Nominet UK Dispute Resolution Service

Dispute no. 03702

Samsung Electronics Co., Ltd. -v- Robert Morrison

Decision of Independent Expert

1.	PARTIES

Complainant:	Samsung Electronics Co., Ltd.
Country:		KR

Represented by:	Saunders & Dolleymore

Respondent:	Mr Robert Morrison
Country:		AU

2.	DOMAIN NAME

<samsungcameras.co.uk> (the “Domain Name”)

3.	PROCEDURAL BACKGROUND

3.1	The Complaint entered Nominet’s system on 24 May 2006. Hardcopies of the Complaint were received by Nominet on 25 May 2006. The Complaint was validated and sent to the Respondent on 26 May 2006. 

3.2	No response was received within the deadline for response on 20 June 2006 and therefore no response was forwarded to the Complainant. Mediation not being possible, the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service (the “Procedure”) on 26 June 2006.

3.3	On 27 June 2006, Matthew Harris, the undersigned (the “Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES

4.1	The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2	Paragraph 15(b) of the Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint”.
4.3	Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent’s attention. I have seen correspondence to both the e-mail and postal addresses held for the Respondent on Nominet’s records. The Complaint was sent by mail to the postal address held on file for the Respondent and copies of this correspondence were sent to the e-mail addresses on file, these being toscawan@mailpace.com, postmaster@samsungcameras.co.uk and admin@melitaweb.net. A ‘delivery failure’ notification was received for the postmaster@samsungcameras.co.uk address.  
4.4	As was stated by the Appeal Panel in the decision in The Proctor & Gamble Company -v- Michael Toth DRS 03316, it is the Respondent’s obligation to keep his contact details up-to-date and, provided Nominet complies with its obligations as to service under paragraph 2 of the Procedure, the communications are “deemed” to have been received by the Respondent for the purposes of the Policy. Given that neither the postal communication sent to the Respondent’s address nor the e-mail communication sent to toscawan@mailpace.com and admin@melitaweb.net were returned, it seems likely that the Respondent received a copy of the Complaint. In any event, I am satisfied that the Respondent is deemed to have been notified of proceedings under the Dispute Resolution Service.
5.	THE FACTS

5.1	The Complainant is part of a group which is registered as a foreign company in the UK. Based in South Korea, the Complainant was established in 1969 and is an internationally known manufacturer of many kinds of consumer and electronic devices, including DVD players, televisions, digital cameras, computers, mobile phones, microwave ovens, refrigerators, air conditioners, washing machines and memory chips.  

5.2	The Respondent is Robert Morrison. The Respondent registered the Domain Name on 10 August 2004.

5.3	The website operated by the Respondent from the Domain Name contains links to the websites of other businesses, including the Complainant, which appear to be manufacturers and/or sellers of digital cameras, camcorders and batteries.	

6.	THE PARTIES’ CONTENTIONS

Complainant

6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has Rights (as defined in the Policy) and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration. The reasons given for this are as follows.

6.2 	The Complainant is the registered proprietor of the following trade marks: UK trade mark no. 1528200 for the “SAMSUNG’’ mark and device filed on 28 February 2003; UK trade mark no. 2228164 for the word mark “SAMSUNG’’, filed on 4 April 2000; UK trade mark 2409683 for the word marks “SAMSUNGCAMERA’’ and “SAMSUNG CAMERA’’ filed on 21 December 2005; Community trade mark no. 506881 for the “SAMSUNG’’ mark and device filed on 9 April 1997; Community trade mark no. 1877901 for the word mark “SAMSUNG’’ filed on 28 September 2000 and Community trade mark no. 1377860 for the “SAMSUNG DIGITALL EVERYONE’S INVITED’’ mark and device filed on 10 November 1999. All of these registrations are registered in the name of the Complainant.

6.3	The trade mark “SAMSUNG’’ has been used in the UK by the Complainant and others in the same group of companies who are authorised to use it since at least 1984 and a significant reputation has been acquired as a result. The Complainant’s UK company registered the domain name samsungcamera.co.uk on 17 January 2002.

6.4	The Respondent’s Domain Name is being used to promote, market and advertise cameras generally, including those in competition with the Complainant which bear the Complainant’s trade mark. This use has not been authorised by the Complainant.

6.5	The Domain Name in the hands of the Respondent is abusive because (a) it takes unfair advantage of the reputation of the Complainant and uses this to entice those looking for Samsung cameras to consider those of Samsung’s competitors; (b) it is using the trade mark Samsung in a manner designed to imply that the website is authorised, approved or operated by or on behalf of the Complainant when it is not; (c) the Respondent is a serial offender with at least three DRS cases against him in the last two years.

Respondent

6.6 	As set out above, the Respondent has served no Response in these proceedings.

7. 	DISCUSSION AND FINDINGS:

What needs to be proved

7.1	To succeed under the Nominet Dispute Resolution Service Policy (the “Policy”), the Complainant must prove on the balance of probabilities, first, that he has Rights in respect of a “name or mark” that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).

7.2 	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

“Abusive Registration means a Domain Name which either:

(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights: OR

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

7.3	The failure by the Respondent to file submissions in response does not entitle the Complainant to the equivalent of a default judgment on these issues. The Complainant still has to make out his case on the balance of probabilities under the Policy in order to obtain the decision it wants.   

Complainant’s Rights

7.4	It is apparent from the Complaint that the Complainant has registered trade mark rights in the names “SAMSUNG’’, “SAMSUNGCAMERA’’ and “SAMSUNG CAMERA’’. When one discards the letter “s’’ and the “.co.uk” suffix from the Domain Name, the Domain Name is essentially identical to two of the Complainant’s registered trade marks (there being no spaces between words in domain names). In addition, the Domain Name is only one letter different (the addition of the “s’’) from the Complainant’s registered domain name samsungcamera.co.uk. 

7.5 	Accordingly, I find that the Complainant has shown that it has Rights in a name or mark which is similar to the Domain Name within the meaning of paragraph 2(a)(i) of the Policy.

Abusive Registration

7.6	Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that a domain name registration is an Abusive Registration. It would appear from the Complaint that the Complainant is alleging that paragraphs 3(a)(ii) and 3(c) are of application in this case.  

7.7	Paragraph 3(a)(ii) states:

“Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”

7.8	Paragraph 3(c) states:

“There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted.”

7.9	Analysis of the allegations under paragraph 3(a)(ii) can be brief. The Respondent’s intentions in registering the Domain Name appear to have been to register a domain name similar enough to a well-known domain name so that the slightest typing error could direct an unsuspecting user towards a site they did not intend to visit. Even if the Domain Name directs the user towards genuine sales of genuine products, the decision in Seiko UK Limited -v- Designer Time/Wanderweb [2002] DRS 00248 shows that this is not necessarily a defence to the allegation of an Abusive Registration.
  
7.10	However, detailed consideration of these arguments is not necessary. Having examined the decisions referred to in paragraph 5.4 above, I am satisfied that the Respondent has been found to have made an Abusive Registration in at least six Dispute Resolution Service cases in the last two years. These are Michael Page International Plc -v- Robert Morrison [2006] DRS 03578, Sheet Music Direct Ltd -v- Robert Morrison [2006] DRS 03408, Search Press Limited -v- Robert Morrison [2005] DRS 03035, Harry Corry Ltd -v- Robert Morrison [2005] DRS 03028, Lintran -v- Robert Morrison [2005] DRS 03021 and Guilbert UK Holdings Limited -v- Robert Morrison DRS [2005] 02775.
	
7.11	Out of these six decisions, five give an address for the Respondent in Malta and one gives the same Australian address as in this Complaint. Nominet considers the Respondent in this Complaint to be the same as in each of these decisions (see http://www.nominet.org.uk/disputes/drs/decisions/?contentId=2208). I agree. The reasons for this are as follows:

	(i)	The address given for admin and billing details by the Respondent for the Domain Name is the following address in Malta: 

Flat 2 Glenn Flats, 
Spiru Spiteri Street, 
Tarxien PLA11 
Malta.

	(ii)	In the cases Sheet Music Direct Ltd -v- Robert Morrison [2006] DRS 03408, Search Press Limited -v- Robert Morrison [2005] DRS 03035, Harry Corry Ltd -v- Robert Morrison [2005] DRS 03028, Lintran -v- Robert Morrison [2005] DRS 03021 and Guilbert UK Holdings Limited -v- Robert Morrison DRS [2005] 02775, the address of the Respondent is as follows:

			106 St Joseph Street
			Paola
			PLA06
			Malta.

	(iii)	It seems improbable that two different Robert Morrisons with an association with Malta are engaged in domain name activity. However, any doubt there is in this respect can be dismissed because the e-mail address for the admin contact and billing contact for the Domain Name is admin@melitaweb.net and this is an address used by the Respondent in four of the above cases including, for example, Harry Corry Ltd -v- Robert Morrison [2005] DRS 03028.    

7.12	Although paragraph 4(c) of the Policy states that the presumption of Abusive Registration can be rebutted by the Respondent proving that the registration of the Domain Name is not an Abusive Registration, the Respondent has not done so in this case.

7.13	I am satisfied therefore that the Domain Name is an Abusive Registration within the meaning of the Policy.

8.	DECISION

8.1 	I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration under paragraph 2(a) of the Policy.

8.2	I therefore determine that the Domain Name should be transferred to the Complainant.

Matthew Harris
30 June 2006