Sansung has just lost a UDRP on the domain name SamsungHub.com which is being used as a re-directed domain to a site that has Adwords.
Samsung does have a product named Samsung Hub but that just rolled out in 2011, the domain name was registered in 2006
Here are the relevant facts and findings from the one member panel:
“The Complainant is the owner of a number of trademarks consisting of the word “SAMSUNG” (the SAMSUNG Mark), in jurisdictions across the world, including the United States, where the SAMSUNG Mark was registered in 1981, and the United Kingdom of Great Britain and Northern Ireland, where the SAMSUNG Mark was registered in 1993. Consumer studies indicate that the Samsung brand is one of the most well-known brands worldwide.”
The Domain Name samsunghub.com was registered on March 21, 2006.
The Domain Name resolves to a website which reports on the activities of the Complainant, with particular emphasis on the Complainant’s new products.
“The Respondent’s Website does not reproduce the SAMSUNG Mark, except in the context of its news articles nor does it represent that it is connected to the Complainant, but does contain some advertising maintained by Google Ads.”
The Respondent claims that he has used the Domain Name for the purpose of developing and launching a fan site titled “Samsung Hub”.
The Respondent has put on extensive evidence of the use of the Domain Name as a fan-site from 2006 to 2011.
The Respondent continues to operate a fan site however it is now located at “www.sammyhub.com” and the Domain Name simply redirects towards it.
As such the Domain Name is now only used for re-direction purposes.
Given the Panel’s finding under the bad faith element it has not been necessary to reach a final conclusion under this ground.
The Domain Name has been registered for almost 7 years.
In certain circumstances, “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration” AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011.
There was no explanation for the Complainant’s delay in filing a complaint about the Domain Name.
It is notable that the Complainant in 2011 launched Android app entitled “Samsung Hub”.
Although the Panel’s decision in this case that the Complainant has failed to establish bad faith registration and use does not rest simply on the passage of time between registration of the Domain Name and the Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore, especially considering the Respondent’s extensive use of the Domain Name in that period.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name.
There is no evidence that the Respondent has ever registered a domain name other than the Domain Name.
Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.
The Domain Name has not been passively held, rather it was highly active from the day it was first registered until 2011 after which it was used to redirect to “www.sammyhub.com”.
There are no circumstances that indicate that the the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. There is no evidence that the Respondent has ever attempted to sell the Domain Name. Rather, the Domain Name has always been used for an active fan site with articles about the Complainant being published on a regular basis since 2006.
The Panel finds on the balance of probabilities that the Respondent did not register the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the Respondent’s website.
The Domain Name was first registered in 2006. From that day forward the Respondent has maintained an active website (the Respondent’s Website) which reported and commented on the Complainant’s activities. From 2006 to 2011 the Respondent’s Website was operated from the Domain Name, while from 2011 on the Respondent’s Website was operated from “www.sammyhub”.
The Panel is persuaded by the Respondent’s explanation for the redirection of the Respondent’s Website (to avoid confusion with the Complainant’s Samsung Hub app) and the reason to maintain the Domain Name (to maintain search engine optimization) and does not view either action as evidencing bad faith.
The Panel is not persuaded that the Respondent’s use of the Domain Name as a fan site is improper or that the Respondent lacked rights or legitimate interests in the Domain Name, at least from 2006 to the 2011 redirection.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), notes:
“The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject).”
Other than the placement of Google advertisements on the website, the Respondent’s Website appears to be noncommercial: the Respondent is not offering any goods or services on the Respondent’s Website.
The Respondent does not attempt to pass it off as the Complainant in any way; in particular it does not reproduce the Complainant’s getup or make any claim to be associated with the Complainant.
When the Respondent’s Website was located at the Domain Name, it contained on the front page a disclaimer disassociating itself from the Complainant, which is now located on the “About” page.
The Panel acknowledges that the Respondent’s Website contains advertisements provided by Google AdSense, for which, depending on whether visitors to the site click on them, the Respondent may receive revenue.
However, the mere fact that the Respondent’s Website involves limited commercial activity in the form of the presence of Google advertisements, does not automatically lead to the finding that the Respondent registered and is using the Domain Name in bad faith pursuant to 4(b)(iv) of the Policy.
The Panel finds that this is a case in which the Google advertisements are of an ancillary or limited nature and cannot be used to imply that the Respondent registered and is using the Domain Name in bad faith.
The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. In the present proceeding the Panel is not satisfied that the Complainant has discharged its onus. The Respondent has provided a plausible reason for registering the Domain Name and considerable evidence in support of its factual claims. The Respondent’s conduct in holding the Domain Name for 7 years, operating an essentially noncommercial fan site without attempting to sell the Domain Name provides further support for its assertion that it did not register and does not use the Domain Name in bad faith.
