WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Electronics Co., Ltd v. Diversified Technologies
Case No. D2007-1365
1. The Parties
The Complainant is Samsung Electronics Co., Ltd of Gyeonggi-Do, Republic of Korea, represented by You Me Patent & Law Firm, Republic of Korea.
The Respondent is Diversified Technologies of West Yarmouth, United States of America.
2. The Domain Name and Registrar
The disputed domain name <samsungsupplies.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2007. On September 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 18, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 27, 2007. 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”).
On September 27, 2007, the Center received an email from the Respondent’s administrative contact stating that the domain name was not intended to be used in bad faith and that the website available at the disputed domain name had been updated in order to reflect the intended use. The Center replied that it would notify the commencement of the administrative proceeding to the parties and that the Respondent could then file a Response in due course.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 29, 2007. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is internationally well-known for manufacturing and selling a variety of electronic products, one of the most popular being mobile phones. Established in the early 1930s, the Complainant today operates 337 offices and facilities in 58 countries, including the United States of America, with a net income of 11.8 billion US dollars in 2004 and of 9.4 billion US dollars in 2005.
The Complainant owns numerous SAMSUNG trademarks throughout the world, including:
- US trademark No. 1,920,552 “SAMSUNG” and device registered on September 19, 1995 in intl. class 1, 17 and 19;
- US trademark No. 2,214,833 “SAMSUNG” and device registered on December 29, 1998 in intl. classes 7, 9, 11 and 14;
- US trademark No. 2,882,774 “SAMSUNG” and device registered on September 7, 2004 in intl. classes 7, 9 and 11;
- US trademark No. 1,634,816 “SAMSUNG” and device registered on February 12, 1991 in intl. classes 18, 23, 24 and 25;
- UK trademark No. 1528200 “SAMSUNG” and device registered on February 23, 1993 in intl. classes 1, 7, 9, 10, 11, 12, 14, 16, 37 and 42
(the “SAMSUNG Marks”).
The Complainant is marketing its products on the Internet at the website: “www.samsung.com”, the domain name <samsung.com> having been registered on November 29, 1994.
The disputed domain name was registered on April 3, 2003.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(1) The domain name <samsungsupplies.com> is confusingly similar to the name SAMSUNG in which the Complainant has rights because the additional word “supplies” in the domain name does not prevent users from accidentally mistaking the domain name as being that of the Complainant’s.
(2) The Respondent has no legitimate right to use the name SAMSUNG because it is not affiliated with the Complainant in any way and the Complainant has not authorized the Respondent to use and register its trademark or to seek the registration of any domain name incorporating the name SAMSUNG. Furthermore, the Respondent is not making any legitimate or fair use of the domain name nor has it any legitimate right or interest to do so. Finally, the Respondent’s use of the domain name is no bona fide use under the Policy because the Respondent is offering to sell remanufactured toner cartridges for different types of printers manufactured and sold by the Complainant but no original products of the Complainant, and suggests recycling old print cartridges using the Respondent’s services rather than buying the Complainant’s genuine print supplies.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that the Respondent must have been aware of the Complainant’s rights in the SAMSUNG Marks at the time it registered the domain name which fully incorporates the Complainant’s famous mark.
With regard to bad faith use, the Complainant contends that the Respondent has used the domain name to sell remanufactured toner cartridges for all makers and brands in an attempt to free-ride on the Complainant’s well-known name. The Complainant states that by clicking the ‘office supplies’ button on the website available at the domain name, the user is automatically re-directed to the Respondent’s home page offering various goods. Such use - for the Respondent’s own commercial gain at the expense of the Complainant - is to be considered as bad faith use of the domain name. Finally, the Complainant contends that the Respondent interrupts the business of the Complainant by selling unauthorized and untested re-manufactured print cartridges for printers manufactured by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive SAMSUNG Marks in which the Complainant has exclusive rights.
The mere addition of the generic word “supplies” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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; or
(ii) 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; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
Based on the evidence before the Panel, the Respondent apparently is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name.
The Panel is also satisfied that the Respondent’s use of the domain name is not a bona fide offering of goods or services under the Policy. The Complainant has provided evidence that the Respondent offered unauthorized and untested re-manufactured print cartridges for different types of printers manufactured and sold by the Complainant. However, the Respondent did not offer any of the Complainant’s original products and suggested recycling old print cartridges using the Respondent’s services rather than buying the Complainant’s genuine print supplies. Even though the Respondent has actually been offering the goods or services at issue, it does not use the website available at the disputed domain name to sell only the trademarked merchandise. The Respondent is therefore using the Complainant’s well-known marks to attract Internet users to its own goods and services. It is well established that such use is not to be regarded as a bona fide offering of goods and services (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095).
In its email of September 27, 2007, the Respondent alleged that the disputed domain name was not intended to be used in bad faith but for SAMSUNG toner supplies and that the website available at the disputed domain name had been updated in order to reflect the intended use. However, the new content of the website is irrelevant in this context (i.e. under paragraph 4(c)(i) of the Policy) as the website was changed only when the Respondent knew of the dispute.
Accordingly, the Panel finds that the Complainant has proven that there are no rights or legitimate interests of the Respondent under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
Evidence of bad faith registration and use is given when the registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corporation., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).
The Complainant’s SAMSUNG Marks are well-known in connection with a variety of electronic products. The Respondent admits that the domain name was intended to be used for SAMSUNG toner supplies. The Respondent therefore obviously registered the domain name <samsungsupplies.com> with full knowledge of the SAMSUNG Marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
Furthermore, by fully incorporating the SAMSUNG Marks into the domain name, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website (searching for original SAMSUNG supplies) to its own in order to sell unauthorized and untested re-manufactured print cartridges for different types of printers manufactured and sold by the Complainant.
As a result, the Panel finds that the Respondent registered the domain name with knowledge of the Complainant’s trademarks and has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
Therefore, the Respondent has also been using the disputed domain name in bad faith and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 <samsungsupplies.com> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: November 12, 2007