Coupang Corporation v. pierre john
Claim Number: FA1903001832852
Complainant is Coupang Corporation (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America. Respondent is pierre john (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coupangfresh.com> and <coupang-fresh.com>, registered with Gandi SAS.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2019; the Forum received payment on March 6, 2019.
On March 15, 2019, Gandi SAS confirmed by e-mail to the Forum that the <coupangfresh.com> and <coupang-fresh.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@coupangfresh.com, postmaster@coupang-fresh.com. Also on March 18, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Coupang Corporation, is one of the largest and fastest-growing online retail shopping companies in the world. Complainant has rights in the COUPANG mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,173,689, registered Apr. 4, 2017). See Compl. Ex. 12. Respondent’s <coupangfresh.com> domain name is confusingly similar to Complainant’s COUPANG mark, as the domain name incorporates the mark in its entirety and is differentiated only by the generic/descriptive term “fresh” and the “.com” generic top-level domain (“gTLD”). In addition, Respondent’s <coupang-fresh.com> domain name is also confusingly similar to Complainant’s COUPANG mark, as the domain name incorporates the mark in its entirety and is differentiated by the generic/descriptive term “fresh,” a hyphen, and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <coupangfresh.com> and <coupang-fresh.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the COUPANG mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect Internet users to its website that offers competing services for commercial gain.
Respondent registered and is using the <coupangfresh.com> and <coupang-fresh.com> domain names in bad faith. Respondent engages in a pattern of bad faith registration as Respondent registered two domain names incorporating the COUPANG mark. Further, Respondent attempts to attract, for commercial gain, users to the disputed domain names as Respondent redirects users to a competing page. Respondent also provided a false email address on its WHOIS information. Finally, Respondent had constructive or actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Korean company that is one of the largest and fastest-growing online retail shopping companies in the world.
2. Complainant has established its trademark rights in the COUPANG mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,173,689, registered Apr. 4, 2017).
3. Respondent registered the <coupangfresh.com> and <coupang-fresh.com> domain names on November 20, 2018.
4. Respondent uses the disputed domain names to redirect Internet users to its website that offers competing services for commercial gain.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the COUPANG mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of its trademark the registrations for the COUPANG mark (e.g. Reg. No. 5,173,689, registered Apr. 4, 2017). See Compl. Ex. 12. The Panel therefore holds that Complainant’s registration of the COUPANG mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s COUPANG mark. Complainant argues Respondent’s <coupangfresh.com> domain name is confusingly similar to Complainant’s COUPANG mark, as the domain name incorporates the mark in its entirety and is differentiated only by the generic/descriptive term “fresh” and the “.com” gTLD. In addition, Respondent’s <coupang-fresh.com> domain name is also confusingly similar to Complainant’s mark, as the domain name incorporates the mark in its entirety and is differentiated by the generic/descriptive word “fresh,” a hyphen, and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. 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).); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore determines the <coupangfresh.com> and <coupang-fresh.com> domain names are confusingly similar to the COUPANG mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s COUPANG trademark and to use it in its domain names, adding only the generic/descriptive word “fresh” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <coupangfresh.com> and <coupang-fresh.com> domain names on November 20, 2018;
(c) Respondent uses the disputed domain names to redirect Internet users to its website that offers competing services for commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <coupangfresh.com> and <coupang-fresh.com> domain names, as Respondent is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 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 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).”). The WHOIS information of record for the <coupangfresh.com> and <coupang-fresh.com> domain names lists the registrant as “pierre john,” and no information on the record indicates that Respondent is authorized or licensed to use the COUPANG mark. The Panel therefore finds that Respondent has not been commonly known by the <coupangfresh.com> and <coupang-fresh.com> domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <coupangfresh.com> and <coupang-fresh.com> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain names to redirect Internet users to its website that offers competing services for commercial gain. Use of a disputed domain name to gain commercially by redirecting users to its own competing website may not be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant provides screenshots of the webpages associated with the disputed domain names where Respondent uses Complainant’s mark and Respondent appears to be offering competing services. See Compl. Ex. 14. Accordingly, the Panel agrees that Respondent attempts to pass itself off as Complainant under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent’s bad faith is demonstrated by its pattern of registering domain names in bad faith. Specifically, Complainant argues Respondent’s registration of the <coupangfresh.com> and <coupang-fresh.com> domain names that incorporate the COUPANG mark support a finding of bad faith. Registration of multiple domain names in a single case may be sufficient to support bad faith under Policy ¶ 4(b)(ii). See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). The Panel therefore determines that Respondent’s registration of the <coupangfresh.com> and <coupang-fresh.com> domain names demonstrates a pattern of bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant submits Respondent registered and uses the <coupangfresh.com> and <coupang-fresh.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain names as Respondent redirects users to a competing page. Use of domain names to redirect users to a competing webpage in order to gain commercially is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel is reminded that Complainant provides screenshots of the webpages associated with the disputed domain names where Respondent uses Complainant’s mark and Respondent appears to be offering competing services. See Compl. Ex. 14. The Panel therefore finds Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had actual knowledge and/or constructive notice of Complainant’s rights in the COUPANG mark. The Panel notes that constructive knowledge is insufficient for a finding of bad faith, but actual knowledge of a complainant’s rights in a mark may indicate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy.");see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Complainant contends that given its various trademark registrations around the world, its long standing use of the mark, the fact that the disputed domain names incorporate the mark in its entirety, and Complainant’s presence in the Asian marketplace, Respondent had actual knowledge of Complainant’s trademark. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s rights in the COUPANG mark and this demonstrates bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the COUPANG mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coupangfresh.com> and <coupang-fresh.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 13, 2019
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