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Samsung Electronics Co., Ltd v. Seung Kang [2005] GENDND 1650 (5 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Samsung Electronics Co., Ltd v. Seung Kang

Case No. D2005-0557

1. The Parties

The Complainant is Samsung Electronics Co., Ltd, Suwon-si, Gyeonggi-do, Republic of Korea, represented by You Me Patent & Law Firm, Seoul, Republic of Korea.

The Respondent is Seung Kang, Fullerton, California, United States of America.

2. The Domain Name and Registrar

The Domain Name at issue, <samsungtonercartridge.com>, is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2005. On May 26, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On June 6, 2005, Melbourne IT trading as Internet Names Worldwide 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 and technical contact. 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 June 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2005. Upon the request to the Complainant, the proceedings were suspended prior to the Response due date in order to allow the parties an opportunity to reach a settlement. As no settlement was reached, the Complainant requested that the proceedings be reinstated. The proceedings were reinstated and the due date for Response was August 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2005.

The Center appointed Teruo Doi as the sole panelist in this matter on August 22, 2005. 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 facts stated in the Complaint are as follows:

(1) The Complainant, Samsung Electronics Co., Ltd, is a holding company of the Samsung Group and owns trademarks and domain names related to the corporate name “Samsung.” For 67 years since the foundation of the Samsung Group in 1938, the name “SAMSUNG” has been used as trademarks, trade names (Appendix 3) and corporate identity. (Annex 4)

The Complainant has 337 offices and facilities in 58 countries including the United States of America and employs approximately 201,000 people worldwide. (Annex 5) The Group’s total revenue was recorded at US$119.5 billion in 2000, $98.7 billion in 2001, $116.8 billion in 2002 and $101.7 billion in 2003. From this, the Group recorded profits of US$7.3 billion in 2000, $4.5 billion in 2001, $8.9 billion in 2002, and $5.8 billion in 2003 (Annex 6). The Complainant, as one of the profit makers among many affiliates of the Samsung Group, recorded an operating profit of US$6.0 billion on sales of $36.4 billion and stands as one of the world’s leading companies. Accordingly, Samsung Electronics has secured a nation’s credit rating from the world renowned Standard & Poor’s and Moody’s Investors Service (Annex 7).

(2) The Complainant owns trademark registrations for the trademark SAMSUNG in over 100 countries, including the United States of America. The registrations cover a wide variety of goods and services within the field of activities of the group, among others, including the followings (Annex 8):

- SAMSUNG and Oval Device registered worldwide and in the United States of America, for goods in classes 1, 7, 9, 11, 14, 17, 19, 23, 24, 25, 27 and 36 (Annex 9);

- SAMSUNG and Device registered worldwide and in the United States of America for goods in classes 7, 9 and 11 (Annex 10); and

- SAMSUNG registered worldwide and in the United States of America for goods in classes 7, 9, 11, 14, 18, 23, 24 and 25 (Annex 11).

(3) The Complainant has been continuously using the above listed trademarks for all kinds of businesses, products and services throughout the world, including computer printers, tuners and printer cartridges, which are the products sold and marketed on the website to which the disputed domain name resolves “www.samsungtonercartridge.com.”

The brand value of SAMSUNG increased to US$31 billion from US$6.37 billion in 2001, and was recognized by Interbrand Corporation as the fastest growing global brand. Therefore, SAMSUNG is clearly a world famous trademark that is well known at least in Korea and the United States of America where the Respondent is located.

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <samsungtonercartridge.com>, be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy, on the following grounds:

(1) The Domain Name at issue is identical or confusingly similar to the Complainant’s trademark: The Domain Name at issue, <samsungtonercartridge.com>, is made up of the Complainant’s famous trademark SAMSUNG and the Complainant’s products, “toner” and “cartridge”; the use of the Domain Name and “SamsungTonerCargridge.com” indicated on the screen cause confusion with the Complainant’s clients and lead consumers into believing that this website is managed by a person or company authorized by Samsung. And, therefore, the Domain Name, <samsungtonercartridge.com>, creates a likelihood of confusion as to the origin of the Domain Name and to possible affiliations of the Respondent and the Complainant. (Annex 12)

(2) The Respondent has no rights or legitimate interests in the Domain Name at issue: The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating the said marks. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent has never used the term “samsung” in any way before or after the Complainant started their business. The Respondent is not commonly known by the Domain Name. On the website, the Respondent does their business with the name <4shoppings.com>. The Respondent is not making any legitimate or fair use of the Domain Name, but rather has the intent for commercial gain using the reputation of the SAMSUNG brand. For all the above cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

(3) The Domain Name at issue was registered and is being used in bad faith: The Domain Name at issue is registered primarily for the purpose of selling or transferring it to the owner of the SAMSUNG trademark, the Complainant. The Complainant sent a “cease and desist letter” to the Respondent (Annex 13), to resolve this matter without recourse to WIPO proceedings, on April 26, 2005. Thereafter, the Respondent sent an e-mail to the Complainant (Annex 14) which clearly shows the Respondent’s intention to sell the Domain Name at issue to the Complainant. As the Respondent is in the business of selling toners and ink cartridges applicable to SAMSUNG printers, it is obvious that the Respondent knew the Complainant and the reputation and goodwill of the trademark SAMSUNG prior to registering the Domain Name at issue. The Respondent is illegitimately using the Domain Name, <samsungtonercartridge.com>, to create an association with the Complainant, its products and with the intent to misleadingly divert Internet users to its website for commercial gain. The Respondent offers toner and ink cartridges to be used in computer printers. To attract business to its website, the Respondent has deliberately copied the well-known trademark of SAMSUNG in the disputed Domain Name. For the reasons above, the Domain Name at issue, <samsungtonercartridge.com>, can be considered as having been registered and is being used in bad faith as defined in paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent failed to file a Response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) The domain name registered by the Respondent is 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 name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:

A. Identical or Confusingly Similar

The Domain Name at issue, <samsungtonercartridge.com>, is identical or confusingly similar to the Complainant’s trademark SAMSUNG registered and used worldwide including the United States of America where the Respondent resides.

As the Complainant correctly asserts, the dominant part of the Domain Name at issue, <samsungtonercartridge.com>, is the word “samsung”, because the words “toner” and “cartridge” are generic names of the products handled by the Complainant. In addition, the “.com” part indicates the type of the domain name. Therefore, these three words, “toner”, “cartridge” and “.com”, have no distinctive quality and should be disregarded in the comparison of the Domain Name at issue with the Complainant’s trademark SAMSUNG, in the finding of confusing similarity with the latter.

The SAMSUNG trademark is registered and used by the Complainant and its affiliated companies throughout the world (Annexes 3 to 11), and it is undoubtedly well-known or famous as representing the Samsung Group and their products. The Domain Name at issue, beginning with the word “samsung” and followed by “toner” and “cartridge”, being the generic names of the products handled by the Complainant, creates the likelihood of confusion as to the origin of the Domain Name and to the possible affiliation of the Respondent with the Complainant as correctly stated in the Complaint.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence to show that the Respondent has been or is commonly known by the Domain Name, and the Complainant has never authorized or permitted the Respondent to use the word “samsung” for its Domain Name.

Furthermore, the Panel notes that the disputed Domain Name currently resolves to a general web portal/underconstruction sign. In other words, there is no actual offering of the Complainant’s goods. Thus, the Respondent does not have a legitimate interest as some kind of unauthorized reseller of Complainant’s goods (cf. Section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

C. Registered and Used in Bad Faith

The Domain Name at issue, <samsungtonercartridge.com>, has been registered and used in bad faith by the Respondent on the following grounds:

The Complainant’s trademark SAMSUNG is registered and used worldwide for various categories of goods and services by the Complainant and its affiliated companies. The Respondent had prior knowledge of the said trademark.

There is no proof that the Respondent has a legitimate interest in adopting the word “samsung” for the Domain Name at issue. The correspondence between the Complainant and the Respondent before the commencement of this proceeding (Annexes 13 and 14) supports the finding of the Respondent’s bad faith.

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, that the Domain Name <samsungtonercartridge.com> be transferred to the Complainant.

Teruo Doi
Sole Panelist

Dated: September 5, 2005