The Complainant is Rakuten, Inc., Japan, represented by Greenberg Traurig, LLP, United States of America (“United States”).
The Respondent is 林宗兴 (Lin Zong Xing), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2020. On October 30, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 2, 2020. The Respondent requested that the Chinese be the language of the proceeding on November 3, 2020. 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 of the Complaint, and the proceedings commenced on November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties it will proceed to appoint the panel on December 11, 2020. The Center appointed Douglas Clark as the sole panelist in this matter on December 22, 2020. 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 well-known e-commerce and Internet company founded in 1997. In 2019, its global gross transaction volume exceeded USD 180 billion. The Complainant’s business covers a variety of sectors, including e-commerce, digital content, communications, fintech, and banking. The Complainant operates its main website at “www.rakuten.com” and uses the associated domain name to conduct its business. The Complainant has also used its RAKUTEN trade mark for its Internet-based banking and financial services under its well-known name Rakuten Bank since the year 2000. As of the year 2020, Rakuten Bank has over 9 million online bank accounts. The Complainant has used its RAKUTEN trade marks for many years prior to the registration of the disputed domain name. The Complainant owns many prior trade mark registrations in China, where the Respondent is located. These RAKUTEN trade marks include Registration No. 5928375 registered on January 7, 2010; Registation No. 5928378 registered on February 14, 2010; Registation No. 5928376 registered on February 21, 2010; Registation No. 5928379 registered on February 28, 2010; Registation No. 5927989 registered on February 28, 2010; Registation No. 5928377 registered on April 14, 2010; Registation No. 5927988 registered on April 14, 2010; and Registation No. 5927987 registered on June 21, 2010. The Complainant also owns a prior RAKUTEN trade mark registration in the United States, which includes United States Registration No. 4,088,493, registered on January 17, 2012. In addition to the aforementioned registrations, the Complainant has over 200 trade mark registrations for its RAKUTEN trade marks which cover over 50 countries. The disputed domain name The Complainant contends that: (a) The disputed domain name is confusingly similar to its trade mark. The addition of the terms “bank” and “.com” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated; (b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and (c) The disputed domain name was registered and is being used in bad faith. The mere fact that the Respondent has registered a domain name incorporating the trade mark of a well-known company gives rise to an inference of bad faith. The Respondent also had constructive knowledge of the Complainant’s mark based on the registrations of the RAKUTEN trade marks. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Respondent is engaged in abusive registration of domain names based on a number of UDRP decisions against the Respondent in favour of international third-party brands. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not substantively reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues – Language of the Proceeding According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and Respondent regarding the language of the proceeding. The Respondent has requested that Chinese be the language for the proceeding stating the complaint is a complex document and the Respondent is Chinese and that the language she or he uses is Chinese. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds: a) the disputed domain name is formed in Latin script and not in Chinese script; b) the disputed domain name wholly contains the Complainant’s RAKUTEN trade marks and Rakuten Bank name; c) the disputed domain name resolved to a webpage containing an offer to sell the disputed domain name in English; d) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding; and, e) in previous UDRP proceedings involving the same Respondent panels had determined that English be the language of proceedings. In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances: - the Center has notified the Respondent of the proceeding in both English and Chinese; - the Respondent has been the Respondent in other UDRP proceedings where the language of proceedings were English and had filed a substantive response; - an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding; and - the merits of the claim are strongly in favour of the Complainant. 6.2 Substantive Issues The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action: (i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s RAKUTEN trade mark in full with the word “bank” added to it. The positioning of the RAKUTEN trade mark at the beginning of the disputed domain name makes it instantly recognizable. The inclusion of the term “bank” does not prevent a finding of confusing similarity between the RAKUTEN trade mark and the disputed domain name. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)). The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element. The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant 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 has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s RAKUTEN trade mark or to apply for registration of the disputed domain name. In addition, the Respondent has not responded to any of the Complainant’s contentions, other than the language request. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name. The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Based on the given evidence, the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant has registered the RAKUTEN trade mark. The use of the Complainant’s RAKUTEN trade mark with the term “bank” cannot be a coincidence. The RAKUTEN trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark under the name Rakuten Bank for its Internet-based banking and financial services for over 20 years. The Panel is satisfied that the Respondent was aware of the Complainant and its RAKUTEN trade mark when he or she registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. Though the disputed domain name resolves to an inactive website at the date of this decision, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0) In addition, the Complainant has provided evidence that the disputed domain name previously resolved to a webpage containing an offer to sell the disputed domain name, which shows an intention to use the disputed domain name for commercial gain. It does appear that the Respondent is also engaged in a pattern of registering or acquiring domain names incorporating well known marks and may have acquired the disputed domain name to sell for a price higher than out-of-pocket expenses. However, for the purposes of this decision is it not necessary to rely on these grounds as those set out in the foregoing paragraph are sufficient to find for the Complainant. For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the third element under paragraph 4(a) 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 Douglas Clark
Sole Panelist
Date: January 12, 2021
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