Coupang Corporation v. Paek Hye Sook
Claim Number: FA2012001926073
Complainant is Coupang Corporation (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Paek Hye Sook (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coupangplus.com> and <rocketwowplay.com>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2020; the Forum received payment on December 22, 2020.
On December 23, 2020; December 30, 2020, Gabia, Inc. confirmed by e-mail to the Forum that the <coupangplus.com> and <rocketwowplay.com> domain names are registered with Gabia, Inc. and that Respondent is the current registrant of the names. 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 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@coupangplus.com, postmaster@rocketwowplay.com. Also on January 4, 2021, 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 January 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Complainant has alleged that the balance of hardships and fairness weighs in Complainant’s favor, and thus these proceedings be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding.
Complainant contends that:
i) Complainant’s authorized representative’s working language is English. The use of Korean would impose a significant burden on Complainant by forcing it to incur substantial translation costs inordinate to the cost of normal proceedings. As such, the use of Korean would not be in accord with the interests of speedy and low cost of proceedings under the UDRP. See Coupang Corp. v. Hyung Jun Lim, FA1906001847602 (Forum July 20, 2019) (where respondent did not object, 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”); and
ii) The disputed domain names use English/Latin characters rather than Korean characters and contain the English words “plus” and “play.” UDRP panels have found that where the domain names are composed of English/Latin characters and words, domain registrants can be presumed to have knowledge of English. See CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, D2016-1893 (WIPO Nov. 9, 2016) (English was language of the proceeding where, among other things, “the disputed domain name was registered in Latin characters and is composed of words in the English language, rather than Chinese script”); see also Coupang Corp. v. Chae Suwon, FA2002001883203 (Forum Apr. 6, 2020) (“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.”).
After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceedings should be in English.
A. Complainant
i) Complainant is an online retail shopping company. Complainant has rights in the COUPANG and ROCKET WOW marks based on registration with the United States Patent and Trademark Office (“USPTO”) and the Korea Intellectual Property Office (“KIPO”) (e.g. Reg. No. 5,173,689, registered Apr. 4, 2017; Reg. No. 4015010070000, registered July 17, 2019). The disputed domain names <coupangplus.com> and <rocketwowplay.com> are confusingly similar to Complainant’s COUPANG and ROCKET WOW marks because they incorporate the marks in their entirety, simply adding the generic terms “plus” and “play” and the non-distinguishing “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the COUPANG or ROCKET WOW marks. Further, Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent passively holds the domain names.
iii) Respondent registered and used the disputed domain names in bad faith as shown by Respondent’s inactive holding of the domain names. Additionally, Respondent’s registration of the <rocketwowplay.com> domain name shortly after Complainant’s trademark application for the ROCKET WOW PLAY mark suggests opportunistic bad faith. Finally, Respondent had knowledge of Complainant’s rights in the COUPANG and ROCKET WOW marks based upon their notoriety.
B. Respondent
Respondent did not submit a response.
1. The disputed domain names were registered on November 1, 2020.
2. Complainant has established rights in the COUPANG and ROCKET WOW marks based on registration with the United States Patent and Trademark Office (“USPTO”) and the Korea Intellectual Property Office (“KIPO”) (e.g. Reg. No. 5,173,689, registered Apr. 4, 2017; Reg. No. 4015010070000, registered July 17, 2019).
3. The parked webpages resolving at each of the disputed domains do not qualify as an active use of the disputed domain names.
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”).
Complainant asserts rights in the COUPANG and ROCKET WOW marks based on registration with the USPTO and the KIPO. Registration of a mark with a trademark authority such as the USPTO or KIPO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Chevron Intellectual Property LLC v. PAUL DAVID SONG, FA 1800906 (Forum Sep. 26, 2018) (“Registration of a mark with a national trademark agency such as the KIPO is sufficient to establish rights in that mark.”). Complainant provides evidence of registration for both marks (e.g. USPTO Reg. No. 5,173,689, registered Apr. 4, 2017; KIPO Reg. No. 4015010070000, registered July 17, 2019). Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant claims that the disputed domain names are confusingly similar to Complainant’s COUPANG and ROCKET WOW marks because they incorporate the marks in their entirety, simply adding the generic terms “plus” and “play” and the non-distinguishing “.com” gTLD. Under Policy ¶ 4(a)(i), addition of a generic or descriptive term and a gTLD to a mark is insufficient to differentiate a disputed domain name from the mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the names and is not authorized by Complainant to use the COUPANG or ROCKET WOW marks. When no response is submitted, WHOIS information may be used to show that a respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Paek Hye Sook” and Complainant claims that Respondent has never been licensed to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Further, Complainant claims that Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use because Respondent passively holds the domain names. Failure to make active use of a disputed domain name supports a finding that the domain name is not being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the parked webpages resolving at each of the disputed domains and argues that it does not qualify as an active use of the domain names. The Panel finds that Respondent is not using the disputed domain names for 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and used the disputed domain names in bad faith as shown by Respondent’s inactive holding of the domain names. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is one of the largest and fastest-growing online retail shopping companies in the world. In 2016, MIT Technology Review named Complainant one of the 50 Smartest Companies in the World, and Forbes magazine named Complainant one of its “30 Global Game Changers.” By 2018, its revenue was up to $2.5 billion. Complainant has shipped as many as 1.7M retail units in a single day. In addition to its own promotional efforts, Complainant has received substantial unsolicited media attention (Apr. 2, 2018 CNBC article noting that half of Republic of Korea’s 51 million people have downloaded Complainant’s mobile app). Complainant has developed a range of “Rocket”-formative brands, including its subscription-based ROCKET WOW delivery service, which launched in October 2018 and gained over 150 thousand subscribers within one week (January 29, 2019 Korea Times article). Within three months, it had over 1.2 million users. As such, Complainant’s COUPANG and ROCKET WOW marks are considered as being well-known and reputable trademarks, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith registration and use under 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 <coupangplus.com> and <rocketwowplay.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 4, 2021
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