Samsung Networks Inc. v. savemin.com,inc.
Claim Number: FA0810001230238
Complainant is Samsung Networks Inc. represented by Nathan J. Prepelka, of The Webb Law Firm, Pennsylvania, USA. Respondent is savemin.com,inc., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youngsamsung.us> (the “Disputed Domain Name”), registered with Godaddy.com, Inc.
Each of 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.
Ho-Hyan Nahm, the Honorable Charles Kuechenmeister, (Ret.), and Kendall C. Reed, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 21, 2008; the Forum received a hard copy of the Complaint on October 22, 2008.
On October 22, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <youngsamsung.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “us TLD Policy”).
On October 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Ho-Hyan Nahm, the Honorable Charles Kuechenmeister, (Ret.), and Kendall C. Reed as Panelists.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a subsidiary of the Samsung Group, which is one of the world’s largest conglomerates.
Samsung Group is the owner of a number of trademark registrations in various countries for the famous trademark SAMSUNG.
Samsung Electronics Co., Ltd., a member of the Samsung Group to which Complainant is a member as well, is the owner of a Korean trademark registration number 18226 for the mark YOUNG SAMSUNG and design (“Complainant’s Trademark”). The word portion of this trademark appears in English.
Complainant is responsible for managing the domain names on behalf of the member companies of the Samsung Group, including the registration and administration of many domain names for these member companies.
The Disputed Domain Name is identical to Complainant’s Trademark.
There is nothing in the WHOIS record that provides support for the incorrect notion that Respondent was or is commonly known by the Disputed Doman Name.
The Disputed Domain Name directs Internet users to a blog-type page (“Respondent’s Website”) that presents articles that include fabricated, defaming and scurrilous content concerning Complainant, including blatantly false and disparaging articles labeling Samsung and certain of its employees as “traitors,” “spies,” “conspirator,” “dogs,” “fools,” “betrayers,” “enemies,” etc. This content is presented the Korean language.
When an Internet browser is directed to Respondent’s Website, the visitor is immediately met with the title “YoungSamsung.Us” and the tagline “About Samsung.”
Respondent’s Website is not a permissible protest site because an Internet user is not warned in advance, by way of the domain name itself, that the site is not an official web site originating with or sanctioned by Complainant. In this regard, the Disputed Domain Name does not include (on its face) any negative connotation, e.g., “sucks,” “anti-,” etc.
Complainant does recognize that there exists differing views as to whether a U.S.-based criticism site should, in some rare instances, be protected as “free speech.” However, given that the content of Respondent’s Website is in the Korean language, it should not appropriately be considered a U.S.-based site.
Even if Respondent’s Website were considered a “criticism” website, and this might possibly signify fair use, this is only appropriate where there are not indicia of bad faith. However, Respondent is using Respondent’s Website to disrupt the business of Complainant, and as such is acting with bad faith.
Respondent has at all relevant times had actual or constructive knowledge of the trademarks of the Samsung Group, including the mark YOUNG SAMSUNG.
Respondent uses the Disputed Domain Name to resolve to a libelous site, which tarnishes the marks of the Samsung Group, and the associated goodwill, purposefully disrupts Complaint’s business and leads to consumer confusion as to affiliation, all of which provide further evidence of bad faith.
B. Respondent did not submit a Response in this proceeding.
Samsung Electronics Co. Ltd., a member of the Samsung Group of companies, is the owner of Korean trademark registration number 18226 for the trademark YOUNG SAMSUNG and device. The word portion of this mark appears in English.
Complainant is responsible for managing the domain names on behalf of the member companies of the Samsung Group, and for that reason Complainant has rights to Complainant’s Trademark for purposes of this administrative proceeding.
Respondent registered the Disputed Domain Name, <youngsamsung.us>.
The Disputed Domain Name directs to a website that contains content critical of the Samsung Group and certain employees, officers, and/or directors of entities within the Samsung Group.
The Disputed Domain Name is identical to Complainant’s Trademark.
Respondent does not have rights or legitimate interest in the Disputed Domain Name.
Respondent’s use of the Disputed Domain Name has been in bad faith.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Paragraph 4(a) of the usTLD Policy requires that 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
usTLD Policy paragraph 4 (a)(i) contains two elements. Firstly, a complaint must demonstrate rights in a trademark, and secondly, the involved disputed domain name must be identical or confusingly similar thereto.
One of the ways in which a complainant may establish rights in a trademark for purposes of the usTLD Policy is by way of registration in a national trademark office. See Diners Club Int’l Ltd., v. O P Monga, FA 670049 (Nat. Arb. Forum May 22, 2006)(“With the submission of registration number 828,013 of April 25, 1967, issued by the U.S.P.T.O. for the DINERS CLUB mark, and the list of DINERS and composite marks registered worldwide…Complainant proved that it has rights in the DINERS CLUB mark, and generally in the DINERS CLUB family of marks, many of which fully incorporate the words DINERS CLUB.”).
In the present case, Complainant has rights to a Korean trademark registration, number 18226, for the mark YOUNG SAMSUNG and device, which is sufficient to establish trademark rights for purposes of the Policy.
For purposes of determining identicality and/or confusing similarity as between a disputed domain name and a complainant’s trademark, the top level domain identifier is removed. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)(finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purposes of determining whether it is identical or confusingly similar.) Further, minor variations, such as the presence or absence of blank spaces, hyphens, double letters, single letters, and the like, are similarly ignored. See Barnsandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006)(finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s”…[does] not negate the confusing similar aspects of the domain names pursuant to UDRP ¶ 4(a)(i).”).
In the present case, the Disputed Domain Name is thusly modified by the elimination of the top level domain identifier “.us”, and the absence of a space is ignored, which results in “young samsung.”
As such, the Panel has no difficulty finding that the Disputed Domain Name is identical to Complainant’s Trademark, establishing the first element of the usTLD Policy.
Rights or Legitimate Interests
Under the usTLD Policy paragraph 4(a)(ii), a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the involved disputed domain name, and then the burden shifts to the respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006)(holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.) See also AOL LLC v. Gerberg, FA 780200 Nat. Arb. Forum Sept. 25, 2006)(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant has demonstrated that the Samsung Group has exclusive trademark rights in Complainant’s Trademark, and in the absence of substantial evidence to the contrary, it is not possible for any other entity, including Respondent, to have rights or legitimate interests in Complainant’s Trademark.
Further, Complainant’ has asserted, and this assertion is undisputed, that Respondent has not been and is not now commonly known by the Disputed Domain Name.
Further still, Complainant has asserted, and this assertion is undisputed, that Respondent’s use of the Disputed Domain Name is not a legitimate fair use.
As such, Complainant has established a prima facia case that Respondent does not have rights or legitimate interest in the Disputed Domain Name.
Because Respondent has not filed a response in this administrative proceeding, Respondent has not carried its burden.
As such, Complainant has established the second element of the usTLD Policy.
Registration and Use in Bad Faith
Pursuant to the usTLD Policy, a complainant must establish that the respondent either registered or used the Disputed Domain Name in bad faith, which is a different standard from the UDRP Policy, which requires a showing of bad faith in both registration and use. See American University v. Naveh, LLC, FA 323759 (Nat. Arb. Forum Oct. 21, 2004)(“It is important to note in this connection that the usTLD Policy differs materially from the older UDRP Policy, among other ways, in that the standard of proof of bad faith in the former policy is stated in the disjunctive (or) while the standard of proof of bad faith in the latter is stated in the conjunctive (and). Thus, under the UDRP standard, a complainant must prove both that a respondent has registered a domain name in bad faith and that it uses it in bad faith. A complainant under the usTLD Policy, however, need only prove either that the disputed domain name has been registered in bad faith or that it is used in bad faith. This difference significantly reduces the proof requirement for complainants in usTLD proceedings.”). As such, this Panel will focus only on Respondent’s use of the Disputed Domain Name.
Bad faith use of a domain name that is identical (or confusingly similar) to a complainant’s trademark can be based on a number of grounds. Paragraph 4(b) of the usTLD Policy contains four examples of bad faith conduct, but these examples are not exclusive. See Asset Loan Co. Pty Ltd v. Rogers, D2006-0300 (WIPO May 2, 2006)(“In any event, as the Complainant points out, the criteria set out in paragraph 4(b) are not exclusive and it has long been held that any conduct that can fairly be described as constituting bad faith is sufficient.”).
Bad faith can exist where a domain name that is identical to a complainant’s trademark is used to direct Internet users to a website that contains content that is critical of the complainant. See Asset Loan Co. Pty Ltd., supra (“The evidence shows a pattern of bad faith from the time of registration, for the Respondent has: (i) taken the trademark and business name of the Complainant; (ii) reflected the exact mark in the domain name without any qualification; (iii) pretended by that adoption that its use will lead to an official website of Asset Loan Co or interests associated with it, when he clearly knew this was false; (iv) until recently, carried no disclaimer or warning on his website and only recently started to carry an ineffective disclaimer; and (v) posted photographs of the directors on his website to create a further illusion of authenticity in the website.”); see also Tropar Manufacturing Co., Inc., v. TSB, FA127701 (Nat. Arb. Forum Dec. 4, 2002)(“The registration and use of a domain name identical to Complainant’s mark in order to tarnish Complainant’s mark is considered to be evidence of bad faith….”). See also Monty & Pat Roberts, Inc., v. Keith, D2000-0299 (WIPO June 9, 2000)(“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant…However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).
In the present case, Respondent is using the Disputed Domain Name, which is identical to Complainant’s trademark. Respondent does not differentiate itself from Complainant in any way within the Disputed Domain Name, and as such, Respondent is confusing Internet users as to the source of the Disputed Domain Name. The content of the website to which the Disputed Domain Name directs contains content that is critical of Complainant. As such, Respondent is tricking Internet users into being exposed to Respondent’s negative messages about the Samsung Group, and Respondent is forcing the trademark owner, a member of the Samsung Group, to suffer the use of its trademark to further Respondent’s purpose of spreading its negative messages about the Samsung Group.
As such, Respondent’s use of the Disputed Domain Name is in bad faith, establishing the third element of the usTLD Policy.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youngsamsung.us> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist Chair
Ho-Hyan Nahm, the Honorable Charles Kuechenmeister, (Ret.), Panelists
Dated: December 1, 2008
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