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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rakuten Group, Inc. v. Bidbuy Korea

Case No. D2021-3887

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 Bidbuy Korea, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <rakutenshopping.com> is registered with Gabia, Inc. (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 December 14, 2021, 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 sent an email communication in English and Korean to the Parties on December 14, 2021, that the language of the registration agreement for the disputed domain name is Korean. The Complainant requested for English to be the language of the proceeding on December 15, 2021. The Respondent requested for Korean to be the language of the proceeding on December 20, 2021.

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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent submitted the Response on January 7, 2022. The Center notified Parties that it will proceed to panel appointment on January 20, 2022.

The Center appointed Moonchul Chang as the sole panelist in this matter on January 28, 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

The Complainant, Rakuten Group, Inc. is a Japanese e-commerce and Internet company founded in 1997. The Complainant’s business covers a variety of sectors, including e-commerce, digital content, communications, fintech and banking.

The Complainant owns RAKUTEN trademarks in various countries or jurisdictions worldwide including Japan and U.S: Japanese trademark registration No. 4,453,054, registered on February 16, 2001; U.S trademark registration No. 4,088,493, registered on January 17, 2012. The Complainant has used its RAKUTEN trademarks for many years prior to the registration of the disputed domain name. Since 1997 the Complainant has also used <rakuten.com> to operate its main website.

According to the publicly available WhoIs information, the disputed domain name <rakutenshopping.com> was registered on November 7, 2011. The Respondent has not used it in connection with an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trademark. The addition of the terms “shopping” and “.com” in the disputed domain name would not prevent a finding of the confusing similarity.

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to registered or use the RAKUTEN trademark in any manner. In addition, by failing to use the disputed domain name in connection with an active website, the Respondent clearly has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. Further, the Respondent has never been commonly known by the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith. The RAKUTEN trademark is famous and widely known, given that there are at least 640 trademark registrations in at least 39 jurisdictions worldwide, the oldest of which was registered about 20 years ago. Therefore, it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, given the global reach and popularity of the Complainant’s services under the RAKUTEN trademark as well as the Complainant’s domain name <rakuten.com>. Because the disputed domain name is confusingly similar with the Complainant’s trademark, the Respondent’s actions suggest opportunistic bad faith in violation of the Policy. Further, the Respondent is not currently using the disputed domain name in connection with an active website. The bad faith use exists under the well-established doctrine of passive holding.

B. Respondent

(1) The Respondent is a Korean Company which has been working as a global purchasing agent since 20 years ago. It represents and buys specific goods or products for its global clients, especially purchasing from Japan. In order to operate this business, the Respondent has registered and used the domain names such as <dejapan.com>, <bidbuy.co.kr>, and <bidbuy.co.jp>. Further the Respondent contemplates to extend the global purchasing business in Japan by using the disputed domain name for this purpose.

(2) The Respondent has neither registered in bad faith nor used the disputed domain name. The Respondent has never registered the disputed domain name to obtain any commercial benefits from purchasing or advertising goods. In addition, the Respondent has never informed the sale or the license of the disputed domain name. Since the registration of the disputed domain name in 2011, the Respondent has never used the disputed domain name to interrupt the Complainant’s business and the Complainant has never contacted the Respondent to discuss about the disputed domain name.

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case, the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. However, the Complaint was filed in English.

The Complainant requests that the language of proceeding be English for the following reasons;

the disputed domain name contains English word “shopping” and it would be unfair and create unwarranted delay for the Complainant to translate the Complaint into Korean.

On the other hand, the Respondent requests to conduct the administrative proceeding in Korean.

Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the Parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it would accept the Complaint in English and the Response in Korean – which it has done, and that it would render this Decision in English.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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 disputed domain name includes the Complainant’s trademark RAKUTEN in its entirety together with a term “shopping”. The Panel’s assessment of identity or confusing similarity involves a straightforward comparison between the disputed domain name and the textual components of the relevant mark. Adding such term does not prevent a finding of confusing similarity and does not change the overall impression of the disputed domain name as being confusingly similar to the Complainant’s trademark. (Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Numerous UDRP panels have held that where a domain name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, it is sufficient to consider the domain name “confusingly similar” to that mark within the meaning of the Policy (Section 1.7 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test. (Section 1.11.1, WIPO Overview 3.0)

Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0)

The Complainant contends that it has never authorized or licensed the Respondent to use the Complainant’s trademark RAKUTEN or to register any domain names incorporating it, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case. On the other hand, the Respondent failed to assert any rights or legitimate interests in relation to the disputed domain name.

In addition, by failing to use the disputed domain name in connection with an active website, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, the Panel found no evidence to suggest that the Respondent has been commonly known by the disputed domain name.

Thus, the Panel concludes that the Respondent failed to come forward with any appropriate evidence that might demonstrate his rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.

Firstly, the Complainant obtained the first registration of the RAKUTEN trademark about 10 years earlier than the Respondent registered the disputed domain name targeting the RAKUTEN trademark. Having considered that the Respondent is a global purchasing agent who deals with RAKUTEN goods and products, the Panel finds that the Respondent could not have been unaware of the Complainant’s reputation under the RAKUTEN mark. Since bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (Section 3.1 of the WIPO Overview 3.0), the Panel considers that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the association or affiliation of the Complainant.

Next, the Respondent asserts that he has never used the disputed domain name. However, 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. (Section 3.3 of the WIPO Overview 3.0) Further, the Respondent indicates that he contemplates using the disputed domain name to extend the global purchasing business in Japan. While having considered that the Complainant’s RAKUTEN mark is distinctive or well known in the field of global online shopping business and the Respondent is a global purchasing agent, the Panel holds that the Respondent registered and has been using the disputed domain name in bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.

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 <rakutenshopping.com> be transferred to the Complainant.

Moonchul Chang
Sole Panelist
Date: February 12, 2022

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