The Complainant is Rakuten, Inc. of Tokyo, Japan, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Gao Mingrui of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2018. On June 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 14, 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 June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2018.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 20, 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 Rakuten, Inc. is an electronic commerce and Internet company founded in Japan and providing e-commerce services in 29 countries, including China where the Respondent resides. The Complainant has produced registration information of several trademarks including: RAKUTEN, China trademark, Registration No. 3819882, registered on February 14, 2006, and applied for on November 28, 2003; R RAKUTEN, European Union trademark, filing No. 011344173, registered on April 18, 2013, and applied for on November 14, 2012; RAKUTEN Japan trademark, Registration No. 5536382, registered on November 16, 2012, and applied for on April 14, 2011.
According to the WhoIs data and the Registrar’s verification response, the Respondent is Gao Mingrui. The Disputed Domain Name registered by the Respondent is as follows:
: registered on August 31, 2017; valid until August 30, 2018.
According to the evidence provided by the Complainant, the Disputed Domain Name previously resolved to a website that contained an imitation of the Complainant’s official RAKUTEN CARD website, with the Rakuten Card logo displayed at the top of the page.
The Registrar confirmed, in its email of June 14, 2018, that the Registration Agreement for the Disputed Domain Name is in English. 5. Parties’ Contentions A. Complainant
The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has registered hundreds of trademarks consisting of or containing the term “Rakuten” in numerous jurisdictions throughout the world, including China (where the Respondent is located). The Disputed Domain Name incorporates in its entirety the mark RAKUTEN. The Disputed Domain Name only differs from the Complainant’s renowned RAKUTEN trademark by the addition of a generic term “card” and a hyphen after the term “Rakuten”.
The term appended to the RAKUTEN trademark in the Disputed Domain Name would rather reinforce the association with the Complainant’s trademark and thus exacerbate the likelihood of confusion because (i) the Complainant provides a large scale credit card service in Japan and abroad; (ii) the Complainant owns a number of subsidiaries whose registered corporate name consists of “Rakuten Card”; and (iii) the Complainant has registered several “Rakuten Card” domain names.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant asserts that the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its RAKUTEN trademark. The Complainant has provided evidence that the Disputed Domain Name has been used fraudulently and for the purpose of seeking to mislead customers of the Complainant into giving the details of their credit cards, which is not a legitimate noncommercial or fair use of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant’s RAKUTEN trademark is highly distinctive and renowned around the world, including in China, where the Respondent is based, and has been continuously used for over 20 years. In addition, the website to which the Disputed Domain Name initially pointed was an imitation of the Complainant’s site, prominently displaying the Complainant’s RAKUTEN logo. While the Disputed Domain Name does not currently resolve to a website, the Complainant has provided evidence that it has been used fraudulently and for the purpose of financial identity theft. The fact that the Respondent is currently not actively using the Disputed Domain Name actively does not cure the Respondent’s bad faith given the overall circumstances of the present case. Therefore, the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service provider], in compliance with the Rules of Procedure, that (i) [the Disputed Domain Name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The Disputed Domain Name incorporates in its entirety the trademark RAKUTEN. The term “card”, which is appended after “rakuten”, does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel concludes that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name”.
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Numerous previous panels have found under the UDRP that “once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name”. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
The Complainant has established that it is the owner of the RAKUTEN trademarks and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant’s trademarks.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent or that the Respondent is commonly known by the Disputed Domain Name.
The Respondent did not submit any allegation or evidence indicating any rights or legitimate interests as set forth in paragraph 4(c) of the Policy. The Respondent did not allege nor provide evidence to establish authorization from the Complainant. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.
Prior to the registration of , the Complainant’s RAKUTEN trademark had become highly distinctive and renowned in China where the Respondent is based, and has been continuously used for over 20 years. No allegation or evidence suggests that the Respondent selected the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. Therefore, the Panel finds that the Disputed Domain Name was registered in bad faith.
While the Disputed Domain Name does not currently resolve to an active website, the Complainant has provided evidence that it has been used fraudulently and for the purpose of financial identity theft. According to the evidence provided by the Complainant, the Disputed Domain Name previously resolved to a website that contained an imitation of the Complainant’s official RAKUTEN CARD website, with the Rakuten Card logo displayed at the top of the page. Moreover, UDRP panels have consistently found that the passive holding of a domain name does not preclude a finding of use in bad faith. Panelists should consider the totality of the circumstances in each case, and considering the circumstances in this case, the Panel is convinced that the Disputed Domain Name has been used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 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 Disputed Domain Name, be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: August 1, 2018
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