Coupang Corporation v. Sajima Tan
Claim Number: FA1910001866041
Complainant is Coupang Corporation (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is sajima tan (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <coupangcash.net>, <coupanggroup.com>, <coupangholdings.com>, and <coupangyonom.net> (“Domain Names”) registered with TurnCommerce, Inc. DBA NameBright.com.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2019; the Forum received payment on October 10, 2019.
On October 10, 2019, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <coupangcash.net>, <coupanggroup.com>, <coupangholdings.com>, and <coupangyonom.net> domain names are registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the names. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 October 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@coupangcash.net, postmaster@coupanggroup.com, postmaster@coupangholdings.com, postmaster@coupangyonom.net. Also on October 15, 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.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Coupang Corporation, is one of the largest and fastest-growing online retail shopping companies in the world. Complainant has rights in the COUPANG and YONOM marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., COUPANG - Reg. No. 5,173,689, registered Apr. 4, 2017) and the Korean Intellectual Property Office (“KIPO”) (e.g., YONOM – Reg. No. 4015100720000, registered on Aug. 14, 2019.) Respondent’s <coupangcash.net>, <coupanggroup.com>, and <coupangholdings.com> domain names are confusingly similar because Respondent incorporates Complainant’s COUPANG mark in its entirety and add the generic or descriptive terms “cash,” “group,” and “holdings” along with the “.net” or “.com” generic top-level domain. The <coupangyonom.net> domain name is confusingly similar to both Complainant’s COUPANG and YONOM marks, as the domain name incorporates both marks in their entirety and adds a “.net” gTLD.
Respondent has no rights or legitimate interests in the <coupangcash.net>, <coupanggroup.com>, <coupangholdings.com>, and <coupangyonom.net> domain names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use the COUPANG or YONOM marks in any manner. Respondent’s use of the Domain Names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the Domain Names.
Respondent registered and is using the <coupangcash.net>, <coupanggroup.com>, <coupangholdings.com>, and <coupangyonom.net> domain names in bad faith as Respondent engages in a pattern of bad faith registration by registering four domain names incorporating the COUPANG and YONOM marks. Further, Respondent engaged in opportunistic bad faith by registering the Domain Names in temporal proximity to Complainant’s investment announcement. Additionally, Respondent makes no active use of the Domain Names. Respondent also provided false WHOIS information in bad faith. Finally, Respondent had constructive or actual knowledge of Complainant’s rights in its COUPANG and YONOM marks mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On October 16, 2019, Respondent sent an e-mail, which in its entirety reads:
“Hi
I would like to talk with someone from coupang.
I am willing to transfer the domain if you cancel the process.
Best regards,”
Complainant holds trademark rights for the COUPANG and YONOM marks. Each of the Domain Names is confusingly similar to either or both of Complainant’s COUPANG and YONOM marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant asserts rights in the COUPANG and YONOM marks based upon its registration of the COUPANG mark with the USPTO (e.g., COUPANG - Reg. No. 5,173,689, registered Apr. 4, 2017) and the YONOM mark with the KIPO (e.g., YONOM – Reg. No. 4015100720000, registered on Aug. 14, 2019.) Registration of a mark with a national trademark agency sufficiently confers a complainant’s trademark rights per Policy ¶ 4(a)(i). See 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.”).
The Panel finds that the domain names <coupangcash.net>, <coupanggroup.com>, and <coupangholdings.com> are confusingly similar to the COUPANG mark as they wholly incorporate Complainant’s COUPANG mark and add the generic or descriptive terms “cash,” “group,” and “holdings” along with the “.net” or “.com” generic top-level domain. The addition of a descriptive word and a TLD to a mark fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel finds that the <coupangyonom.net> domain name is confusingly similar to both Complainant’s COUPANG and YONOM marks, as the domain name wholly incorporates each of these marks and adds a “.net” gTLD. Combining two marks owned by a complainant fails to sufficiently distinguish a disputed domain name from either of these marks for the purposes of Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the COUPANG or YONOM marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “sajima tan” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are inactive and there is no other evidence of any intention to use the Domain Names for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (November 19, 2018 for <coupangyonom.net>, November 22, 2018 for <coupanggroup.com> and <coupangholdings.com> and March 17, 2019 for <coupangcash.net>). Respondent had actual knowledge of Complainant’s COUPANG or YONOM marks. The Complainant has used the COUPANG mark since 2010 and the Respondent has not provided any explanation for its registration of four domain names that correspond with Complainant’s marks. In particular, it would be implausible for a party to register a domain name (<coupangyonom.net>) that combined both of Complainant’s COUPANG or YONOM marks without that party having knowledge of Complainant. In the absence of rights or legitimate interests, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the Complainant, being the owner of the COUPANG or YONOM marks from reflecting those marks in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without alternative explanation (or active use), registered four domain names that reproduce the COUPANG and/or YONOM marks. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coupangcash.net>, <coupanggroup.com>, <coupangholdings.com>, and <coupangyonom.net> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 10, 2019
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