3(b)(ix)(2)).

C. Registered and Used in Bad Faith

On March 04, 2004, the Complainant contacted by telephone VinaNic, Inc., the Registrant of the domain name and then sent an email to it, in an attempt to resolve this matter without recourse to WIPO proceedings. VinaNic, Inc. replied to the Complainant’s email as follows:

“Dear Mr.

Regarding the domain name samsungfunclub.net, according to what you said (via telephone), you are the representative for Samsung in Korea. So, if you can manage your time, please come to our office to discuss about this and bring with you documents proving that Samsung in Korea had authorized you to handle this matter. At the time being, forum Samsungfunclub is a member of Duy Linh Group, and Duy Linh Group has a very good relation with Samsung Electronics in Vietnam so the matter can be easily resolved. After checking with Samsung Electronics in Vietnam and if Samsung has intention to regain the above domain name, we can give it to them or sell at cheap price.”

At a meeting with the Complainant on March 6, 2004, VinaNic, Inc. had promised to reply the Complainant’s request by March 12, 2004. On March 10, 2004, the domain name registrant information was changed to the Respondent, ABC Group. And on March 12, 2004, over a telephone conversation, the Respondent said: “We will not voluntarily cancel or transfer the subject domain name to Samsung”. It is apparent that the domain name <samsungfunclub.net> is registered for selling purpose.

The Respondent, ABC Group, whose true name is Duy Linh Trading Company sells SAMSUNG mobiles, it is obvious that the Respondent knew of the Complainant and the trademark SAMSUNG prior to registering the domain name. The Respondent’s site at “www.samsungfunclub.net” offers for sale Samsung mobiles, rings tones, logos and picture messages to be downloaded on to mobile telephones. In order to attract business to its website, the Respondent has deliberately copied the well-known trademark SAMSUNG in the disputed domain name. Thus, the Respondent is illegitimately using the domain name and has chosen the domain name <samsungfunclub.net> to create an association with the Complainant, its products and with intent to misleadingly divert Internet users to its website for commercial gain.

For the foregoing reasons, the Panel finds that the domain name was registered and is being used in bad faith (Policy, Paras. 4(a)(iii), 4(b); Rules, Para. 3(b)(ix)(3)).

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 <samsungfunclub.net> be transferred to the Complainant.

Zentaro Kitagawa
Sole Panelist

Date: June 9, 2004