WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Samsung Eletrônica da Amazônia Ltda. v. Privacy Protect, LLC / Tania Vicente

Case No. D2020-0286

1. The Parties

The Complainant is Samsung Eletrônica da Amazônia Ltda., Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.

The Respondent is Privacy Protect, LLC, United States of America / Tania Vicente, Brazil.

2. The Domain Name and Registrar

The disputed domain name <assistencialgsamsung.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant of February 13, 2020, 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 amendment to the Complaint on February 18, 2020.

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” 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 February 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 20, 2020. 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 Samsung Eletrônica da Amazônia Ltda. which has signed a license agreement with Samsung Electronics Co. for the marketing of its products as well as the defense of its mark. Samsung was established in the Republic of Korea in 1938 and is currently one of the world’s leading electronics companies, present in more than 70 countries.

Samsung owns several trademark registrations around the world for the trademark SAMSUNG, including the Brazilian word trademark no. 826572669 filed on May 31, 2004 and registered on August 14, 2007.

Samsung is also the owner of the domain name <samsung.com> since November 29, 1994.

The disputed domain name was registered on August 15, 2019 and resolves to a website offering technical support services for the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant states that Samsung owns trademark registrations in several jurisdictions for the trademark SAMSUNG as well as registration for the domain name <samsung.com> and that the disputed domain name reproduces them. According to the Complainant, the disputed domain name confuses Internet users, since the only difference between the disputed domain name and the SAMSUNG marks is the insertion of the generic word “assistencia” and the competitive mark “lg”, which are insufficient to prevent a confusingly similarity.

According to the Complainant, the Respondent is not authorized to register and use the disputed domain name and has no rights or legitimate interests in the disputed domain name.

The Complainant argues that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.

In addition, the Complainant argues that it is impossible to say that the Respondent was unaware of the Complainant and the SAMSUNG trademarks and that the Respondent has intentionally attempted to cause confusion with the SAMSUNG trademarks by misleading Internet users to believe that its website belongs to or is associated with the Complainant for commercial gain, which demonstrates the Respondent’s bad faith.

Finally, the Complainant requests the cancellation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant has rights in the trademark SAMSUNG. The SAMSUNG trademarks predate the disputed domain name. The Panel finds that the Complainant has trademark rights for purposes of the Policy.

The disputed domain name comprises the trademark SAMSUNG. Indeed, the addition of the dictionary word “assistencia” and of the competitor’s mark “LG” does not avoid confusion between the disputed domain name and the trademark. See sections 1.8 and 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)

It is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

Also, as numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview 3.0”.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the SAMSUNG trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the SAMSUNG trademarks or to register domain names containing the trademark SAMSUNG.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence that the Respondent uses the disputed domain name to mislead Internet users to believe it has any partnership, license or authorization from the Complainant.

Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which incorporates the SAMSUNG trademarks, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e. the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The well-known trademark SAMSUNG is registered in several countries, including Brazil and has been used since a long time.

The disputed domain name is comprised by the trademark SAMSUNG in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.

The SAMSUNG mark is very distinctive and is also considered a highly reputed trademark worldwide. Thus, a domain name that comprises such a well-known mark is undoubtedly suggestive of the registrant’s bad faith. In addition, the Panel notes that the disputed domain name includes the term “assistance”, which in this case may serve as an additional evidence of the registration of the disputed domain name in bad faith, considering that the website associated with the disputed domain name offers technical support for the Complainant’s products.

The Complaint demonstrates that the disputed domain name was used with the intent to deceive Internet users to believe they were dealing with the Complainant or with someone authorized by the Complainant.

Therefore, this Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for its own commercial gain by creating a likelihood of confusion with the SAMSUNG trademarks and misleading Internet users to believe that its website belongs to or is associated with the Complainant.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

This Panel finds that the Respondent’s intention of taking undue advantage of the trademark SAMSUNG as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 disputed domain name <assistencialgsamsung.com> be cancelled.

Mario Soerensen Garcia
Sole Panelist
Date: March 31, 2020