Complainant is Rakuten, Inc. of Tokyo, Japan, represented by Greenberg Traurig, LLP, United States of America (“United States”).
Respondent is Whois Agent, Whois Privacy Service, Inc. of Kirkland, Washington, United States / MARVIN RUFF of Cape Girardeau, Missouri, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 12, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2018.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on July 12, 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
According to WhoIs the Domain Name was registered on January 22, 2018.
Complainant is a Japanese e-commerce and Internet company founded in 1997. 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 and domestic gross transaction volume of around JPY 7.1 trillion.
Complainant owns multiple trade mark registrations for trade marks incorporating its RAKUTEN trade mark in the United States where Respondent is purportedly located, including:
(a) U.S. Reg. No. 4,088,493 for RAKUTEN, issued January 17, 2012;
(b) U.S. Reg. 4,088,492 for R RAKUTEN, issued January 17, 2012 (“Complainant’s Mark”).
In addition to its trade mark registrations in the United States, Complainant has approximately 300 trade mark registrations for Complainant’s Mark covering at least 55 countries, including the 28 member countries of the European Union. 5. Parties’ Contentions A. Complainant
Complainant states that it has been active in the United States since early 2000, where it has significant ownership interests in Pinterest and Lyft, and is the owner of Ebates, Linkshare (rebranded Rakuten Marketing), Slice, OverDrive, and B (rebranded R). Complainant states it also has partnerships with professional sports teams including the Golden State Warriors and FC Barcelona.
Complainant asserts that it operates its primary website at “www.r” and it uses the domain name for its email addresses and to conduct its business. Complainant’s online marketplace, located at “www.r”, offers over 18 million products and has over 20 million customers.
Complainant contends that ownership of valid United States federal trade mark registrations for RAKUTEN demonstrates its rights in Complainant’s Mark.
Complainant submits that the Domain Name is identical to its full corporate name, and is confusingly similar to Complainant’s Mark as it consists of Complainant’s Mark in its entirety, with the addition of the generic term “inc” (being the abbreviation for “incorporated”) and the generic Top-Level Domain (“gTLD”) “.com.”
Respondent, without Complainant’s authorization or consent, registered the Domain Name in January 2018, long after Complainant established its rights in Complainant’s Mark.
Complainant asserts that there is no content posted on a website that resolves to the Domain Name and Complainant is not aware of any content ever having been posted on any such website. Respondent is passively holding the Domain Name. Complainant contends that Respondent’s passive holding of the Domain Name does not constitute a bona fide or legitimate business use.
Complainant states that it has not authorized, licensed, or consented to Respondent’s registration and use the Domain Name, or any confusingly similar variation thereof. Moreover, Respondent is not commonly known by the designation RAKUTEN or anything similar thereto.
Complainant points out that as demonstrated by the above, Respondent registered and uses the Domain Name in bad faith. Respondent had actual knowledge of Complainant’s Mark, as evidenced by Respondent’s use of the mark in the Domain Name.
Complainant further points out that the use by Respondent of a privacy service to register the Domain Name demonstrates Respondent’s bad-faith use and registration of the Domain Name.
On May 11, 2018, Complainant, sent a letter to Respondent by email, advising Respondent of Complainant’s rights in its RAKUTEN trade mark and demanding that Respondent cease and desist from all use of Complainant’s Mark and immediately transfer the Domain Name to Complainant. Respondent never responded to Complainant’s letter. The fact that Respondent failed to respond to the referenced notice and cease and desist demand also suggests that the Domain Name has been registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used in relation to Complainant’s e-commerce and Internet activities and that Complainant has registered Complainant’s Mark.
Complainant submits that the Domain Name is identical to its full corporate name and is confusingly similar to Complainant’s Mark, as it consists of Complainant’s Mark in its entirety, with the addition of the generic term “inc” and the gTLD “.com”. There is clear merit in these submissions and in the absence of any attempt to refute them it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is for all intents and purposes the same as Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant asserts that there is no content posted on a website that resolves to the Domain Name. Complainant further asserts that it is not aware of any content ever having been posted on any such website. Instead, Complainant asserts that Respondent is passively holding the Domain Name and that this does not constitute a bona fide or legitimate business use of the Domain Name.
In the absence of any response or explanation as to Respondent’s intentions or motives the Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Given Respondent’s use and registration of Complainant’s Mark, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.
Passive holding of a domain name does not prevent a finding of bad faith registration and use. Moreover, the Panel concludes that Respondent has registered and used the Domain Name for the purpose of commercial gain. It is of course difficult to infer a motive when Respondent has done little with the Domain Name. Regardless, the Domain Name consists of Complainant’s Mark and the additional term “inc” corresponding to “incorporated”, a term referencing a company, which Complainant’s Mark corresponds to, and thus the disputed domain name impersonates Complainant and falsely suggests sponsorship of endorsement by Complainant. See Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031. See also section 2.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, in the face of a failure to respond to Complainant’s allegations, Complainant’s submission that the use by Respondent of a privacy service to register the Domain Name demonstrates Respondent’s bad-faith use and registration of the Domain Name takes on added relevance.
Given the reputation in Complainant’s Mark and the existence of its registrations of Complainant’s Mark the Panel is able to infer that Respondent registered and used the Domain Name in bad faith and accordingly that the third limb of the Policy has been met. 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, , be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: July 26, 2018
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