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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rakuten Group, Inc. v. Whois Privacy Protection Service by onamae.com / Kiyoyuki Kawanaka, Kawanaka Kiyoyuki

Case No. D2021-3884

1. The Parties

The Complainant is Rakuten Group, Inc., Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Kiyoyuki Kawanaka, Kawanaka Kiyoyuki, Japan.

2. The Domain Name and Registrar

The disputed domain name <rakuten-shopping.net> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2021, 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 November 25, 2021 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 amendment to the Complaint in English on November 30, 2021.

On November 25, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 29, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 in English and Japanese of the Complaint, and the proceedings commenced on December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 1, 2022.

The Center appointed Teruo Kato as the sole panelist in this matter on January 9, 2022. 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, the Complainant was founded in 1997 and is a public company listed on the Tokyo Stock Exchange, headquartered in Tokyo and employs more than 10,000 people worldwide. The Complainant offers a variety of services in e-commerce, fintech, digital content and communications to many users all over the world and has more than 70 businesses and has more than 1.5 billion members across the world. The Complainant was previously known as Rakuten, Inc. until a company name change on April 1, 2021.

The Complainant owns, inter alia:

- United States trademark RAKUTEN (standard character mark) No. 4088493, registered on January 17, 2012, covering services in classes 35, 39 and 43;

- Japanese trademark 楽天 (with pronunciation (reference information) being Rakuten and Gakuten) No. 4453054, registered on February 16, 2001, covering goods and services in classes 9, 16, 35, 41 and 42;

- Japanese trademark RAKUTEN SHOPPING TV (standard characters) No. 6031774, registered on March 30, 2018, covering services in class 35; and

- Japanese trademark RAKUTEN SHOPPING LIVE TV (standard characters) No. 6031775, registered on March 30, 2018, covering services in class 35.

The disputed domain name <rakuten-shopping.net> was registered on April 20, 2018.

The Respondent is Kiyoyuki Kawanaka, Kawanaka Kiyoyuki, whose address is given as being in Japan.

According to the Complainant, the Respondent is not using the disputed domain name in connection with an active website.

The Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of various trademarks including the term “Rakuten”.

The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s RAKUTEN trademark.

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 trademark RAKUTEN, 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 registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar has confirmed that the language of the Registration Agreement is Japanese.

The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, it would be unfair and create unwarranted delay for the Complainant to translate the Complaint into another language. The Complainant also points out that the disputed domain name contains the English word “shopping”.

On November 25, 2021, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by November 30, 2021. The Respondent did not respond to this by this deadline nor later.

On December 8, 2021, the Center informed the Respondent, in both Japanese and English, that the Center has decided, under the circumstances of this case, to: “1) accept the Complaint as filed in English; 2) accept a Response in either English or Japanese; 3) appoint a Panel familiar with both languages mentioned above, if available.” Accordingly, the Panel would have accepted a response in Japanese, but no reply was submitted by the Respondent.

In the circumstances, in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.

6.2 Substantive Issues

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 various registered trademarks including the term “Rakuten”, such as:

- United States trademark RAKUTEN (standard character mark) No. 4088493, registered on January 17, 2012, covering services in classes 35, 39 and 43; and

- Japanese trademark 楽天 (with pronunciation (reference information) being Rakuten and Gakuten) No. 4453054, registered on February 16, 2001, covering goods and services in classes 9, 16, 35, 41 and 42;

- Japanese trademarkRAKUTEN SHOPPING TV (standard characters) No. 6031774, registered on March 30, 2018, covering services in class 35 and designating “[t]he plan of a plan and work of the publicity by an animation, the publicity by video delivery through the Internet, and the image software for publicity, work of the video for publicity, and the promotion of offer of sales promotion and services of goods performed on the Internet, the substitute of execution, publicity, offer of the advertising space on the Internet, providing information concerning commercial sales”; and

- Japanese trademark RAKUTEN SHOPPING LIVE TV (standard characters) No. 6031775, registered on March 30, 2018, covering services in class 35 and designating “[t]he plan of the promotion of offer of sales promotion and services of goods, the substitute of execution, publicity which are performed on a plan and work of the publicity by the animation broadcast live on on-line, the publicity by an animation, the publicity by video delivery through the Internet, and the image software for publicity, work of the video for publicity, and the Internet, Providing information concerning commercial sales in the publicity about those who provide offer of the advertising space on the Internet, goods, or service, and a retail store”.

As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the 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., ‘info’, ‘.com’, ‘.club’) 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 generic Top-Level Domain (“gTLD”) “.net”, the Complainant contends that the disputed domain name contains its trademark RAKUTEN in its entirety.

The Panel also notes that the disputed domain name matches with the Complainant’s trademark RAKUTEN SHOPPING TV, except that the word “TV” is not used in the disputed domain name and that “-” (hyphen) is inserted immediately after “Rakuten”. Similarly, the disputed domain name matches with the Complainant’s trademark RAKUTEN SHOPPING LIVE TV, except that the words “LIVE TV” are not used in the disputed domain name and that “-” (hyphen) is inserted immediately after “Rakuten”.

In this connection, the Panel notes section 1.7 of the WIPO Overview 3.0 which states that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The Panel also notes that, in relation to the insertion of “-” (hyphen), section 1.8 of the WIPO Overview 3.0 states that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

In the circumstances, the Panel sees no reason why these established practices should not be applied to the present case and holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. Accordingly, the Panel 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 making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).

In the present case, the disputed domain name does not resolve to any active website, and the Complainant contends with relevant evidence that: (i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not been commonly known by the disputed domain name; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel is satisfied that the Complainant has established a prima facie case. By not submitting a response, the Respondent has failed to overturn 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 the present case, the Panel is satisfied that the word “Rakuten” is not a dictionary word in the Japanese language and was created by the Complainant when it started its e-commerce business in 1997, which has subsequently become a household name in Japan. 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 on April 20, 2018. (See section 3.2.2 of the WIPO Overview 3.0.)

In particular, the Panel takes a note that the Respondent’s registration of the disputed domain name took place shortly after the Complainant’s registration of its Japanese trademarks RAKUTEN SHOPPING TV and RAKUTEN SHOPPING LIVE TV on March 30, 2018. Further, the Panel takes a note that the additional term “shopping” in the disputed domain name relates to the nature of the Complainant’s business.

In the circumstances, the Panel holds that the Respondent registered the disputed domain name in bad faith.

As to the use in bad faith, the Complainant acknowledges that the Respondent is not currently using the disputed domain name and contends that the so-called doctrine of “passive holding” should apply and refers to section 3.3 of the WIPO Overview 3.0, which states:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Having considered all the evidences in front of the Panel, the Panel is satisfied that the facts of this case are in support of the Complainant’s contentions in respect of the factors (i) to (iv) above, in particular the distinctiveness and widely-known nature of the Complainant’s RAKUTEN trademark, and finds no evidence to indicate otherwise and that no counter-argument has been submitted by the Respondent.

Taking all matters into careful consideration, the Panel holds that the Respondent is also using the disputed domain name in bad faith.

The Panel therefore concludes that the third requirement of the Policy has been met.

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 <rakuten-shopping.net> be transferred to the Complainant.

Teruo Kato
Sole Panelist
Date: January 18, 2022

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