Coupang Corporation v. Dongmin Kim
Claim Number: FA2003001890021
Complainant is Coupang Corporation (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Dongmin Kim (“Respondent”), South Korea
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coupang.shop>, registered with Gabia, Inc.
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, Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On April 1, 2020, Gabia, Inc. confirmed by e-mail to the Forum that the <coupang.shop> domain name (the Domain Name) is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 April 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 22, 2020 by which date 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@coupang.shop. Also on April 2, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Language of the Proceedings
The registration agreement for the Domain Name is written in Korean. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant requests that these proceedings be conducted in English. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering the complainant to translate the complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Complainant filed its Complaint in English but Written Notice of the Complaint, written in both Korean and English, was served upon Respondent in accordance with Rules 1 and 2. Complainant argues that Respondent is conversant and proficient in the English language. In support of that it noted that the web site to which the Domain Name resolves is in part a work resume for “Dongmin Kim,” who invites visitors to contact him if they want to purchase the Domain Name (Complaint Exhibit 14). This offer is made in English and the web site appears to have both English and Korean language content. Id. In addition the web site states explicitly that Mr. Kim has “intermediate/high level” proficiency in the English language. Id. Neither Complainant nor the Panel is proficient in the Korean language so proceeding in Korean would involve substantial additional expense and time for translation. Further, Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in the Korean language or otherwise. Under these circumstances the Panel finds that the additional time and expense of proceeding in Korean would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. For this reason, the Panel determines that this proceeding will be conducted in English.
A. Complainant
Complainant is one of the largest online retail shopping companies in the world. It has rights in the COUPANG mark through its registration of the mark with multiple trademark agencies including the Korean Intellectual Property Office (“KIPO”) (Reg. No. 0224196, registered Jan. 3, 2012) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,173,689, registered Apr. 4, 2017). Respondent’s <coupang.shop> Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, merely adding the “.shop” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name, nor has Complainant authorized him to use its mark. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, he uses the Domain Name to promote TMON, a direct competitor of Complainant, and makes a general offer to sell the Domain Name.
Respondent registered and uses the Domain Name in bad faith. The <coupang.shop> is so closely related to Complainant’s mark that its very use by Respondent, who has no connection with the Complainant, is evidence of opportunistic bad faith. Further, he uses the Domain Name to promote a direct competitor of Complainant, makes a general offer to sell the Domain Name, and he registered the Domain Name with knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The COUPANG mark was registered to Forward Ventures Co., Ltd. with multiple trademark agencies, specifically the KIPO (Reg. No. 0224196, registered January 3, 2012) and the USPTO (Reg. No. 5,173,689, registered April 4, 2017) and was subsequently assigned to Complainant (Complaint Exhibit 12). Ownership of a mark registered with multiple trademark agencies is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). As assignee and owner of the COUPANG mark, Complainant has sufficient rights in that mark to enable it to bring and maintain this administrative proceeding.
Respondent’s <coupang.shop> Domain Name is identical or confusingly similar to Complainant’s mark. It incorporates the mark verbatim, merely adding the “.shop” gTLD. This change is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). The 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 and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the COUPANG mark, in which Complainant has substantial and demonstrated rights.
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 the respondent of the dispute, the 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the 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 Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not licensed, authorized, or otherwise permitted Respondent to use Complainant’s mark, (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web site resolving from it promotes Respondent’s work at a competitor of Complainant, and (iv) that web site also contains a general offer to sell the Domain Name. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Dongmin Kim (Korean: 김동민).” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes 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.”).
Complaint Exhibit 14 is a screenshot of the web site resolving from the Domain Name. It is essentially a curriculum vitae of Dongmin Kim. It lists his educational experience, expresses his interest in selling the Domain Name and describes his current position and job duties at TMON, which he describes as a “commerce company.” Complaint Exhibit 15 is a screenshot of the web site of TMON, which advertises numerous goods and products for sale at retail, in competition with Complainant. Complaint Exhibit 14 clearly substantiates Complainant’s allegation of a general offer to sell the Domain Name. A general offer to sell a disputed domain name has been held to demonstrate a lack of rights or legitimate interest in a domain name for the purposes of Policy ¶ 4(a)(ii). 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Complainant also alleges that Respondent is using the Domain Name to promote his work as a “service planner” at a company which competes directly with Complainant and cites a number of UDRP decisions holding that using a confusingly similar domain name to compete with a complainant demonstrates a lack of rights or legitimate interests in the domain name. Respondent’s web site contains a link to TMON’s web site and describes the types of work he is doing for that firm, implying a certain degree of success for TMON. Nevertheless, the web site is essentially an advertisement for Dongmin Kim, not TMON. As the Complaint states, the web site “promotes Respondent’s work at TMON.” The Panel is not satisfied that this constitutes using the Domain Name to compete with Complainant. Nevertheless, Respondent’s use of the confusingly similar Domain Name to advertise his own skills and experience as a “service planner” does not confer upon him any rights or legitimate interests in the Domain Name.
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 Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, Respondent registered and is using the Domain Name, which incorporates the COUPANG mark verbatim, but as discussed above has no connection with that mark or its owner, the Complainant. Policy ¶ 4(b) 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 the registration and use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
Second, the resolving webpage displays among other things the message, “You came in through the ‘coupang.shop’ domain. If you would like to purchase this domain, please contact me.” Respondent thus makes a general offer to sell the disputed domain name. In light of the nonexclusive nature of Policy ¶ 4(b), a general offer to sell a confusingly similar domain name has been held to be evidence of show bad faith registration and use. Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”).
Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in March 2020 (Complaint Exhibit 2 shows creation date). Complainant’s COUPANG mark had been used by it for approximately ten years by then and is well-known in the online retail shopping industry (Complaint Exhibit 3). Its mark is unique and would not ordinarily occur to a person considering how to register a domain name, but Respondent copied that mark verbatim into the Domain Name. 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).
Complainant alleges that Respondent’s use of the Domain Name to promote his work with TMON, which is a direct competitor of Complainant, brings his conduct within the circumstances described in Policy ¶¶ 4(b)(iii) and (iv). Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers or business in the online retail industry. In the absence of actual commercial competition between Complainant and Respondent, Respondent’s conduct cannot logically fall within the circumstances stated in Policy ¶ 4(b)(iii). Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii). The Panel rejects Complainant’s argument based upon that paragraph.
Complainant also argues that Respondent is attempting to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site. Respondent’s web site is ambiguous as to whether he is actually offering or interested in offering his skills and services for employment with other businesses. Although the site contains a line indicating his “interests,” which would be consistent with a person seeking or interested in employment, the web site seems mostly directed at describing the work he does for TMON and implying that it is going well there. On balance, the evidence does not demonstrate whether or how Respondent might be attempting to realize some form of commercial gain from his use of the Domain Name such as might fit within the circumstances articulated by Policy ¶ 4(b)(iv). Accordingly, the Panel rejects Complainant’s argument based upon that paragraph as well.
Nevertheless, for the three reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Name 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 <coupang.shop> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
April 29, 2020
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