Technology company Samsung has failed to convince a panellist at the World Intellectual Property Organization (WIPO) to transfer the domain name ‘samsunghub.com’.
Samsung complained about the domain, a fan site resolving to ‘sammyhub.com’, under the Uniform Domain Name Dispute Resolution Policy (UDRP).
As well as reporting on Samsung news, the site hosted advertising provided by Google AdSense, which displays targeted adverts matching keywords that advertisers bid on.
In a decision on May 18, which was published on June 3, WIPO panellist Nicholas Smith dismissed Samsung’s complaint.
After finding that the domain does incorporate Samsung’s registered trademark, Smith was left to decide whether the registrant, an Indian man, had a legitimate interest in the domain and had registered and used it in good faith.
Registrants of fan sites can have a legitimate interest in a domain that includes a complainant’s trademark, as long as the site has been used, is distinctive from an official site and is non-commercial in nature.
Some panels have found, however, that having advertising precludes fan site status.
But there are some cases where “a degree of incidental commercial activity” is allowed, especially when it is clear that the respondent is not trying to pass itself off as the trademark owner and doesn’t sell any goods on the site.
“Other than the placement of Google advertisements on the website, the respondent’s website appears to be non-commercial,” the panellist said, noting that the site had been used since 2006.
Samsung claimed that because some of the adverts referred to other companies, which may or may not be its competitors, there was enough evidence to show bad faith.
But the panellist said: “There is no evidence in the record that casts doubt on the respondent’s claim that the advertising links are sent automatically by a third-party (Google) advertising feed provider using keyword search techniques rather than human selection.
“It cannot be assumed that the respondent requested such links or was even aware of them before receiving notice of this dispute.”
Flip Petillion, partner at Crowell & Moring LLP, said he agreed with the “well-written and well-reasoned” decision, especially the part covering the respondent’s use of Google AdSense.
The case re-emphasises that UDRP panels are increasingly considering the defence of laches – which is a little-used legal doctrine that can thwart complainants who have waited too long to file a UDRP case – according to Howard Neu, who represents domain name registrants in UDRP cases.
“One of the most important factors here is that Samsung waited so long [before filing the case],” he said, adding that it was unclear why there was a delay.
Petillion said “there is nothing in the UDRP rules” that stops complainants from waiting several years to file a complaint, and doing so should not necessarily count against them.
In a case last year, a UDRP panellist made the unusual move of refusing to transfer a website to the complainant – Victoria’s Secret – by relying solely on the laches defence.
This article was first published on 04 June 2013 in World IP Review
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