WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rakuten, Inc. v. Geraldine Williams
Case No. DMX2019-0036
1. The Parties
The Petitioner is Rakuten, Inc., Japan, represented by Greenberg Traurig, LLP, United States of America (the “United States”).
The Holder is Geraldine Williams, United States.
2. The Domain Name and Registrar
The Registry of the disputed domain name <travelrakuten.com.mx> is Registry .MX, a division of NIC México. The Registrar is NEUBOX Internet SA de CV (the “Registrar”).
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to Registry .MX a request for registrar verification in connection with the disputed domain name. On December 20, 2019, Registry .MX transmitted by email to the Center its verification response confirming that the Holder is listed as the registrant and providing the contact details.
The Center verified that the Request satisfied the formal requirements of the Dispute Resolution Policy on .MX Domain Names (the “LDRP” or “Policy”), the Regulation of the dispute resolution policy for .MX domain names (the “Regulation”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
The Center sent an email communication in English and Spanish to the parties on January 20, 2020 regarding the language of the proceeding, noting that the Complaint was submitted in English and Spanish, and article 13 of the Regulation establishes that unless the parties decide otherwise, the language of the procedure will be in Spanish, subject to the authority of the group of experts to determine otherwise, having regard on the circumstances of the case. The Petitioner submitted a request for English to be the language of the proceeding on January 21, 2020. The Holder did not comment on the language of the proceeding.
In accordance with Article 4 of the Regulation, the Center formally notified in both Spanish and English the Holder of the Request, and the proceedings commenced on January 28, 2020. In accordance with Article 5 of the Regulation, the due date for Response was February 17, 2020. The Holder did not submit any response. Accordingly, the Center notified the Holder’s default on February 20, 2020.
The Center appointed Mauricio Jalife Daher as the sole panelist in this matter on February 27, 2020, upon receipt of this Expert’s Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Article 9 of the Regulation. This Panel finds that it was properly constituted.
4. Factual Background
The Petitioner is a Japanese ecommerce and Internet company founded in 1997.
The Petitioner is one of the largest ecommerce websites in Japan, with an active membership of about 83 million.
The Petitioner has been active in the United States since 2000 and operates its primary United States website at “www.rakuten.com” and uses the <rakuten.com> domain name for its email addresses and to conduct its business.
The Petitioner’s online marketplace, offers over 18 million products.
The Petitioner operates an online travel website under the name Rakuten Travel, located at “www.travel.rakuten.com”. Rakuten Travel operates one of Japan’s largest online hotel reservation website with over 1.8 million room nights booked per month.
The Petitioner owns multiple trademark registrations for trademarks incorporating its world-famous RAKUTEN trademark in at least 55 countries, including 23 registrations in Mexico. Among others, the Petitioner owns the following trademark registrations, to protect services related to travel agencies: Registration 2076321 RAKUTEN in class 39 (granted in January 2020), Registration 1983651 RAKUTEN in class 39 (granted in 2019), Registration 1183131 in class RAKUTEN 43 (granted in 2010) and, Registration 11833132 R RAKUTEN in class 43 (granted in 2010).
The disputed domain name was registered on April 16, 2019.
The disputed domain name has been used to create emails addresses, as “[...]@travelrakuten.com.mx”, to impersonate the Petitioner and engage in a fraudulent scheme involving the reselling of timeshares. The Holder did not file any Response or documents in accordance with this proceeding, as noted by this Panel.
5. Parties’ Contentions
The disputed domain name <travelrakuten.com.mx> is nearly identical and confusingly similar to the Petitioner’s RAKUTEN mark.
The disputed domain name incorporates RAKUTEN mark, in which the Petitioner has exclusive rights.
Adding the generic word “travel”, along with the Second-Level Domain “.com” and the generic Top-Level domain (“gTLD”) “.mx,” suggests services directed to the Petitioner’s online travel agency.
RAKUTEN is a famous trademark.
The Holder registered the disputed domain name without the Petitioner’s authorization.
The Holder is not commonly known by the disputed domain name, has not used it with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Petitioner to register or use the disputed domain name.
The Holder registered the disputed domain name on April 16, 2019, which is long after Petitioner established its rights in its RAKUTEN trademarks through its prior use and numerous trademark registrations, including in the United States and Mexico and many other countries.
To the Petitioner’s knowledge, there are no prior trademark applications or registrations in the name of the Holder for any mark incorporating RAKUTEN anywhere in the world.
The Holder has used the disputed domain name to create email addresses, to impersonate the Petitioner and engage in fraudulent emails involving the reselling of timeshares.
The Holder makes false offers to purchase timeshares that require the seller to pay various fees, such as commission or transfer fees, but the Holder steals those fees and never sends payment for the timeshare.
Numerous panels have concluded that use of a domain name to impersonate a petitioner and commit fraud establishes that the holder has no rights or legitimate interests in the disputed domain name.
The Petitioner’s business has already been disrupted by the Holder’s impersonation of the Petitioner and scamming of the Petitioner’s customers, based on numerous complaints the Petitioner has received regarding the Holder’s timeshare reselling scam.
The Holder did not reply to the Petitioner’s contentions. Although this Panel is aware that the Holder is not obliged to participate in a proceeding under the Policy, if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Petitioner. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109.1
6. Discussion and Findings
A. Language of the Proceeding
The Request was filed in English and Spanish. The Petitioner solicited that the Request be accepted in English and that the proceeding be conducted in English, after considering the following facts: i) the WhoIs information for the disputed domain name states that the Holder is located in the United States, where the official language is English. ii) The Holder disseminated marketing materials in English through the disputed domain name, and also communicated with people in English by email through the disputed domain name. Therefore, it is clear that the Holder is fluent in English. iii) Petitioner and its counsel only speak English.
The Holder did not refute the reasons provided by the Petitioner to select English over Spanish as the language of the proceeding.
Based in article 13 of the Regulation which establishes that “[u]nless the parties decide otherwise, the language of the procedure will be in Spanish, subject to the authority of the group of experts to determine otherwise, having regard on the circumstances of the case.” The Panel in view of the circumstances of the case determines that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The disputed domain name reproduces the trademark RAKUTEN, which is registered in Mexico and in more than 55 countries all over the world, as evidenced by the Petitioner. The addition of the word “travel” to the disputed domain name is insufficient in itself to prevent a finding of confusing similarity. The trademark RAKUTEN is clearly recognizable in the disputed domain name.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Petitioner’s RAKUTEN Mark.
C. Rights or Legitimate Interests
The Policy requires the Petitioner to prove that the Holder has no rights or legitimate interests in the disputed domain name. Nevertheless, it has been recognized that this could result in the impossible task of proving a negative, requiring information that is often primarily within the knowledge of the holder. The Petitioner declared that: (i) it has not authorized the Holder to register or use the disputed domain name; (ii) the Holder is not commonly known by the disputed domain name; (iii) RAKUTEN is not a registered mark in the Holder’s name and; (iv) the Holder has used the disputed domain name to create email addresses, to impersonate the Petitioner and engage in fraudulent emails involving the reselling of timeshares
The Holder has not submitted any response to the Petitioner’s allegations and has therefore failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.
Under these circumstances, the Panel takes the view that the Holder has no rights or legitimate interests in the disputed domain name.
D. Registered or Used in Bad Faith
The Petitioner contends that the Holder registered and is using the disputed domain name in bad faith.
The Holder did not file a response to the Request, and there is no evidence nor allegation that the Holder makes a fair use of the disputed domain name.
The Holder registered the disputed domain name on April 16, 2019, 9 years after the Petitioner began to register its RAKUTEN Mark in Mexico, in connection with its online travel agency services.
The Holder is located in the United States where the Petitioner has been active since 2000, therefore it can be inferred that the Holder, aware of the fame and goodwill associated with RAKUTEN trademark, deliberately registered the disputed domain name with the Petitioner’s trademark in mind to take advantage of it. The Panel notes the nature of the disputed domain name and that the addition of the word “travel” may lead Internet users to believe that the disputed domain name refers to the online travel agency operated by the Complainant (which is operated at “www.travel.rakuten.com”). Using the term “travel” reinforces the likelihood of association of Holder’s disputed domain name with Petitioner’s trademark and website.
Moreover, the Petitioner has provided evidence that the disputed domain name is being used in connection with a fraudulent email scheme directed to the Petitioner’s customers, indicative of the Holder’s bad faith. Therefore, the use of a disputed domain name for scam and impersonation purposes is conclusive evidence of bad faith under the Policy. See Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861.
For all the foregoing reasons, in accordance with Articles 1 of the Policy and 19 and 20 of the Regulation, this Panel orders that the disputed domain name <travelrakuten.com.mx> be transferred to the Petitioner.
Mauricio Jalife Daher
Date: March 16, 2020
1 Noting the similarities between the LDRP and the Uniform Domain Name Dispute Resolution Policy, the Panel will refer to decisions under the UDRP if applicable.