The Complainant is RocketGate PR, LLC, Puerto Rico, represented by Hatton, Petrie & Stackler APC, United States of America (“United States”).
The Respondent is Coupang Corp., Republic of Korea, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2019, the Registrar transmitted by email to the Center its verification response indicating that the registration agreement is in Korean and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On August 2, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On August 6, 2019, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding. On August 9, 2019, the Respondent consented to English as the language of the proceeding.
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 the Respondent in English and Korean of the Complaint, and the proceedings commenced on August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Response was filed with the Center on August 27, 2019. The Respondent requested a three-member Panel in the Response.
On August 28, 2019, the Complainant submitted a Supplemental Filing. On August 29, 2019, the Respondent also submitted a Supplemental Filing.
The Center appointed Luca Barbero, John Swinson and The Hon Neil Brown Q.C. as panelists in this matter on September 24, 2019. The Panel finds that it was properly constituted. Each member of 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.
The due date for decision was postponed to October 15, 2019. 4. Factual Background
The Complainant has been active in the provision of electronic processing of credit card transactions and electronic payments since July 5, 2007, and has been using the trademark ROCKETPAY since October 2014, to identify its online electronic wallet aimed at facilitating the Complainant’s offering of credit card payment processing.
The Complainant is the owner of the United States trademark registration No. 4887756 for ROCKETPAY (word mark), filed on October 27, 2014 and registered on January 19, 2016, for the following services in international class 36: “Providing online payment wallet, namely, providing electronic processing of credit card transactions and electronic payments via a global computer network, financial transaction services in the nature of providing secure commercial transactions and payment options, and providing on-line stored value accounts in an electronic environment; electronic processing of credit card transactions and electronic payment services”.
The Complainant is also the owner of the domain name , which was registered on December 6, 2007, and is used by the Complainant to promote its services under the trademark ROCKETPAY.
The Respondent is an ecommerce retail shopping company which was established in Republic of Korea in August 2010, and has been using the trademark ROCKETPAY in connection with its one touch payment system since 2015.
The Respondent is the owner of numerous trademark registrations for ROCKETPAY (word mark), the first of which were filed on August 19, 2015, in International classes 9, 38, 41, and 43. Amongst others, the Respondent is the owner of the International trademark registration No. 1439098 for ROCKETPAY, registered on October 12, 2018, in classes 9 and 36, designating Cambodia, India, Indonesia, Japan, Lao People’s Democratic Republic, Philippines, Singapore, Thailand, and Viet Nam.
The Respondent also owns other ROCKET-formative trademark registrations in Republic of Korea and elsewhere, including the Korean trademark registration Nos. 41-0313147 and 41-0327462 for ROCKET 배송 (where the Korean portion of the trademark corresponds to the English term “delivery”), filed on April 10, 2014.
The disputed domain name was registered on February 11, 2016, and is not pointed to an active website.
The Respondent also registered other ROCKET-formative domain names, including , , and . 5. Parties’ Contentions A. Complainant
The Complainant contends that it satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case on the basis of its registered trademark ROCKETPAY.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- the Respondent, by holding a domain name identical to the Complainant’s trademark, falsely suggests affiliation with the trademark owner;
- the Respondent, by passively holding the disputed domain name, did not make a demonstrable use in connection with a bona fide offering of goods and services.
The Complainant submits that the Respondent knew or should have known the Complainant’s trademark and registered the disputed domain name in bad faith since:
- the Respondent recently applied for a trademark consisting of the Korean translation of ROCKETPAY in class 36 and, therefore, the disputed domain name would be apparently intended to facilitate the sale of services competing with those provided by the Complainant, in the same virtual area;
- considering the notoriety of its mark and the Internet’s global and instantaneous reach, the Respondent cannot credibly claim to have been unaware of the mark especially considering the similarity between the two services, which have in both cases been registered in international class 36;
- a failure to conduct even a cursory search of the Internet has been found to support a finding of bad faith;
- the Respondent had constructive notice of the Complainant’s United States trademark;
- the Respondent appears to have registered the disputed domain name in order to intentionally attempt to attract, for commercial gain, Internet users to its website for commercial gain. B. Respondent
The Respondent states that the first element of the Policy does not need to be addressed since the Respondent’s prior rights in Republic of Korea establish the Respondent’s rights in the disputed domain name and its lack of bad faith.
With specific reference to rights or legitimate interests in respect of the disputed domain name, the Respondent states that it holds full legal rights to the disputed domain name due to its prior registrations for ROCKETPAY and other ROCKET-formative trademarks in Republic of Korea and elsewhere.
Moreover, the Respondent asserts that it made demonstrable preparations to use the disputed domain name as part of a defensive effort to promote or protect its various ROCKET-formative brands and services from cybersquatters.
With reference to the circumstances evidencing bad faith, the Respondent indicates that it did not register the disputed domain name to target the Complainant.
The Respondent further submits that the Complainant’s assertions regarding bad faith are to be considered incorrect for the following reasons:
- the Complainant’s trademark is limited in scope, geographically and temporally;
- the Complainant has provided no evidence to support the assertion that its rights in the ROCKETPAY trademark extend beyond the United States, and certainly not to Republic of Korea where the Respondent has prior rights;
- the Complainant’s claim that it has used the ROCKETPAY trademark since October 1, 2014, is not sufficiently supported;
- the evidence provided by the Complainant regarding its ROCKETPAY mark is weak and proves in no way, that the mark was famous or well-known in the United States or abroad at the time of registration of the disputed domain name;
- the Respondent’s timeline of events shows that the Respondent had already started registering
ROCKET-formative trademarks independently in Republic of Korea, before the Complainant applied to register its ROCKETPAY mark in the United States. Moreover, the Respondent registered the disputed domain name long after it had filed the numerous Korean ROCKETPAY applications, which occurred before the Complainant’s United States trademark had been published for opposition;
- the Respondent was unaware of the Complainant’s trademarks until its first United States ROCKETPAY application was refused, which was over a year after it registered the domain name;
- even if the Respondent had known about the Complainant’s rights, the Complainant’s United States registration would not have prohibited the Respondent from using the identical mark for identical services in another jurisdiction where the Complainant had no rights.
In view of the above, the Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking, stating that the Panel should find that the Complainant should have known it could not prevail in this proceeding because:
- the Complainant was aware of the Respondent’s ROCKETPAY trademark in Republic of Korea as it cited the Respondent’s United States application to register ROCKETPAY in Korean characters, as well as its International registration designating multiple jurisdictions under the Madrid Protocol. Furthermore, the Complainant had listed in its annexes, the Respondent’s United States trademarks and applications for other ROCKET-formative marks, each of which cites an International trademark registration as the basis for the application, which means the Complainant was aware of the Respondent’s other trademarks but intentionally withheld this information in its Complaint;
- the Complainant provided no evidence to support its theory on the Respondent’s constructive knowledge. C. Complainant’s Supplemental Filing
The Complainant’s Supplemental Filing merely reiterates the same statements made in the initial Complaint and attaches further proof related to its trademark registrations for ROCKETPAY in Singapore, United Kingdom and European Union, as well as a pending trademark filing for ROCKETPAY trademark in Canada. D. Respondent’s Supplemental Filing
The Respondent requests that the Center should not consider the Complainant’s unsolicited Supplemental Filing for the following reasons:
- the Complainant has not explicitly acknowledged it is requesting that the Panel disregard the Policy’s single-pleading rule;
- the Complainant has not provided any ground on which the Center should exercise its discretion to admit its unsolicited supplemental filing;
- the Complainant’s supplemental submission only reiterates the arguments previously made in its Complaint and attaches additional trademark registrations/applications for ROCKETPAY outside United States;
- the Complainant’s Supplemental Filing is irrelevant as the additional trademark registrations for ROCKETPAY cited by the Complainant do not establish that the Complainant’s trademark was well-known outside the United States, least of all not in Republic of Korea, where the Respondent has prior rights in the ROCKETPAY trademark. 6. Discussion and Findings 6.1. Preliminary procedural issue: Supplemental Filings
Before entering into the merits of the case, the Panel addresses the issue of the unsolicited Supplemental Filings submitted by the Parties to the Center.
No provision concerning supplemental filings is made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.
According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.,WIPO Case No. D2017-0481.
In the case at hand, the Panel notes that the Complainant’s Supplemental Filing only serves to reiterate some of the points already stated in the original Complaint, with the exception of the new annexes related to a pending trademark filing for ROCKETPAY trademark in Canada and additional trademark registrations for the ROCKETPAY trademark in Singapore, United Kingdom and European Union, which in any case do not sufficiently prove the Complainant’s renown worldwide.
The Panel notes that none of the Respondent’s arguments in the Response was unforeseeable and finds that the Complainant’s supplemental submissions is not grounded on evidence that was not available to the Complainant when the Complaint was filed.
In view of the above and since the Complainant has not demonstrated the presence of any exceptional circumstance required for admitting a supplemental filing, the Panel has decided not to consider the Complainant’s additional annexes, brought to the Panel’s attention after the filing of the Complaint. Nevertheless, the Panel notes that, should the Panel have admitted the Complainant’s Supplemental Filing, the outcome of the case would have been the same. 6.2. Substantive Issues
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Panel finds that the Complainant has established rights on the trademark ROCKETPAY based on its United States trademark registration cited in Section 4 above. The Panel further notes that the Complainant’s trademark is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.org”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the case at hand, the Complainant states that the Respondent has no rights or legitimate interests since the disputed domain name, being identical to its trademark ROCKETPAY, would suggest an affiliation with the Complainant and the Respondent’s passive holding would not amount to a bona fide offering of goods or services or to a fair use of the disputed domain name.
As mentioned above, the Respondent has demonstrated that it has been providing a line of services prefixed “ROCKET”, the first of which, named ROCKET 배송 (“Rocket Delivery”), was launched in 2014, and was subject of a trademark registration filed by the Respondent in Republic of Korea on April 10, 2014, six months before the filing of the Complainant’s trademark in the United States.
Moreover, the Respondent appears to have been using the trademark ROCKETPAY in good faith outside the United States territory since 2015. The Respondent has also demonstrated that it is the rightful owner of numerous trademark registrations for both ROCKET-formative services – including ROCKET MONEY, filed in August 2015 – and the ROCKETPAY online electronic-wallet, both in Republic of Korea – where the Complainant has no trademark rights, according to the records - and on an international level. Amongst others, as detailed above, the Respondent is the owner of trademark registrations for ROCKETPAY in Republic of Korea filed in August 2015, before the registration of the disputed domain name, which occurred in 2016.
Therefore, based on the documents and statements submitted by the Parties, the Panel finds that, before receiving notice of the dispute, the Respondent was already using the ROCKETPAY trademark and service in connection with a bona fide offering of products and services and, therefore, the Respondent was using, and is continuing to use, the term ROCKETPAY in good faith in the disputed domain name.
Therefore, the Panel concludes that the Respondent has rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
In light of the findings with respect to rights or legitimate interests, the Panel does not need to address the issue of registration and use of the disputed domain name in bad faith. However, the Panel notes that there is no evidence on record that the Respondent registered the disputed domain name in bad faith with the intention to target the Complainant and its trademark.
The Complainant argues that the Respondent knew or should have known of the Complainant’s trademark at time of registration of the disputed domain name since the Respondent is a competitor of the Complainant – having applied for a trademark in Republic of Korea for ROCKETPAY in the same class for similar services as the ones of the Complainant’s trademark – and a Google search would have identified the Complainant and its trademark. On the other hand, the Respondent claims that it had no knowledge of the Complainant until it tried to file its trademark application for ROCKETPAY in the United States in 2017 and was rejected.
The Panel notes that, besides conclusory allegations, the Complainant has provided no evidence that the Respondent knew or should have known of the Complainant at the time the Respondent registered the disputed domain name. Indeed, according to the records, the Complainant has not provided evidence of reputation at all, let alone in 2015 (when the Respondent registered its ROCKETPAY trademarks in Republic of Korea) or 2016 (when the Respondent registered the disputed domain name).
However, if the Respondent had known the Complainant and its trademark at the time of registration of the disputed domain name and not only after the filing of its trademark application for ROCKETPAY in the United States as stated in the Response, based on the evidence on records, the Panel finds that, on balance of probabilities, the Respondent registered the disputed domain name in good faith as a defensive measure to protect itself from third-party infringing registrations and not to target the Complainant and its trademark. The Respondent’s registration of the disputed domain name in 2016, almost six months after the Respondent applied for its ROCKETPAY trademarks in Republic of Korea, the Respondent’s ownership of several registrations for ROCKET-formative trademarks – including one preceding the Complainant’s trademark ROCKETPAY in the United States – and domain names (including , , and ) support such conclusion.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
In the case at hand, the Panel denies the finding of Reverse Domain Name Hijacking since the Complainant was successful in proving the identity of the disputed domain name with its prior identical registered trademark in the United States. However, the Panel wishes to highlight that a more accurate search and analysis of the Respondent and its trademarks would have revealed the Respondent’s rights over the trademarks ROCKET and ROCKETPAY and, consequently, the weakness of the Complaint. Furthermore, the Complainant has based its claims mostly on conclusory statements about the notoriety of its trademark and service without providing evidence to support its allegations. 7. Decision
For the foregoing reasons, the Complaint is denied. The Respondent’s request to make a finding of Reverse Domain Name Hijacking is also denied.
Luca Barbero
Presiding Panelist
John Swinson
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: October 14, 2019
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