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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rakuten Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-3888

1. The Parties

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

Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <shoprakuten.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed 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 22, 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 Complainant on November 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 23, 2021.

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 Respondent of the Complaint, and the proceedings commenced on December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2021.

The Center appointed José M. Checa as the sole panelist in this matter on January 4, 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

Complainant has provided evidence of being the owner of at least 640 trademark registrations in at least 39 countries or jurisdictions worldwide for marks that consist of or contain RAKUTEN. One of Complainant’s oldest registrations for the RAKUTEN trademark in the United States is United States Reg. No. 4,088,493 (registered January 17, 2012) for the mark RAKUTEN.

Complainant (directly or through its related entities) is the registrant of numerous domain names incorporating the mark RAKUTEN, including <rakuten.com> which was registered on September 12, 1997.

The disputed domain name was registered on May 29, 2019. Complainant contends that the disputed domain name redirects to Complainant’s own website. At the time of drafting this Decision, the disputed domain name appears to revert to a website containing a warning that the site has been reported as unsafe.

5. Parties’ Contentions

A. Complainant

Founded in 1997, Complainant is a public company listed on the Tokyo Stock Exchange, headquartered in Tokyo and employing more than 10,000 people worldwide. Complainant operates more than 70 businesses, including services in e-commerce, fintech, digital content and communications, and it has more than 1.5 billion members across the world.

Complainant contends that it has rights to its RAKUTEN trademark and that the disputed domain name is confusingly similar to its trademark. The addition of the term “shop” in the disputed domain name does not prevent a finding of confusing similarity.

Complainant further argues that 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 Respondent to register or use the RAKUTEN trademark in any manner. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Regarding bad faith, Complainant claims that the disputed domain name was registered and is being used in bad faith. The mere fact that the Respondent has registered a domain name incorporating the trademark of a well-known company may give rise to an inference of bad faith. In Complainant’s opinion, it is implausible that Respondent was unaware of Complainant’s trademark rights – the disputed domain name is so closely connected to Complainant that it indicates opportunistic bad faith. Redirecting the disputed domain name to Complainant’s website – which appears to be the use of the disputed domain name before the Complaint was filed – is also evidence of bad faith. In the amended Complaint, Complainant added “Carolina Rodrigues, Fundacion Comercio Electronico” as a Respondent and put forward its long history of cybersquatting.

Complainant requests the transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has provided evidence of its trademark registrations for RAKUTEN in many jurisdictions and thus it has established clear trademark rights in the mark RAKUTEN. Previous UDRP panels have also found that Complainant has rights in and to the RAKUTEN trademark. See, e.g., Rakuten, Inc. v. 林宗兴 (Lin Zong Xing), WIPO Case No. D2020-2846; Rakuten, Inc. v. Steven Bero, WIPO Case No. D2019-3063; and Rakuten, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Matthew Connor, No Company, WIPO Case No. D2019-2983.

For the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s RAKUTEN mark, the Panel finds that Complainant’s mark is reproduced in its entirety in the disputed domain name. For the confusing similarity test, the gTLD “.com” may typically be disregarded (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1). Also, the addition of the word “shop” does not prevent a finding of similarity between Complainant’s trademark and the disputed domain name (WIPO Overview 3.0, section 1.8).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark as required by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has put forward unrebutted assertions that it has never assigned, granted, licensed, sold, transferred, or in any way authorized Respondent to register or use the RAKUTEN trademark in any manner, to register the disputed domain name, or otherwise make use of its trademark, and that Respondent is not commonly known by the disputed domain name.

Complainant also asserts that Respondent has never used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name either. Before filing the Complaint, Complaint contends that the disputed domain name was redirecting to Complainant’s website. However, at the time of drafting this Decision, the disputed domain name appears to revert to a website containing a warning that the site has been reported as unsafe. Either way, the Panel finds that Respondent cannot be considered to have made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services nor that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark.

The Panel firstly notes that Complainant’s trademark is the distinctive and prominent element of the disputed domain name, with the descriptive term “shop” added to the end of Complainant’s trademark, which leads to a risk of implied affiliation between the disputed domain name and Complainant. That is already a strong indication that use of the disputed domain name cannot be “fair” (WIPO Overview 3.0, section 2.5.1 “Even where a domain name consists of a trademark plus an additional term […] UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”). Second, the fact that the Respondent appears to have a history of cybersquatting (the Panel has found more than 200 UDRP decisions naming the Respondent and which resulted in the transfer of the domain names concerned) further supports the Panel finding that Respondent is not making a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name (WIPO Overview 3.0, section 2.5.2. “Beyond looking at the domain name and the nature of any additional terms appended to it […] panels have found the following factors illustrative […] (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties […]”. Other UDRP panels have also found that redirecting the disputed domain name to Complainant’s website cannot be a bona fide offering of goods or services nor a fair use (see, e.g., Carrefour SA v. Georgy Simonov, WIPO Case No. D2021-2490).

The Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name (WIPO Overview 3.0, section 2.1). Respondent is in default and thus, it has not put forward any circumstance that would indicate any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on Complainant’s extensive use of its RAKUTEN trademark and Respondent’s cybersquatting history, it is very unlikely that Respondent was not aware of Complainant’s brand. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

As pointed out above and argued by Complainant, Respondent has been part of numerous UDRP proceedings which resulted in the domain names in question being transferred or cancelled. As a result, the Panel finds that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct in accordance with Paragraph 4(b)(ii) of the Policy (WIPO Overview 3.0, section 3.1.2).

Regarding the use of the disputed domain name, Complainant submits that Respondent is using the disputed domain name to redirect users to Complainant’s website, which would support a finding of bad faith (WIPO Overview 3.0, section 3.1.4). Furthermore, the Panel notes that while at the time of drafting this Decision, the disputed domain name reverts to a website containing a warning that the site has been reported as unsafe. This type of use in which the website at the disputed domain name appears to distribute malware is further evidence of bad faith. See Government Employees Insurance Company v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-2919.

In addition, circumstances present in this case such as (i) the nature of the disputed domain name (a widely used trademark followed by a descriptive term); (ii) a clear absence of rights or legitimate interests coupled with no explanation for Respondent’s choice of the disputed domain name; (iii) the failure of Respondent to provide any evidence of actual or contemplated good-faith use; and (iv) the implausibility of any good faith use to which the disputed domain name may be put (in addition to its current use) further support a finding that Respondent’s registration and use of the disputed domain name was in bad faith (WIPO Overview 3.0, section 3.3).

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) 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 <shoprakuten.com> be transferred to Complainant.

José M. Checa
Sole Panelist
Date: January 14, 2022

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