WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rakuten, Inc. v. Pavel Zezulka

Case No. D2018-2089

1. The Parties

The Complainant is Rakuten, Inc. of Tokyo, Japan, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Pavel Zezulka of Pardubice, Czech Republic, self-represented.

2. The Domain Name and Registrar

The disputed domain name <rakatan.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 13, 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. An informal Response was filed with the Center on September 21, 2018. On September 26, 2018, the Complainant sent an additional submission in reply to the Response. On the same day, the Respondent submitted a further informal email.

The Center appointed John Swinson as the sole panelist in this matter on September 28, 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 Rakuten, Inc. a company incorporated in Japan. According to the Complaint, the Complainant is an e-commerce and Internet company that spans a variety of sectors including digital content, communications and fintech. The Complainant was founded in 1997.

The Complainant owns a number of registered trade marks for RAKUTEN, including European Union trade mark number 4755741, registered on June 29, 2007 (the “Trade Mark”). The Complainant owns a domain name registration which incorporates the Trade Mark being <rakuten.com>.

The Respondent is Pavel Zezulka, an individual of the Czech Republic. The Respondent registered the Disputed Domain Name on August 27, 2017. The Disputed Domain Name previously resolved to a website displaying sponsored pay-per-click (“PPC”) links to competitors of the Complainant. According to the Respondent’s informal Response, the Respondent registered the Disputed Domain Name for the purpose of creating a Star Wars website. However, the Respondent has not provided any other information regarding his business activities or use of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or confusingly similar

The Disputed Domain Name is virtually identical to the Trade Mark as it merely replaces the “u” and “e” with an “a”. This Disputed Domain Name is a purposeful misspelling of the Trade Mark and is therefore considered confusingly similar to the Trade Mark. This is an example of typosquatting as it is a deliberate misspelling of a trade mark registered as a domain name.

Rights or legitimate interests

The Respondent has registered the Disputed Domain Name without the Complainant’s consent. The Complainant has not authorized, licensed or otherwise permitted the Complainant to register the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name and has not used it in connection with a bona fide offering of goods and services.

The Complainant sent a cease-and-desist letter to the Respondent on June 15, 2018. The Respondent informed the Complainant that he registered the Disputed Domain Name for the purpose of creating a Star Wars page about Rakatan (which the Respondent alleges is a race in Star Wars, whereas the Complainant states that the race is known as Rakata). The Respondent has not used the website at the Disputed Domain Name for the purported Star Wars website.

The website at the Disputed Domain Name is being used to divert Internet traffic to commercial websites which are in direct competition to the Complainant’s business. Further, the Respondent is using the website for PPC links, from which he presumably garners a fee.

Registered and used in bad faith

The Respondent is using the website at the Disputed Domain Name for advertising featuring goods and services which compete with those offered by the Complainant. The Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website at the disputed domain name. Neither the fact that the PPC links are generated by third parties nor the fact that the respondent may not have profited from the links would prevent a finding of bad faith.

The Respondent’s knowledge of the Trade Mark is evident from the Respondent’s use of the Trade Mark and the links posted on the website at the Disputed Domain Name.

B. Respondent

The Respondent makes the following submissions.

The term “rakatan” is a Star Wars common word and has nothing to do with the Complainant’s business. The Respondent intended to use the Disputed Domain Name to create a Star Wars page. The Respondent is currently working on the project “mtrh.cz”. The Respondent has not provided any further details regarding this project, or his proposed Star Wars website.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

The Complainant and the Respondent have both submitted a Supplemental Filing. The Panel has reviewed these, but they did not have any bearing on the Panel’s decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Disputed Domain Name is a misspelling of the Trade Mark. It differs from the Trade Mark by only two letters. The Respondent has replaced the “u” and “e” with an “a”. A domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the website at the Disputed Domain Name featured a PPC link page. These links divert Internet users to competitors of the Complainant. The Respondent has stated that he is going to use the Disputed Domain Name to host a Star Wars page, however has provided no evidence of this. The intended content of this is unclear. Further, the Respondent has not provided evidence that the PPC links diverted to Star Wars related material. As such, the Panel has no basis on which to find that the Respondent has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is likely that the Respondent is receiving click-through revenue from the PPC links on the website at the Disputed Domain Name. If the Respondent had intended to create a Star Wars fan page at the Disputed Domain Name, he has not provided evidence of this.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not provide sufficient evidence to do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).

The Respondent registered the Disputed Domain Name in 2017, which is 10 years after the registration of the Trade Mark and 20 years after the commencement of the Complainant’s business. The Respondent argues that he had no knowledge of the Complainant and that he intended to use the Disputed Domain Name to host a Star Wars page. Whilst this is not inconceivable, the Respondent has not provided any evidence (for example, notes or plans for the website) to support this.

The Disputed Domain Name resolves to a website which contains PPC links relating to the Complainant’s industry. Previous UDRP panels have found that a respondent will generally be deemed responsible for the content appearing at the relevant domain name, including where a registrar has placed a parking page with automatically generated content, unless the respondent can show some good faith attempt at preventing advertising which relates to third party trade marks (see section 3.5 of the WIPO Overview 3.0).

As such, even if the Respondent did not intentionally cause the particular PPC links to be displayed, the Respondent has shown no such good faith attempt in this case and many of the PPC links are to competitors of the Complainant. In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name, as a misspelling of the Trade Mark, to trade off the Complainant’s reputation.

It is therefore reasonable for the Panel to conclude that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source of the website. This is an indicator of bad faith use and registration under paragraph 4(b)(iv) of the Policy.

The Complainant succeeds on the third element 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 <rakatan.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 11, 2018