national arbitration forum

 

DECISION

 

Samsung Electronics Co., Ltd. v. Albery Estates, LLC / Albery, Brian

Claim Number: FA1010001350673

 

PARTIES

Complainant is Samsung Electronics Co., Ltd. ("Complainant"), represented by Daniel T. Rockey of Bullivant Houser Bailey P.C., California, USA.  Respondent is Albery Estates, LLC / Albery, Brian ("Respondent"), Iowa, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <galaxytab.com>, registered with NETFIRMS, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 7, 2010.

 

On October 6, 2010, NETFIRMS, INC. confirmed by e-mail to the National Arbitration Forum that the <galaxytab.com> domain name is registered with NETFIRMS, INC. and that Respondent is the current registrant of the name.  NETFIRMS, INC. has verified that Respondent is bound by the NETFIRMS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@galaxytab.com.  Also on October 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on October 28, 2010.

 

A timely Additional Submission was received from Complainant and determined to be complete on November 1, 2010.  A timely Additional Submission was received from Respondent and determined to be complete on November 8, 2010. 

 

On November 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant

Complainant alleges trademark rights in the term GALAXY TAB and submits that the disputed domain name is “substantially identical” to the trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.

 

The detail of the Complaint is included where necessary under the Discussion below.

 

B.     Respondent

Respondent broadly denies those allegations. Response was filed by Brian Albery who states the he is the owner of Albery Estates, LLC.  Albury raises counter-arguments which are addressed later but, in essence, he claims to be a registered pharmacist and a doctor of pharmacy (PharmD) who asserts his good faith adoption of the disputed domain name on the basis that he registered the disputed domain name for use in connection with the promotion of a cost-saving device he has been developing “for several years” which splits pharmaceutical tablets into halves, thirds or quarters.     

 

C. Additional Submissions

Both parties made Additional Submissions which are referred to as necessary in the Discussion which follows.

 

FINDINGS

1.      Complainant is a massive enterprise which manufactures, amongst other goods, computers, mobile phones and smart phones.

 

2.      Complainant uses the trademark GALAXY S in relation to smart phones, and has announced publicly that it will soon use the trademark GALAXY TAB in relation to tablet computers. 

 

3.      Complainant has filed the following trademark applications with the USPTO : SAMSUNG GALAXY (App. No. 77,928,234 on February 4, 2010); GALAXY S mark (App. No. 85,010,425 on April 9, 2010) and SAMSUNG GALAXY TAB   (App. No. 85,072,856 on June 28, 2010).

 

4.      On February 15, 2010, Complainant’s senior executive told BusinessWeek magazine that Complainant planned to release a tablet computer to compete with the Apple iPad, but without disclosing the intended trademark for the device.

 

5.      Complainant’s same senior executive made a public announcement of the upcoming launch of the GALAXY S smart phones on March 23, 2010.

 

6.      On June 3, 2010, a South African subsidiary of Complainant inadvertently posted news that Complainant intended to release a new tablet computer to be called the GALAXY TAB. 

 

7.      The disputed domain name was registered that same day, June 3, 2010.

 

8.      Respondent has no connection with Complainant and is not authorized to use Complainant's trademark.

 

9.      A website corresponding with the disputed domain name stated: 

 

www.GalaxyTab.com Domain For Sale 

Contact ERASEF301@yahoo.com (Brian) 563-505-9372

 Price $5,000,000

This Website Could Be Used For an Upcoming Tablet or Slate Device. 

 

10.  By August 30, 2010, Complainant had sold one million GALAXY S branded smart phones within the United States and had widely promoted the GALAXY S smart phones in print, television and Internet advertising campaigns throughout the United States.

 

11.  Complainant formally announced the release of the GALAXY TAB tablet computer on September 2, 2010 in Berlin, Germany, and in the United States on September 16, 2010.  Since then, Complainant has widely promoted the GALAXY TAB branded computer in promotional releases, at trade shows, on its website, and in commercial videos available on Complainant’s official YouTube channel.

 

    DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether Complainant has rights in a trademark, followed by an assessment of whether the trademark and the domain name are identical or confusingly similar.

 

Respondent makes a number of contentions in relation to Policy ¶ 4(a)(i) which the Panel regards as misdirected.  Those submissions (i) may be pertinent to other aspects of the Policy, or (ii) they may be pertinent in trademark litigation, but are irrelevant under the Policy.  In the former category are Respondent’s arguments about the relative timing of Complainant’s trademark rights; in the latter class are arguments about the registrability of Complainant’s trademark.  Relevant to both categories – but not Policy ¶ 4(a)(i) – are arguments about the generic character of the trademark, and the parties’ respective fields of business.

 

Policy ¶ 4(a)(i) is concerned only with the question of the existence of trademark rights, not their date of establishment.  Those rights can be secured by registration, but in this case all three of Complainant’s trademarks are pending (and remain so at the time of this Decision) and so do not establish the requisite rights.[i]  Policy ¶ 4(a)(i) nonetheless comprehends so-called “common law” trademark rights acquired through use and reputation.[ii]  In the case, the combined weight of Complainant’s business, its mode and scale of promotion of the new products and brands, the arbitrary and distinctive character of the word GALAXY, and the large scale sale of relevant goods within a brief time, convince Panel that notwithstanding the otherwise short timeline between launch of the goods and the filing of these Administrative Proceedings, Complaint has rights in a trademarks acquired through use and reputation.  Moreover, Panel is prepared to find that Complainant enjoys those rights in the terms GALAXY S and GALAXY TAB, independently of the house name SAMSUNG.

 

The remaining enquiry is whether the domain name is identical or confusingly similar to the trademark GALAXY TAB.  In making that comparison it is broadly accepted that gTLDs can be disregarded as inconsequential.[iii]  Additionally, numerous prior decisions under this Policy have held that the deletion of spaces between words which form a complainant’s trademark is a necessity in the formulation of a domain name and is therefore an irrelevant factor in determining identity of terms.

 

Panel decides that the domain name is legally identical to Complainant’s trademark and accordingly finds that Complainant has established the first element under the Policy.

 

Rights or Legitimate Interests

Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name.  Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.[iv] 

 

Complainant has stated there to be no relationship between it and Respondent so there is no issue in this case of authorized usage of the trademark or permission to register the domain name.

 

The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain name.

 

There is no evidence that Respondent has trademark rights established through use and the very recent applications for registration which it filed are given no weight by the Panel since they post-date the Complaint.[v]

 

Panel finds that Complainant has established a prima facie case and that the burden shifts to Respondent. 

 

Policy ¶ 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

 

Panel can not find compelling evidence that Respondent created the alleged tablet splitting device prior to receiving notice of Complaint.  There is in addition only very pale evidence of the claim that Respondent was working on a business enterprise based on that alleged device.  Moreover, were there legitimacy to Respondent’s explanation, it is difficult to explain its decision to advertise the domain name for sale, at all, and certainly so soon upon its registration.  Finally, the offered sale price - $5,000,000.00 – so ludicrously exceeds Respondent’s likely out-of-pocket acquisition costs so as to give rise to the reasonable inference that Respondent lacks bona fide rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).[vi] 

 

Registration and Use in Bad Faith

Complainant contends that the disputed domain name is just one domain name[vii] in Respondent’s larger scheme to preemptively acquire domain names that are based on trademarks that involve upcoming product releases.[viii]  Complainant argues that Respondent attempts to profit from this scheme by demanding millions of dollars from the respective trademark owners in return for the domain names.

 

Policy ¶ 4(a)(iii) requires both registration and use in bad faith.  However, Panel must first pay regard to Policy ¶ 4(b) which lists four scenarios which, to underscore the wording of the Policy, shall be evidence of the registration and use of a domain name in bad faith.  They are:

 

(i)   circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

 

(ii)  you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;  or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line 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.

 

Panel finds compelling evidence that Respondent’s action fall squarely within all four subparagraphs (i)-(iv).[ix]  For the sake of completeness, Panel will briefly address Respondent’s arguments raised in submission that it acted in good faith because it registered the domain name before Complainant had established trademark rights.

 

Panels have found that the registration of a domain name prior to the establishment of trademark rights will not be in bad faith, as a respondent lacks the requisite knowledge of complainant's non-existant right.  Nevertheless, there are recognised exceptions.  First, earlier panels have been inclined to find registration in bad faith if respondent has acted opportunistically in registering the domain name, even though there had been little chance for complainant to establish its rights in the trademark.  The present matter is, in this Panel’s view, a clear example of such behaviour.[x]

 

Secondly, subparagraphs 4(b)(i), (ii) and (iii) are concerned primarily with a respondent’s state of mind at the time of registration of the domain name.  Contrast subparagraph 4(b)(iv) which is concerned only with a respondent’s use of the domain name (namely, attracting internet users to its website by creating a likelihood of confusion with the complainant’s mark).  Former panels have found that bad faith use in this manner could result in a finding of bad faith use and registration, especially in circumstances where a shadow hung over a respondent’s bona fides at the time of registration.  Accordingly, subparagraph 4(b)(iv) is unique in that it provides an interpretation of the Policy which allows a finding of bad faith registration based solely on bad faith use.  That reading of the Policy has been readily applied where the domain name is registered before trademark rights accrue, there is no conclusive evidence concerning the issue of whether that registration was in good faith or not, however the ensuing use of the domain name was in bad faith.  In that scenario, the Policy itself can justify a finding of both bad faith registration and bad faith use.[xi]  This Panel is of the view that such an interpretation of the Policy is well justified in this case and so finds both registration and use in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <galaxytab.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  November 14, 2010