WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SoftBank Group Corp., SoftBank Corp. v. WhoisGuard Protected, WhoisGuard, Inc. / Nick Fletcher
Case No. D2018-2682
1. The Parties
The Complainants are SoftBank Group Corp. (“SBG”) and SoftBank Corp. of Tokyo (“SB”), Japan, represented by Mori Hamada & Matsumoto Law Firm, Japan.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Nick Fletcher of the United Kingdom, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <ipo-softbank.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 22, 2018, 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 Complainants on November 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on November 26, 2018.
The Center verified that the Complaint together with the 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Center received email communications from Respondent on November 28, 2018, November 30, 2018, December 10, 2018, December 19, 2018, and December 20, 2018. Among these emails, Respondent expressed consent to the remedy requested by Complainants. On November 28, 2018, the Center sent a communication regarding possible settlement to the Parties. On November 30, 2018, Complainants sent a communication indicating that it would not request suspension of the proceeding. No substantive Response was filed with the Center. On December 18, 2018, the Center notified the Parties that it would proceed to appoint the Panel.
The Center appointed January 4, 2019 as the sole panelist in this matter on Richard W. Page. 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
ABG was founded in 1981, and since that time has, along with its 1,141 subsidiaries and 385 affiliates, been prominent in the development of the digital information business in Japan and elsewhere in the world. Its services include e-commerce, e-finance, media marketing and broadcasting, with 74,952 employees on a consolidated basis, and consolidated net sales of JPY 9.1588 trillion as of the end of March 2018. SB, an affiliated company of SBG, is a core operating company for the Japanese business of the SoftBank Company Group, and is providing mobile and other communication services.
On November 12, 2018, SBG publicly announced the listing of common stock of SB on the Tokyo Stock Exchange was approved and that it had decided on the disposal of a portion of SB shares.
SBG owns a large number of domain names, including the word “SoftBank,” such as: <softbank.co.jp>, <softbank.jp>, <softbankgroup.com> and the Top-Level Domain “.softbank”.
SBG owns numerous trade mark registrations for “SoftBank” all over the world including: United States Reg. No. 4718589 and Japanese Reg. No. 1858515 (the “SOFTBANK Mark”).
The Disputed Domain Name was registered on November 12, 2018. The Disputed Domain Name does not resolve to any active webpage.
5. Parties’ Contentions
A. Complainants
SBG contends that the Disputed Domain Name is confusingly similar to the SOFTBANK Mark because it incorporates the entirety of the SOFTBANK Mark, with the addition of the generic Top-Level-Domain (“gTLD") “.com” and the term “ipo-” which is descriptive as the abbreviation for an “initial public offering” which SBG announced in the press release dated November 12, 2018.
SBG alleges that Respondent does not offer goods or services by using the Disputed Domain Name, other than by “phishing”. SBG further alleges that Respondent pretends to be SB and solicits subscribers for private shares for subscription using the website at “www.ipo-softbank.com” to which the Disputed Domain Name resolves.
Neither SBG nor SB has given permission for Respondent to use the SOFTBANK Mark in any capacity.
SBG contends that Respondent is intentionally attempting to attract Internet users to invest in fake shares of SB issued by “PRE-IPO”, which does not exist. Neither SBG nor SB is connected to the “www.ipo‑softbank.com” website, which attempts to mislead those who access it and to get their personal information. SBG and SB further contend that the website is a “phishing” website. SBG and SB further contend that Respondent created the Disputed Domain Name on November 12, 2018, shortly after SBG issued a press release on the same date stating that the Board of Directors of SB had approved a public offering. SBG and SB argue that these circumstances support a finding that Respondent has acted in bad faith.
B. Respondent
The Center received email communications from Respondent on November 28, 2018, November 30, 2018, December 10, 2018, December 19, 2018, and December 20, 2018. The communications indicate no objection to transfer of the Disputed Domain Name and do not contest Complainants’ allegations.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in a Disputed Domain Name proceeding, but when it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent is subject to the inferences that flow naturally from the information provided by Complainants. See Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainants’ assertions, the Panel will review the evidence proffered by Complainants to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainants must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainants contend that they have numerous registrations of the SOFTBANK Mark and enjoy enforceable rights for purposes of this proceeding. Respondent has not contested these allegations.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
The Panel finds that Complainants have enforceable trademark rights in the SOFTBANK Mark.
Complainants further contend that the Disputed Domain Name is identical with and confusingly similar to the SOFTBANK Mark pursuant to the Policy paragraph 4(a)(i).
SBG contends that the Disputed Domain Name is confusingly similar to the SOFTBANK Mark because it incorporates the entirety of the SOFTBANK Mark, with the addition of the gTLD “.com” and the term “ipo-” which is descriptive as the abbreviation for an “initial public offering” which SBG announced in the press release dated November 12, 2018.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a disputed domain name is identical or confusingly similar to a registered trademark and that the addition of descriptive words, including gTLDs does not eliminate the likelihood of confusion. See, Hoffmann-LaRoche AG v. P Martin,
WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,
WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,
WIPO Case No. D2008-0792.
The Panel finds that the entirety of the principal element of the SOFTBANK Mark is contained in the Disputed Domain Name and that the additional phrases “ipo-” and “com” are non-distinctive.
Therefore, Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants contend that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Section 2.1 of the WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the SOFTBANK Mark.
SBG alleges that Respondent’s only services rendered by using the Disputed Domain Name constitute “phishing”. SBG further alleges that Respondent pretends to be SB and solicits subscribers for private shares for subscription using the website at “www.ipo-softbank.com” to which the Disputed Domain Name resolves. Neither SBG nor SB has given permission for Respondent to use the SOFTBANK Mark in any capacity.
The Panel finds that “phishing” does not constitute a bona fide offering of services and that the solicitation of SB share subscriptions is a commercial use. In addition, the Panel sees no evidence in this file that Respondent has been commonly known by the Disputed Domain Name.
Respondent has not contested the allegations that it lacks rights or legitimate interest in the Disputed Domain Name.
Therefore, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainants contend that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainants who are the owners of the SOFTBANK Mark or to a competitor of Complainants, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the SOFTBANK Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the SOFTBANK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainants allege that Respondent is intentionally attempting to attract Internet users to invest in fake shares of SB issued by “PRE-IPO”, which does not exist. Neither SBG nor SB is connected to the “www.ipo‑softbank.com” website, which attempts to mislead those who access it and to get their personal information. SBG and SB further contend that the website is a “phishing” website. SBG and SB further contend that Respondent created the Disputed Domain Name on November 12, 2018, shortly after SBG issued a press release on the same date stating that the Board of Directors of SB had approved a public offering. SBG and SB argue that these circumstances support a finding that Respondent has acted in bad faith.
Respondent has not contested these allegations.
Therefore, the Panel finds that Complainants have satisfied the requirements of paragraph 4(b)(iv) of the Policy showing bad faith. The Panel further finds that the Complainants have established bad faith under 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 <ipo-softbank.com> be transferred to Complainants.
Richard W. Page
Sole Panelist
Date: January 7, 2019
