Westmore · UDRP DecisionRakuten.app
The Panel ordered transfer of <rakuten.app>. It found the domain incorporated the Complainant’s RAKUTEN mark in its entirety, that the Respondent had no rights or legitimate interests, and that registration and use were in bad faith. The bad-faith finding relied on the distinctiveness and fame of the mark, the prior offer to sell the domain, the Respondent’s default, use of a privacy service, and passive holding without a plausible good-faith use.
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The decision illustrates how an exact-match domain involving a distinctive, well-known mark can satisfy bad faith where an earlier sale offer is followed by passive holding. The Panel did not treat inactivity as neutral; it assessed the totality of the circumstances, including the mark’s fame, the absence of any plausible legitimate use, nonresponse, and privacy-service use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Rakuten, Inc. v. Registration Private, Domains By Proxy, LLC / Jack Lim Case No. D2018-1996 1. The Parties The Complainant is Rakuten, Inc. of Tokyo, Japan, represented by Greenberg Traurig, LLP, United States of America (“USA”). The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / Jack Lim of Xiamen, Fujian, China. 2. The Domain Name and Registrar The disputed domain name <rakuten.app> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018. The Center appointed Karen Fong as the sole panelist in this matter on October 9, 2018. 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 Japanese e-commerce and Internet company founded in 1997. The Complainant’s businesses span a variety of sectors, including e-commerce, digital content, communications, and fintech. For example, its B2B2C e-commerce platform, Rakuten Ichiba, is one of the largest e-commerce websites in Japan, with an active membership of about 83 million (two-thirds of the Japanese population). And the Complainant’s global gross transaction volume is around JPY 12.1 trillion (USD 118 billion) as of December, 2017. The Complainant has also been active in China since at least as early as 2008. It provides global marketplace services in China which enable Chinese consumers to purchase products from Japanese merchants of Rakuten Ichiba. The Complainant has online mall services in China through a joint venture with Baidu beginning in 2010. It has also opened a shop account on “www.jd.com” in 2015 and made a partnership agreement with “www.kaola.com” in 2016, through which the Complainant has provided Japanese products to Chinese consumers. The Complainant operates its primary website at “www.rakuten.com” and uses the <rakuten.com> domain name for its email addresses and to conduct its business. It’s online marketplace, which is located at “www.rakuten.com”, offers over 18 million products and has over 20 million customers. The Complainant also had a mobile app which was available on the Apple App Store and Google Play, and which is currently being redeveloped. The Complainant owns multiple trade mark registrations for trade marks incorporating its RAKUTEN trade mark in at least 55 jurisdictions including in the USA where one of the Respondent’s is based. This includes USA Registration No. 4088493 for R RAKUTEN, issued January 17, 2012. The Complainant also owns multiple trade mark registrations in China for the RAKUTEN trade mark where the underlying Respondent is based. The earliest word mark registration for RAKUTEN in China is Chinese Registration No 5927986 for R RAKUTEN issued October 21, 2008. The Respondent registered the Domain Name on May 5, 2018. The Domain Name previously resolved to a website offering to sell the disputed domain name, and currently resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trade mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the RAKUTEN trade mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.app”. It is viewed as a standard registration requirement ( section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 , that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element. The Complainant submits that the Respondent is not commonly known by the RAKUTEN trade mark or the Domain Name. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the RAKUTEN trade mark or apply for any domain name that incorporates the RAKUTEN trade mark. There is no evidence of any use or demonstrable preparation to use the Domain Name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Name comprising a trade mark with which it has no connection. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since the RAKUTEN trade mark has no other dictionary significance and is also very well known. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0 ). In light of the above, the Panel finds that registration is in bad faith. The Domain Name previously resolved to a website offering for sale the Domain Name, which is further evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy. The fact that the Domain Name is currently resolving to an inactive website does not prevent a finding of bad faith under the “passive holding” principles which are laid out in section 3.3 of the WIPO Overview 3.0 . In this case the totality of the circumstances to be considered include the fame of the Complainant’s trade mark, the failure of the Respondent to file a response to the Complainant’s cease-and-desist letter or to submit a Response in this proceeding, its use of a privacy service to shield its identity, and the implausibility of any good faith use for which the Domain Name can be put to. From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element. 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 Domain Name <rakuten.app> be transferred to the Complainant. Karen Fong Sole Panelist Date: October 29, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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