WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samsung Eletrônica da Amazônia Ltda. v. Domain Admin, Whois Privacy Corp.
Case No. D2018-2034
1. The Parties
The Complainant is Samsung Eletrônica da Amazônia Ltda. of Manaus, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <samsungshopping.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 12, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 12, 2018. 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 Complainant is a Brazilian limited company, a part of the Samsung corporate group established in the Republic of Korea in 1938. Attached to the Complaint is the license under which the Complainant is authorized to use various Brazilian trademarks held by its Korean affiliate Samsung Electronics Co., Ltd. (“Samsung Electronics”). These include the registered SAMSUNG word mark (registration number 826572669, registered on August 14, 2007). Samsung Electronics operates a multi-language website at “www.samsung.com”, a domain name that the company has held since 1994.
According to the Registrar, the Domain Name was created on January 21, 2018 in the name of the Registrar’s domain privacy service located in the Bahamas, listed above as the Respondent. Neither the Registrar nor the domain privacy service have further identified the person that ordered and paid for the registration (hereafter referred to as the “Respondent”), which has not responded to the Complaint or other communications from the Complainant or the Center.
As demonstrated by screenshots attached to the Complaint, the Domain Name formerly resolved to a website in Brazilian Portuguese that advertised SAMSUNG smartphones, displaying them with images and descriptive text that appeared to be copied from the Complainant’s Brazilian Portuguese web pages. There was no identification of the website operator or disclaimer of affiliation with the Complainant or Samsung Electronics on the Respondent’s website. The “Legal” page of the Respondent’s website displayed a Brazilian flag icon and after the heading “LOJA [shop] ONLINE SAMSUNG SHOPPING” stated that the advertised products would be shipped from abroad to any state of Brazil in 20-60 days. The Complainant indicates that the advertised prices are substantially lower than those of authorized resellers in Brazil, raising the question of whether the offers are genuine or reflect a fraudulent scheme.
At the time of this decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its SAMSUNG mark, simply adding a generic term, and that the Respondent has no permission to use the mark and otherwise lacks rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent is acting in bad faith by falsely suggesting an association with the Complainant and using the Domain Name to mislead Internet users for commercial gain. As the Respondent’s website uses content taken from the Complainant’s website, as well as displaying the Complainant’s marks, the Respondent is clearly aware of those marks and seeks to exploit them. The Complainant contends that the Respondent’s targeting of a widely-known mark, while hiding its identity, and its failure to respond to the Complaint also cumulatively support an inference of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant indisputably holds registered SAMSUNG trademarks. The Domain Name incorporates that well-established mark in its entirety, adding a generic term, “shopping”. The Panel notes that this is not only a generic term in English but has been borrowed in Portuguese as well, which is relevant given the use of the Domain Name. The online Portuguese dictionary at “www.infopedia.pt” defines “shopping” as a noun signifying a commercial center or a website with a range of services, and the Portuguese Free Dictionary at “www.pt.thefreedictionary.com” includes an entry for “shopping center”. The Portuguese version of Wikipedia includes several articles on “shopping centers” in various cities and regions of Brazil, and online maps show retail districts labelled “shopping” and “shopping center” in major Brazilian cities. Thus, this portion of the Domain Name evidently has a generic sense in Brazilian Portuguese as well as in English and does not avoid confusion for purposes of the first element of the Complaint.
As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as the Complainant has here as set out above, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Conceivably, in this case the Respondent might have advanced an interest as an unauthorized reseller of SAMSUNG branded products, assuming the Respondent was actually delivering SAMSUNG products at a discounted price and not simply engaging in a fraudulent scheme to take payment without making deliveries, or delivering counterfeit or defective goods. However, to make a case for fair, nominative use of a manufacturer’s trademark, the Respondent would have to meet the conditions outlined in WIPO Overview 3.0, sections 2.5 and 2.8, including actually offering the trademarked goods (and only the trademarked goods) and also “accurately and prominently” disclosing its relationship with the trademark holder. The Respondent has not established that it has done so, and its website, which has since disappeared, suspiciously did not even identify the Respondent.
The Panel finds that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
This example of bad faith fits the circumstances of the current proceeding. The record shows that the Complainant’s registered SAMSUNG mark is well known in Brazil and, indeed, globally. The Respondent clearly targeted the mark with a website aimed at Brazilian consumers interested in smartphones. The Domain Name incorporated the mark in its entirety, and the Respondent’s associated website copied relevant portions of the Complainant’s website, with no proper identification or disclaimer. Even if the Respondent offered the Complainant’s smartphone products as an unauthorized reseller, it would still have to meet certain standards of fair nominative use to establish its legitimate interests and consequently its good faith in using the trademark of another in the Domain Name, as noted above. The Respondent did not do so. To the contrary, while giving a false impression of source or affiliation and failing to identify itself on the website, the Respondent has remained hidden behind a domain privacy service and declined to respond to any communications or submit a Response in this proceeding. All of these facts support an inference of bad faith in the registration and use of the Domain Name.
The Panel finds that the third element of the Complaint, bad faith, has been established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <samsungshopping.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: October 18, 2018
