Samsung Networks Inc. v.
savemin.com,inc.
Claim Number: FA0810001230238
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
FINDINGS
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.
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(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.
DECISION
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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