Coupang Corporation v. [unknown holder]
Claim Number: FA1903001832821
Complainant is Coupang Corporation (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington DC, USA. Respondent is [unknown holder] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coupangshop.com>, <coupangmall.com>, <coupangfood.com>, <partnerscoupang.com>, and <ccoupang.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 6, 2019; the Forum received payment on March 6, 2019.
On March 6, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coupangshop.com>, <coupangmall.com>, <coupangfood.com>, <partnerscoupang.com>, and <ccoupang.com> domain names (the Domain Names) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 1, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coupangshop.com, postmaster@coupangmall.com, postmaster@coupangfood.com, postmaster@partnerscoupang.com, and postmaster@ccoupang.com. Also on March 12, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On March 21, 2019 the Forum received a pleading from the Respondent entitled “Objection and Demand to be Removed from Proceeding.” This pleading (the Objection and Demand) was initially treated as a Response.
On March 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
An Additional Submission was received from Complainant and determined to be complete on March 25, 2019.
On or about March 27, 2019 the Forum received an email from the Respondent stating that its Objection and Demand was not intended as a Response, objecting to its being taken as such, and reiterating its requests that the Forum (i) immediately remove Respondent from this matter, (ii) request the registrar to provide the Forum with the actual account owner’s identity, and (iii) direct the Complainant to amend its Complaint to reflect the true and actual owner of the Domain Names. Respondent further requested an extension of time within which to file a Response.
On March 28, 2019 the Panel entered a Ruling and Order finding that Respondent’s Objection and Demand was not a Response, and extending the time within which Respondent could file a Response until April 8, 2019. It denied the remainder of Respondent’s requests for relief.
A Response was received from Respondent and determined to be timely on April 8, 2019.
On April 10, 2019 Complainant’s Additional Submission was received and determined to be timely.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The information furnished to the Forum by the registrar lists the same entities as the registrant and registrant organization for all five Domain Names and gives the same contact information (mailing address, telephone number and email address) for them. All five Domain Names were registered with the same registrar on November 22 and 23, 2018, and they were all transferred to Respondent on or about February 7, 2019. On this evidence the Panel finds that all of the Domain Names are registered to the same person or entity and will proceed as to all of them.
A. Complainant
Complainant is one of the largest and fastest-growing online retail shopping companies in the world. It has rights in the COUPANG mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,173,689, registered Apr. 4, 2017) and the South Korean Intellectual Property Office (“KIPO”) (Reg. No. 224,196, registered Jan. 3, 2012). Respondent’s Domain Names are confusingly similar to Complainant’s mark as each incorporates Complainant’s mark in its entirety, four of them merely adding a descriptive/generic term (“shop,” “mall,” “food,” “partners”), the fifth misspelling the mark by adding an extra letter “c,” and all of them adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use in that they all resolve to commercial pay-per-click web sites featuring sponsored-link advertisements both unrelated and directly related to Complainant’s business, (ii) Respondent is not commonly known by the Domain Names, (iii) Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, and (iv) Respondent engages in typosquatting with respect to the <ccoupang.com> Domain Name.
Respondent registered and uses the Domain Names in bad faith. First, it registered and uses the Domain Names to intentionally attract Internet users to its pay-per-click web sites for commercial gain by creating a likelihood of confusion with Complainant’s COUPANG mark as to the source, sponsorship, affiliation, and/or endorsement of the websites associated with them. Second, it fraudulently registered the Domain Names with false information as to the identity of the registrant to frustrate the purpose of the WHOIS system. Third, it offers to sell the Domain Names for amounts well in excess of the direct costs associated with them. Fourth, Respondent demonstrates a pattern of bad faith as it registered the five confusingly similar Domain Names involved in this proceeding, and has prior adverse UDRP decisions against it for bad faith registrations of other domain names. Fifth, Respondent engages in typosquatting with respect to the <ccoupang.com> Domain Name. Sixth, Respondent’s registration of the Domain Names two days after widespread publication of SoftBank’s $2 billion investment in Complainant’s business indicates the Domain Names were registered opportunistically in bad faith. Seventh, in response to notice of a domain name dispute, by either cooperating in the transfer of the Domain Names to a new registrant, or by fraudulently altering the WHOIS information to appear as though the Domain Names were transferred, Respondent has engaged in “cyberflying.” Finally, Respondent knew of Complainant’s rights in the COUPANG mark given (1) Complainant’s registrations of its COUPANG mark, (2) the fame of Complainant’s COUPANG mark, (3) Complainant’s long-standing use of the COUPANG mark, (4) the fact that the Domain Names incorporate Complainant’s COUPANG mark in its entirety, (5) Complainant’s presence in the Asian marketplace, and (6) the opportunistic timing of the Domain Names’ registrations.
B. Respondent
None of the Domain Names are owned by the named Respondent. Respondent did not receive the Written Notice of Complaint until March 18, 2019, when it arrived in the mail. The email notice of the proceeding was sent to an email address not associated with Respondent and at which Respondent does not receive email. These Domain Names were fraudulently registered in Respondent’s name by some third party not known to Respondent. Even the Complainant believes that the named Respondent is not the person who actually registered the Domain Names. The Registrar was obligated by applicable specifications to verify registrant contact information at the time of registration and did not do so.
Respondent did not register the Domain Names in its name, and it is manifestly unfair and wrong for its name to be associated with any of the misconduct alleged to have been committed by the person who actually did register the Domain Names. Respondent requests that if it is not dismissed from these proceedings the Panel should remove its name and identity “from any and all documentation and association” in this proceeding, and that any Decision should make a clear and concise finding that the named Respondent was wrongly named in this matter.
Respondent does not respond to or contest any of the factual allegations asserted by Complainant bearing upon the elements of the case set forth in Policy ¶ 4(a), and states that since it has no ownership or beneficial interest the Domain Names it lacks the authority to consent to their transfer.
C. Complainant Additional Submissions
March 25, 2019: The Objection and Demand filed by Respondent supports Complainant’s arguments that the Domain Names were registered and are being used in bad faith. Complainant reaffirms its belief that the Domain Names were registered fraudulently by a third party and acknowledges Respondent’s concern about being unjustly associated with any ruling in this proceeding that finds bad faith registration and use of the Domain Names. Nevertheless, the Complaint was correctly filed.
April 10, 2019: Complainant does not dispute the named Respondent’s claim that it did not register the Domain Names. If the Panel determines that the Domain Names were fraudulently registered in the name of the named Respondent, Complainant requests that the Panel redact Respondent’s name and identifying information from the Decision.
Preliminary Issue: Identity of Respondent
The Respondent listed as the registrant in the records of the registrar and named as Respondent herein asserts that it did not register the Domain Names, that it does not own them, and that some unknown person fraudulently used its public information to register them, defrauding the Complainant and the Forum, and implicating the named Respondent in illegal activity. The named Respondent requests that its name and identity be “removed” from the records of this proceeding.
The Panel understands the named Resondent’s concern about being named as the Respondent in a UDRP decision that may find bad faith registration and use of a domain name when the domain name may have been fraudulently registered in the Respondent’s name by an unkown third party. While there is no authority in the Policy or the Rules for a respondent to be dismissed or “removed” from a proceeding in these circumstances, paragraph 4(j) of the the Policy provides for portions of a decision to be redacted in a proper case. Forum Supplemental Rule 15(b) provides that any request to have a portion of a decision redacted must be made in the Complaint, the Response, or an Additional Submission. Although the Response does not cite or refer to either of these provisions or use the word “redact,” it does request that the identity of the named Respondent not be disclosed. The Panel finds that this is the functional equivalent of a request for redaction and will treat that request as such.
In any event, Complainant’s Additional Submission dated April 10, 2019 cites Policy ¶ 4(j) and Forum Supplemental Rule 15(b), and expressly requests that the Panel redact the named Respondent’s name and identifying information from the Decision if it determines that the Domain Names were fraudulently registered.
The evidence that some unknown third party wrongfully and fraudulently registered the Domain Names in the name of the named Respondent is convincing. In addition to Respondent’s unequivocal and emphatic statements that it did not register the Domain Names, Complainant submitted evidence that before filing the Complaint it contacted the previous registrant of the Domain Names, believed to be located in Korea, to demand their transfer to Complainant. The previous registrant declined to do so, saying he planned to transfer them to “his Chinese friend.” See, Complaint Exhibit 17. The WHOIS history for the Domain Names submitted as Complaint Exhibit 16 and Response Annexes 2-6 shows that the Domain Names were registered to a different person, with an address in Korea, as recently as January 25, 2019. It is thus clear that the named Respondent did not register the Domain Names and had no part in the conduct which prompted Complainant to bring this proceeding, as more fully described below. Accordingly, pursuant to Policy ¶ 4(j) and in accord with the action of other UDRP panels, the Panel has redacted the name and identifying information of the named Respondent from this Decision. Capital One Financial Corp. v. [Unknown Holder], Case No. FA1607001684338 (Forum Aug. 23, 2016) (“Respondent contends that it has been the victim of identity theft. Specifically, on July 28, the Forum received email communications from Respondent stating that ‘Someone has apparently used my name without my knowledge or permission’. . . . The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion. Accordingly, this Panel finds that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person.”).
All references to “Respondent” in the Findings and Decision below mean and refer to the person who actually effected these registrations, who is identified as “[unknown holder]” in the case caption.
Notwithstanding the foregoing, the Panel reaffirms the findings and conclusions in its Ruling and Order dated March 28, 2019 that the named Respondent was properly identifed in the Complaint, that this proceeding was properly filed, and that the Forum gave notice thereof in accordance with the Policy and the Rules.
Merits of the Case
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant’s COUPANG mark was registered with the USPTO (Reg. No. 5,173,689) on April 4, 2017, and with the KIPO (Reg. No. 224,196) on January 3, 2012. See, Complaint Exhibit 12. Registration of a mark with governmental trademark authorities is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). The registration certificate issued by the USPTO for Complainant’s mark shows that the mark was owned at the time of registration by Forward Ventures Co. Ltd., but the Abstract of Assignment included within Complaint Exhibit 12 demonstrates that the mark was assigned by change of corporate name to Complainant, and it thus has full rights in the U.S. registration of the mark.
Respondent’s Domain Names are confusingly similar to Complainant’s mark as all of them incorporate the mark in its entirety, four of them merely adding a generic or descriptive term (“shop,” “mall,” “food,” “partner”), the fifth misspelling the mark by adding an extra letter ”c,” and all of them adding the gTLD “.com.” These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”), TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”), Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names, and this establishes their confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the COUPANG mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not using them in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web sites resolving from them host pay-per-click links to other web sites which offer goods both related and unrelated to Complainant’s goods, (ii) Respondent is not commonly known by the Domain Names, (iii) Complainant has not authorized or licensed Respondent to use its COUPANG mark, (iv) the Domain Name <ccoupang.com> is a typosquatted version of Complainant’s mark. These allegations are supported by competent evidence.
Complaint Exhibit 14 consists of screenshots of the web sites resolving from the Domain Names. They appear to be identical, state that they are parked for free courtesy of GoDaddy, and contain links to other web sites which offer a variety of goods for sale, some of which sites appear to compete with Complainant and some of which do not. Using a confusingly similar domain name to host hyperlinks to competing or unrelated services does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of ¶ 4(c)(iii). Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”), CDW LLC v. Spencer Askew, 1806931 (Forum Oct. 22, 2018) (“Respondent employs the <cdw-logistics.com> domain name to profit by diverting internet users to a parked webpage that contains [unrelated] pay-per-click hyperlinks. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Names as entities whose names are not even remotely similar to “Coupang” or any of the generic or descriptive words included in the Domain Names. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The <ccoupang.com> Domain Name is a typosquatted version of Complainant’s COUPANG mark. By simply adding an extra letter “c” at the beginning of that mark Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Registering a typosquatted domain name has been held to evidence a lack of rights and legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii). Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of before the Panel supports a finding of bad faith use and registration of the Domain Names, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, based upon the evidence discussed above in connection with the rights or legitimate interests element, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Names and the resolving web sites. When a visitor to these sites logs on to one of the other sites which appear there, Respondent receives compensation from the various web site owners who are accessed from Respondent’s site. Most likely, Respondent receives compensation based upon the number of visits the web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Names is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Second, as discussed above, Respondent falsely and fraudulently registered the Domain Names in the name of a person who had no interest in or connection whatever with Respondent or its Domain Names. This frustrates the purpose of the WHOIS system and obscures Respondent’s true identity. The Policy recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and intentionally providing false information to a registrar about the identity of and contact information for the registrant has been held to constitute bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Amazon Technologies, Inc. v. Zhang Biao Cao / Cao Zhang Biao / Zhang Biao / Cao Zhangbiao / Wang Li Hong / Li Hui, Case No. FA1711001758917 (Forum Dec. 20, 2017) (“Respondent’s use of multiple aliases and other false WHOIS information is calculated to frustrate the purposes of WHOIS and obscure registrant’s true identity, and this is further evidence of bad faith.”), Amazon Technologies, Inc. v. Zhang Biao Cao / Cao Zhang Biao / Zhang Biao / Cao Zhangbiao / Wang Li Hong / Li Hui, Case No. FA1711001758917 (Forum Dec. 20, 2017) (“Respondent’s ubiquitous use of multiple aliases and false WHOIS information to obscure his true identity when registering the Disputed Domain Names, is further evidence of Respondent’s bad faith.”), Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Syedi, Case No. FA1611001701231 (Forum Dec. 16, 2016) (“Complainant argues that Respondent’s use of false WHOIS information shows its attempt to hide its identity in a vain attempt to present itself as legitimate. Arrangement of WHOIS information in a dishonest manner has been found to constitute bad faith.”), Mars, Incorporated v. RaveClub Berlin, Case No. FA0106000097361 (Forum July 16, 2001) (providing false registration and contact information for infringing domain names evidenced Respondent’s bad faith), Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000).
Third, the web pages resolving from the Domain Names state clearly that the Domain Names are for sale, at prices ranging from $2,195.00 to $5,747.00. See, Complaint Exhibits 14 and 15. These prices are clearly in excess of the out-of-pocket costs directly related to the Domain Names, and this places Respondent squarely within the circumstances articulated by Policy ¶ 4(b)(i). Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).
Fourth, Respondent registered and is using the confusingly similar Domain Names to prevent Complainant from reflecting its mark in a corresponding domain name, at least with respect to the <coupangshop.com>, <coupangmall.com>, <coupangfood.com>, and <partnerscoupang.com> Domain Names. The fact that Respondent registered the five Domain Names involved in this proceeding is sufficient to establish a pattern for the purposes of Policy ¶ 4(b)(ii), and its conduct here thus falls within the circumstances described in that paragraph. AOL Inc. v. Kenn Gividen, Case No. FA1302001485005 (Forum Mar. 25, 2013) (“Complainant also argues that Respondent’s bad faith registration and use is evident through the fact that two infringing domain names are present in this current dispute. The Panel agrees that Respondent’s registration of two domain names that are confusingly similar to THE HUFFINGTON POST mark is evidence of Policy ¶ 4(b)(ii) bad faith use and registration.”), Vera Bradley, Inc. v. zhenhua ai/aizhenhua, Case No. FA1210001466574 (Forum Dec. 19, 2012) (“The Panel agrees with Complainant and finds that the registration of the two domain names at issue in the current dispute, as well as Respondent’s other domain name registrations are sufficient for the Panel to find bad faith under Policy ¶ 4(b)(ii) in the present dispute.”), YAHOO! INC v. SYRYNX, INC., Case No. D2000-1675 (WIPO Jan. 30, 2001) (finding a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of two domain names incorporating the complainant’s YAHOO! mark).
Fifth, as discussed above, by simply adding an extra letter “c” to Complainant’s mark in the <ccoupang.com> Domain Name, Respondent is guilty of typosquatting. Given the nonexclusive, open-ended nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Sixth, typosquatting necessarily implicates another factor that has also, by itself, been held by UDRP panels to constitute bad faith. It is evident from the unique and whimsical nature of Complainant’s mark, the fact that that mark is incorporated in its entirety into the Domain Names, and the fact that Respondent uses the Domain Names to advertise businesses operating in the same online retail industry as Complainant, that Respondent had actual knowledge of Complainant’s mark when it registered the Domain Names. See, Complaint Exhibit 2 for registration dates. Again, considering the nonexclusive, open-ended nature of Policy ¶ 4 (b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Seventh, in November 2018 SoftBank announced that it was investing $2 billion in Complainant. Articles announcing this were published in Forbes, the New York Times and Bloomberg on or about November 20, 2018. See, Complaint Exhibit 4. Respondent registered the Domain Names just two and three days after this news was published. See, Complaint Exhibit 2 for registration dates. Again, recognizing the nonexclusive nature of Policy ¶ 4(b) UDRP panels have held that this type of opportunistic registration is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Finally, as discussed above in connection with the Respondent Identity issue, Complainant contacted the previous registrant of the Domain Names on or about February 1, 2019 to demand their transfer and threaten a UDRP proceeding if that did not happen. See Complaint Exhibit 17. The comparative WHOIS information for the Domain Names submitted as Complaint Exhibit 16 shows that the Domain Names were registered to an innocent third party on or about February 7, 2019. Thus, by either cooperating in the transfer of the Domain Names to a new registrant, or by fraudulently altering the WHOIS information to look as though the Domain Names had been transferred, Respondent attempted to disrupt the UDRP process and circumvent the Policy. This is known as “cyberflying” and has also been found by UDRP panels to be evidence of bad faith under Policy ¶ 4(a)(iii). 3M Co. v. 3M Co., FA 1106749 (Forum Jan. 14, 2008), see also American Career College, Inc. v. Gioacchino Zerbo, a/k/a Vincenzo Dinoia, FA 1404659 (Forum Sep. 26, 2011) (“Respondent has engaged in cyberflying by changing the WHOIS registrant information after it received notice of this UDRP proceeding.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coupangshop.com>, <coupangmall.com>, <coupangfood.com>, <partnerscoupang.com>, and <ccoupang.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
April 16, 2019
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