WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Line Corporation v. Contact Privacy Inc. Customer 1244033753 / Yuya Narikawa
Case No. D2019-1242
1. The Parties
The Complainant is Line Corporation, Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Contact Privacy Inc. Customer 1244033753 / Yuya Narikawa, Japan.
2. The Domain Name and Registrar
The disputed domain name <linepay.dev> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2019, 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 June 7, 2019 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 June 7, 2019.
The Center verified that the Complaint together with 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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any formal response. On June 7, 2019 the Respondent sent an email communication to the Complainant stating:
“Dear Douglas M. Isenberg.
I've just found this email and remembered about the domain name "linepay.dev". I understood what is happening on the domain name. I am sincerely want to give up all the rights about the domain "linepay.dev" as soon as possible. Let me know how to proceed.
On June 18, 2019 the Respondent sent a second email stating:
“Dear Douglas M. Isenberg,
Yes, I would like to settle this dispute and transfer the domain name to the complainant. I think we should ask WIPO arbitrator to start a settlement talk, and I guess we can proceed to WIPO's Standard Settlement Form. Is this correct as your thoughts?”
Given the prior Uniform Rapid Suspension System (URS) case between the Parties (as described under the Factual Background), and status of the disputed domain name at the registry, the Parties did not proceed to settlement negotiations in this matter.
Accordingly, the Center notified the Respondent about the Commencement of Panel Appointment on July 3, 2019.
The Center appointed Teruo Kato as the sole panelist in this matter on July 9, 2019. 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 the Complainant, “Complainant, based in Japan, was conceived as a mobile messaging service shortly after the massive earthquake that devastated Japan on March 11, 2011. Complainant has grown into a social platform with hundreds of millions users worldwide, having a particularly strong focus in the rapidly advancing continent of Asia. Complainant’s services include LINE, the fastest growing mobile messenger app in the world; and LINE PAY, a secure and easy payment platform.”
The Complainant owns, inter alia, Japanese trademark LINE Pay (words) No. 5706000 (registered September 26, 2014), Japanese trademark LINE Pay (words) No. 5729834 for (registered December 26, 2014) and Japanese trademark LINE Pay (device) No. 5775766 for (registered July 3, 2015), as more particularly set out in paragraph 6. A. below.
The disputed domain name <linepay.dev> was registered on March 1, 2019.
The Respondent is Contact Privacy Inc. Customer 1244033753 / Yuya Narikawa whose address is given as being in Japan.
The disputed domain name was the subject of a URS complaint filed by the Complainant on April 11, 2019, which concluded in the Complainant’s favor. The disputed domain name was suspended in accordance with the URS process.
The Complainant contents that the Respondent “has used the Disputed Domain Name to redirect Internet visitors to a website at https://paypay.ne.jp/, which offers electronic payment services via smartphones, that is, a service that competes with the services offered by Complainant under the LINE PAY Trademark”.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of various trademarks including LINE Pay.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s LINE Pay trademark and that the generic Top-Level Domain (“gTLD”) “dev” should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s LINE Pay trademark, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of LINE Pay registered trademarks, including inter alia:
- Japanese trademark LINE Pay (words) No. 5706000 (registered September 26, 2014) covering goods and services in classes 9 and 36,
- Japanese trademark LINE Pay (words) No. 5729834 for (registered December 26, 2014) covering goods and services in class 42, and
- Japanese trademark LINE Pay (device) No. 5775766 for (registered July 3, 2015) covering goods and services in classes 9, 36 and 42.
As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the Complainant’s trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the gTLD, the disputed domain name consists of the Complainant’s trademark LINE Pay, with the only difference being the omission of a space between “line” and “pay” in the disputed domain name. The Complainant contends that spaces cannot be reproduced in a domain name and are therefore irrelevant.
The Panel accepts the Complainant’s contentions and finds that the distinctive element of the disputed domain name is the term “linepay”, which is substantially identical to the Complainant’s LINE Pay trademark.
The Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant contends that “[t]he Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the LINE PAY Trademark in any manner”.
The Complainant further contends that “Respondent has never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services”.
The Complainant submitted to the Panel documentary materials to support its contentions as above and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location.
The Panel notes and accepts that the LINE Pay trademark was registered and extensively used internationally, including in Japan, well before the disputed domain name was registered on March 1, 2019. Accordingly, the Panel holds that the Respondent was most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant contends, among others, that “Respondent has used the Disputed Domain Name to redirect Internet visitors to a website at https://paypay.ne.jp/, which offers electronic payment services via smartphones, that is, a service that competes with the services offered by Complainant under the LINE PAY Trademark”.
To support such contention, the Complainant submitted screenshots of the web page which was re-directed from the disputed domain name, allegedly captured on April 11, 2019 before the disputed domain name was ordered to be suspended in May 2019.
The Respondent was given an opportunity to raise its objection to the contentions made by the Complainant but has not done so.
Under the circumstances, the Panel considers such use to amount to bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
In the circumstances, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the third requirement of the Policy has been met.
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 <linepay.dev> be transferred to the Complainant.
Date: July 16, 2019