WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rakuten, Inc. v. Steven Bero

Case No. D2019-3063

1. The Parties

The Complainant is Rakuten, Inc., Japan, represented by Greenberg Traurig, LLP, United States of America (“United States”).

The Respondent is Steven Bero, United States.

2. The Domain Name and Registrar

The disputed domain name <rackuhten.com> (the “Domain Name”) 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 December 11, 2019. On December 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2020.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 3, 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.

4. Factual Background

The following facts are undisputed.

The Complainant is a well-known Japanese e-commerce and Internet company founded in 1997. Complainant operates its primary Unites States website at “www.rakuten.com”. The online marketplace which is located at “www.rakuten.com/shop”, offers over 18 million products and has over 20 million customers. The Complainant is the owner of many registered trademarks worldwide, consisting of the wordmark and/or containing the verbal element RAKUTEN, including, but not limited to, the United States trademark RAKUTEN with registration number 4,088,493, registered on January 17, 2012; the United States trademark RAKUTEN SUPER POINTS with registration number 4,995,651, registered on July 12, 2016 (hereinafter referred to together, in singular, as the “Trademark”).

The Domain Name was registered on the February 3, 2019. The Domain Name redirects directly to the Complainant’s official website “www.rakuten.com”.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name is visually identical to Complainant’s famous Trademark in that it merely adds two letters “c” and “h” <rackuhten.com> to the Trademark. The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is insignificant and disregarded in the confusing similarity analysis. The Domain Name is also aurally identical to the Trademark, notably, the homepage of Complainant’s website prominently displays that Complainant’s Trademark should be pronounced as “RACK-UH-TEN”. The addition of these two letters to the Trademark, is a likely mistype or misspelling by the Complainant’s (potential) costumers, which enhances the likelihood of confusion. The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name to divert Internet traffic to Complainant’s website in order to earn a commission through an affiliate advertising program.

The Domain Name was registered and has been used in bad faith. The Trademark significantly predates the registration date of the Domain Name and the Respondent was aware of the Trademark. Furthermore, due to the worldwide fame of the Complainant and its Trademark, the registration of the almost identical Domain Name gives rise to an interference of bad faith registration and use. In addition, the Respondent is using the Domain Name to attract Internet users through the Complainant’s website for its own commercial gain. The fact that Internet users were lured through, rather than to the Respondent’s site, does not lessen the bad faith. The use of the Domain Name to redirect to the Complainant’s website demonstrates bad faith, as it enhances the likelihood of confusion with the Trademark for Respondent’s commercial gain through an improper affiliate abuse scheme.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the domain name must be shown to be identical or confusingly similar to that mark.

The Complainant has shown that it has rights in the Trademark.

The Domain Name only differs from the Trademark by the addition of the letters “c” and “h”.

The Trademark is therefore recognizable in the Domain Name. Moreover, it is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the above-mentioned typos are a clear indication of intentional misspelling of the Trademark.

In addition, with regard to the suffixes “.com” (which indicates that the Domain Names are registered in the “.com” gTLD, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / [email protected], WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of the Domain Name and does not give any distinctiveness.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “Rackuhten”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. The Respondent is effectively making a passive use of the Domain Name, which use does not entail the offer of any goods or services on the part of the Respondent. As regards Paragraph 4(c)(iii), the linking of the Domain Name to the Complainant’s commercial website is not a legitimate noncommercial or fair use of the Domain Name, since the use is clearly associated with a commercial website (see Ameriquest Mortgage Co. v. Jason Banks,WIPO Case No. D2003-0293). In any event, it is difficult to imagine how the Respondent’s conduct in adopting a Domain Name which is identical to the Complainant’s internationally well-known Trademark, could be regarded in any way as bona fide or legitimate. The Respondent’s adoption of the Domain Name was clearly to attract Internet users seeking the Complainant’s website and to create confusion. The Respondent was not authorized to use the Trademark and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the Domain Name (see Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946).

Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names were registered and are being used in bad faith.

The Panel finds that the Trademark is, as well as the activities of the Complainant, well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name.

The Respondent has been using the Domain Name to link to the Complainant’s website. Certainly in absence of a Response, it can be inferred from the fact that the Respondent is linking to Complainant’s website that Respondent was fully aware of Complainant and the Trademark when registering the Domain Name.

Inherent in this linking is the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant.

The Panel also takes into consideration that, although the redirection to Complainant’s website may appear to be rather harmless, the inherent risk exists that the Domain Name will be used for phishing schemes. Internet users receiving email from accounts associated with the Domain Name are likely to verify the authenticity of the email by checking the website that is associated with the Domain Name. Given the redirection to the official website of Complainant, the Internet user can easily be misled. Moreover, the Panelist finds that the use of the Domain Name disrupts Complainant’s business.

Given the well-known status of the Complainant and its Trademark, the Panel considers that the Respondent’s passive use of the Domain Name evinces bad faith use in this case, since this use reflects an intention to exploit the reputation of the Trademark by attracting Internet users seeking the Complainant’s website.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 Domain Name <rackuhten.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: February 17, 2020