The Complainant is Rakuten, Inc., Japan, represented by Greenberg Traurig, LLP, United States of America (“United States”).
The Respondent is Marcos Carrillo, Marcos Carrillo, Mexico.
The disputed domain name <rakutenmx.com> is registered with Hostinger, UAB (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2019, 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 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 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 6, 2020. 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.
The language of the proceedings is English.
The Complainant, Rakuten, Inc., is a Japanese e-commerce and Internet company founded in 1997, involved in various sectors including e-commerce, digital content, communications, fintech, and online hotel reservations. The Complainant’s global gross transaction volume was around USD 118 billion in December 2017.
According to its allegations, the Complainant holds about 300 trademark registrations for RAKUTEN covering at least 55 countries, including the United States trademark registration number 4088493, filed on May 1, 2009, and registered on January 17, 2012, for services in classes 35, 39, and 43.
The Complainant also holds domain names incorporating the mark RAKUTEN, the main one being <rakuten.com> which offers 18 million products and has more than 20 million customers.
The disputed domain name <rakutenmx.com> was registered on June 17, 2019, and, according to the evidence provided in the Complaint, it was used in connection with a fraudulent scheme involving the reselling of timeshares, namely by sending fraudulent email communications impersonating the Complainant (including using its marketing materials) and requiring the seller to pay various fees, such as commision and transfer fees. The Respondent steals such fees and never sends any payment for the timeshare. Annexes 10, 11, and 12 to Complaint support such allegations.
No website content is displayed on the corresponding website of the disputed domain name.
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark RAKUTEN, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
The Complainant holds rights in the RAKUTEN trademark.
The disputed domain name <rakutenmx.com> incorporates the Complainant’s trademark RAKUTEN with two additional letters. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <rakutenmx.com> is confusingly similar to the Complainant’s trademark RAKUTEN, pursuant to the Policy, paragraph 4(a)(i).
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark RAKUTEN, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
To the contrary, the Respondent has used the disputed domain name in connection with phishing emails in an attempt to fraudulently obtain financial benefits deceiving the Complainant’s clients. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
The Complainant holds registered trademark rights since at least 2002 for RAKUTEN. As shown in the Complaint, the Complainant’s mark gained substantial goodwill and recognition in its sectors of activity.
The disputed domain name <rakutenmx.com> was created in 2019 and incorporates the Complainant’s mark with an additional term – “mx”, which can derive from Mexico.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name did not resolve to an active website. According to the evidence provided in the Complaint and unrefuted by the Respondent, prior to the present proceeding, the Respondent was using the disputed domain name to send email communications for phishing and other fraudulent purposes in an attempt to obtain financial gain from third parties, impersonating a representative of the Complainant. This is a classic phishing scheme and establishes bad faith use and registration.
UDRP panels have consistently held that the use of a domain name other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft or malware distribution. Many of such cases, as well as the present case, involve the respondent’s use of the disputed domain name to send deceptive emails to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers. See section3.4 of the WIPO Overview 3.0.
Furthermore, the Respondent’s contact details in the WhoIs are innacurate and the Respondent refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <rakutenmx.com> be transferred to the Complainant.
Date: January 16, 2020
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