Coupang Corporation v. Chae Suwon
Claim Number: FA2002001883203
Complainant is Coupang Corporation (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Chae Suwon (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coupangonetouch.com> and <coupayonetouch.com>, registered with Megazone Corp., dba HOSTING.KR (collectively, the “Disputed Domain Names”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2020; the Forum received payment on February 13, 2020. The Complaint was submitted in English.
On February 25, 2020, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <coupangonetouch.com> and <coupayonetouch.com> Disputed Domain names are registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the names. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 February 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2020 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@coupangonetouch.com, postmaster@coupayonetouch.com. Also on February 28, 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 March 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Founded in 2010, Complainant is one of the largest and fastest-growing online retail shopping companies in the world. Headquartered in Seoul, with satellite offices in China and the United States, Complainant ships as many as 1.7 million retail units in a single day. Complainant’s online marketplace offers a wide variety of consumer, business, and industrial products, including food. Complainant’s shopping app at one point was listed in the Top 20 popular apps on both the Google Play Store and Apple App Store—the only shopping-related app to make the list. In addition, Complainant’s services have received substantial unsolicited media attention.
Lastly, and particularly relevant to the Disputed Domain Names at issue here, Complainant’s COUPAY-branded service is a payment platform that, through encryption and data analytics, allows for so-called ‘One-Touch Payment,’ which requires users to make only a single click to finish the checkout process and buy products on Complainant’s platforms. This fast and user-friendly service has no doubt attributed to Complainant’s rise to prominence as a well-known and popular e-commerce platform in South Korea and abroad.
Complainant is the owner of the COUPANG and COUPAY brands and is the owner of numerous COUPANG and COUPAY trademark registrations in the United States Patent and Trademark Office (the “USPTO”) and the Korean Intellectual Property Office (the “KIPO”), as well as in numerous other countries, to identify and distinguish its various services.
Through the USPTO, Complainant owns, inter alia, U.S. Trademark Reg. No. 5,173,689 for the mark COUPANG; registered April 4, 2017, and U.S. Trademark Reg. No. 5,911,134 for the mark COUPAY; registered November 19, 2019. Through the KIPO, Complainant owns Korean Trademark Reg. No. 0224196 for the mark COUPANG; registered Jan. 3, 2012, and Korean Reg. No. 410375049 for the mark COUPAY; registered Oct. 18, 2016. In addition, Complainant owns COUPANG and COUPAY trademark registrations around the world on almost every continent (collectively, the “COUPANG and COUPAY Marks”).
Complainant has registered domain names incorporating the COUPANG Marks, namely <coupang.com> and <coupang-usa.com>, both of which advertise Complainant’s products and services. Complainant’s website at <coupang.com> was registered on May 23, 2010. Complainant’s website at <coupang-usa.com> was registered on June 2, 2015.
The Disputed Domain Names were both registered on July 11, 2019 and resolve to inactive websites. The Disputed Domain Names incorporate Complainant’s COUPANG and COUPAY Marks in their entirety, with the addition of the descriptive term “onetouch” followed by the generic Top-Level Domain (“gTLD”) “.com”. Thus, the Disputed Domain Names are confusingly similar to the COUPANG and COUPAY Marks.
Respondent has no rights or legitimate interests in the Disputed Domain Names, as Respondent is not commonly known by the Disputed Domain Names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s COUPANG and COUPAY Marks. In addition, Respondent does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use; rather, the Disputed Domain Names resolve to inactive websites.
Respondent also registered and used the Disputed Domain Names in bad faith. Specifically, Complainant’s COUPANG and COUPAY Marks are incorporated into the Disputed Domain Names in their entirety. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith.
Bad faith may also be found where the Respondent knew or should have known of the Complainant’s registration and use of the COUPANG and COUPAY Marks prior to registering the Disputed Domain Names. It strains credulity to believe that Respondent had not known of the Complainant or its COUPANG and COUPAY Marks when registering the Disputed Domain Names, especially since the Disputed Domain Names incorporate Complainant’s COUPANG and COUPAY Marks in their entirety.
The Panel also notes that Respondent registered the Disputed Domain Names less than one month after Complainant applied to register COUPANG ONETOUCH and COUPAY ONETOUCH trademarks through the KIPO. Respondent’s addition of the term “onetouch” to the end of Complainant’s COUPANG and COUPAY Marks serve to strengthen the mistaken impression that the Disputed Domain Names are affiliated with Complainant. The timing of Respondent’s registration of the Disputed Domain Names indicates that such domain names were registered opportunistically in bad faith. Opportunistic bad faith can be found where a respondent registers a domain name in order to take advantage of events surrounding Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the COUPANG and COUPAY Marks. The Disputed Domain Names are confusingly similar to Complainant’s COUPANG and COUPAY Marks. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Names and that Respondent registered and is using the Disputed 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 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”).
Preliminary Issue: Language of the Proceedings
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Korean, thereby making the language of the proceedings Korean, in accordance with UDRP Rule 11(a).
However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party. See The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (Forum March 3, 2020) (deciding that the proceedings may be conducted in English without prejudice to the Respondent, because the Forum provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case).
In the present case, Respondent has chosen not to respond to the Complaint. The website to which the Disputed Domain Names resolve feature the terms “Coupang” and “Coupay,” which are the dominant portions of the Disputed Domain Names and are creative portmanteaus of the English words “coupon” and “pay. In addition, the Disputed Domain Names feature the English words “one” and “touch.” Therefore, pursuant to Rule 11(a), giving regard to the circumstances of the case, the Panel determines that fairness and justice to both parties and due expedition are best satisfied by conducting the remainder of the proceedings in English. See Coupang Corporation v. Hyung Jun Lim, FA 1906001847602 (Forum July 20, 2019) (where respondent did not object or file a response of any kind, English was appropriate where “English is the working language of Complainant’s representative, and because the domain name here in issue is rendered in English, as well as because to require Complainant to translate all pertinent documents of the proceeding into Korean would impose on it an inordinate burden of cost and time.”).
Lastly, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied anyway submission of the Commencement Notification in the Korean language, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel concludes that Complainant has shown to have rights in COUPANG and COUPAY Marks based upon registration of the COUPANG and COUPAY Marks with the USPTO and the KIPO (as well as with numerous other jurisdictions’ trademark offices), as referenced above. 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 Panel also concludes that the Disputed Domain Names are confusingly similar to the COUPANG and COUPAY Marks under the Policy ¶ 4(a)(i). The Disputed Domain Names incorporate Complainant’s COUPANG and COUPAY Marks in their entirety, with the addition of descriptive terms “onetouch” followed by the gTLD “.com”.
Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark do not negate any confusing similarity between a disputed domain name and a mark under Policy ¶4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
See also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the Disputed Domain Names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
To wit, Respondent is not commonly known by the Disputed Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the COUPANG and COUPAY Marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Where no response is filed, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name, even when the registrant appears to be associated with the complainant. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Here, WHOIS identifies “Chae Suwon” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the Disputed Domain Names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent does not make an active use of the domain name. Failure to make active use of a domain name 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). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the Disputed Domain Names showing inactive websites.
The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the Disputed Domain Names in bad faith.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds that the Respondent knew or should have known of Complainant’s rights in its COUPANG and COUPAY Marks when registering the Disputed Domain Names. As noted above, the COUPANG and COUPAY Marks are widely known, especially in Korea, where Respondent resides. Respondent registered the Disputed Domain Names on July 11, 2019, almost ten years after the COUPANG Mark was first used in commerce in Korea, approximately seven years after Complainant first secured a trademark registration for the COUPANG Mark through the KIPO (in 2012), and approximately three years after Complainant first secured a registration for the COUPAY Mark through the KIPO (in 2016). It therefore strains credulity to believe that Respondent had not known of the Complainant or its COUPANG and COUPAY Marks when registering the Disputed Domain Names, especially since the Disputed Domain Names consist of the COUPANG and COUPAY Marks with the mere addition of descriptive terms. Thus, as here, prior knowledge of a complainant’s trademarks prior to registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it). Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the COUPANG and COUPAY Marks prior to registering the Disputed Domain Names, constituting bad faith under the Policy ¶ 4(a)(iii).
Lastly, the timing of Respondent’s registration of the Disputed Domain Names indicates that the Disputed Domain Names were registered opportunistically in bad faith. Opportunistic bad faith can be found where a respondent registers a domain name in order to take advantage of events surrounding Complainant’s mark. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA 1504001613780 (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); see also Bloomberg Finance L.P. v. M. Malik, FA 1804001782844 (Forum May 16, 2018) (finding that Respondent had acted in opportunistic bad faith when Respondent registered the domain name “tictocbybloomberg.com” on the same day Complainant announced it was launching a product named “Tic Toc by Bloomberg”).
Here, the Panel finds opportunistic bad faith by Respondent when it registered the Disputed Domain Names less than one month after Complainant applied to register COUPANG ONETOUCH and COUPAY ONETOUCH trademarks through the KIPO, as part of Complainant’s apparent initiative to solidify protection of its innovations in the ‘One-Touch Payment’ space. Such timing, the Panel finds, indicates that such domain names were registered opportunistically and in light of Complainant’s applications, constituting bad faith under the Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <coupangonetouch.com> and <coupayonetouch.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 6, 202
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