Samsung Electronics Co., Ltd. v 唐刚 (tang gang)

WIPO Case No. D2022-0635

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Samsung Electronics Co., Ltd. v. 唐刚 (tang gang)

Case No. D2022-0635

1. The Parties

The Complainant is Samsung Electronics Co., Ltd., Republic of Korea, represented by Bae, Kim & Lee IP,

Republic of Korea.

The Respondent is 唐刚 (tang gang), China.

2. The Domain Name and Registrar

The disputed domain name <samsungbot.com> is registered with Alibaba Cloud Computing Ltd. d/b/a

HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2022. On February 23, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2022, 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 on February 24, 2022 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 in English on February 25, 2022.

On February 24, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 25, 2022, the Complainant submitted a request that English be the language of the proceeding. On the same day, the Center received an email communication from the email address listed on the website at the disputed domain name submitting a request that Chinese be the language of the proceeding. On February 25, 2022, the Center sent an email communication in

English and Chinese to this party with a request to identify itself and clarify its relationship (if any) to the

Respondent, but received no reply to this request.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 3, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2022. The Respondent did not submit any response. On March 24, 2022, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 31, 2022. 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 company headquartered in the Republic of Korea and active in the consumer electronics industry. The Complainant and its subsidiaries and group companies have been using SAMSUNG in their various company names since March 1938 and have also used it as a trademark for their products, and continue to use this mark intensively on a global basis.

The Complainant submits evidence that it has rights in an extensive international trademark portfolio for SAMSUNG (word and device marks), including, but not limited to, international trademark registration number 542299A for the word mark SAMSUNG registered on May 8, 1989, and Chinese trademark registration number 557791 for the word mark SAMSUNG, registered on July 10, 1991.

The disputed domain name was registered on February 25, 2019, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an active domain name auction webpage, where the disputed domain name is offered for sale.

5. Parties’ Contentions
A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for SAMSUNG, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well known, and submits company and marketing information. The Complainant also submits a number of prior UDRP decisions in which earlier panels have recognized the Complainant’s rights in the SAMSUNG marks and considered such marks worldwide well-known trademarks, see for instance Samsung Electronics Co., Ltd. v. Perfect Privacy, LLC / Si Woo Lee, WIPO Case No. D2015-0103, and Samsung Electronics Co., Ltd. v. YongHoon Lee, WIPO Case No. D2015-0215. The Complainant particularly contends that the Respondent is using the disputed domain name to take advantage of the goodwill and reputation of the Complainant’s SAMSUNG marks, that the Respondent has intentionally created a likelihood of confusion with the Complainant’s trade name for its its robotics platform and line of robots which it brands “Samsung Bot”, and that the Respondent is attempting to sell the disputed domain name, from which the Complainant deducts that the Respondent registered it for unlawful purposes of unjust enrichment or interfering with the registration by the Complainant, rather than to engage in lawful business. The Complainant contends that there are no justifications for such registration and use of its trademarks in the disputed domain name and that such registration and use is made in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

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B. Respondent

On February 25, 2022, the Center received an email communication from the email address listed on the website at the disputed domain name. On the same day, the Center requested this party to identify itself and clarify its relationship (if any) to the Respondent. Although no reply was received from this party, the Panel notes that according to the information on the website at the disputed domain name, the email address appears to be associated with a domain broker. The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to the Registrar’s verification response, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed its Complaint and amended Complaint in English, and requests that English be the language of the proceeding. As explained under the section 5B above, on February 25, 2022, the Center received a request in Chinese that Chinese be the language of the proceeding apparently from a domain broker for the disputed domain name. However, the Respondent himself did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.

In considering the language of this proceeding, the Panel has carefully taken into account all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainant’s SAMSUNG trademark in its entirety and that the disputed domain name contains a word in English (namely “bot”, which is a common abbreviation for the English word “robot”), and that it is written in Latin letters and not in Chinese characters; the fact that the website linked to the disputed domain name has English texts with “the domain is for sale” in both Chinese and English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and decides that the language of this proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

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A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark SAMSUNG, based on its intensive use and registration of the same as trademarks in various jurisdictions, including in the jurisdiction where the Respondent is based, namely China.

Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, in the Panel’s opinion, the disputed domain name consists of two elements, namely the Complainant’s registered trademark for SAMSUNG, combined with the descriptive term “bot”, which is a common abbreviation in English for the word “robot”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark SAMSUNG, as its sole distinctive and dominant feature, and that the addition of the term “bot” does not prevent a finding of confusing similarity. The Panel also finds that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this proceeding) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s
registered trademark, and that the Complainant has satisfied the requirements of the first element under the

Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making a legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this proceeding.

Moreover, upon review of the facts and evidence submitted, the Panel notes that the disputed domain name directs to an active domain name auction webpage, where the disputed domain name is offered for sale, and that the Respondent makes no other use of the disputed domain name. In the Panel’s view, this shows that the Respondent’s intention was not to make any use of the disputed domain name as a bona fide provider of goods or services, or to make legitimate noncommercial use or fair use of the disputed domain name.

Instead, it shows the Respondent’s intention to mislead and divert Internet users for commercial gain to the domain name auction webpage offering the disputed domain name for sale, by taking unfair advantage of the goodwill and reputation of the Complainant’ trademarks for SAMSUNG. The Panel finds that such use does not confer any rights or legitimate interests in respect of the disputed domain name onto the Respondent.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name, which is confusingly similar to the Complainant’s well-known trademark for SAMSUNG and contains such mark in its entirety, is clearly intended to mislead and divert consumers away from the Complainant’s official website to the website linked

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to the disputed domain name. The Panel also considers that the Complainant’s SAMSUNG trademarks constitutes a clearly intentional attempt to target the Complainant’s well-known trademark, of which he could not reasonably be unaware. These findings are reinforced by the fact that the Respondent chose to register the disputed domain name, which is identical to the Complainant’s prior trade name for its robotics platform and line of robots which it brands as “Samsung Bot”. The Complainant also provides evidence that online articles appeared about this “Samsung Bot” platform in January 2019, i.e., approximately a month before the date of registration of the disputed domain name. Based on the above elements, the Panel finds that the registration of the disputed domain name was obtained in bad faith.

became well known many years prior to the Respondent’s registration and use of the disputed domain name.

As to use of the disputed domain name in bad faith by the Respondent, the disputed domain name currently links to a website offering the disputed domain name for sale. This leads the Panel to conclude that the Respondent is using the disputed domain name to try to sell it to the Complainant, who is the owner of the corresponding trademark for SAMSUNG, or to a competitor of the Complainant, and to obtain unjustified financial benefits through such sale. The Panel considers that this constitutes direct evidence of bad faith of the Respondent under paragraph 4(b)(i) of the Policy.

Finally, the Respondent has failed to provide any response or evidence to establish his good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

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 <samsungbot.com> be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: April 14, 2022