Coupang Corporation v. park jin yong
Claim Number: FA2012001926082
Complainant is Coupang Corporation (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is park jin yong (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coupanglive.com>, registered with Megazone Corp., dba HOSTING.KR.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2020; the Forum received payment on December 22, 2020.
On January 3, 2021, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <coupanglive.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. 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 January 5, 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@coupanglive.com. Also on January 5, 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 Debrett G. Lyons 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in COUPANG. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, it wrote to the Forum upon receipt of a copy of the Complaint stating its agreement to transfer of the domain name (implicitly, to Complainant).
The factual findings pertinent to the decision in this case are that:
1. Complainant is a Korean company providing online retail shopping services under the trading name COUPANG;
2. Complainant owns, inter alia, Korean Trademark Reg. No. 0224196 for the mark COUPANG, registered January 3, 2012;
3. Respondent registered the disputed domain name on October 26, 2020, providing an address in Korea;
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark;
5. the disputed domain name resolves to a webpage that reads “PLEASE WAIT” and “Thank you for visiting our website. If you have any inquiries please send us an email”; and
6. Complainant sent a pre-Complaint letter of demand to Respondent to which there was no reply.
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.”
PRELIMINARY ISSUE: CONSENT-TO-TRANSFER
As stated, there is no formal Response but Respondent consents to transfer of the disputed domain name. Respondent wrote to the Forum, initially in Korean, stating:
“Good morning
coupanglive.com domain no need, take it
It is in dispute, so it cannot be deleted.”
and later, in English, stating:
“I don't need coupanglive.com
Take it (domain)
(I am not good at English)
Thanks.”
The Forum has no power to delete a domain name registration. In consequence of these proceedings the Registrar has, as required, placed a hold on Respondent’s account and the role of the Forum is to implement the Panel’s decision. The Panel has an option in these circumstances to either order immediate transfer of the domain name or apply the Policy and make a finding based on the evidence before it.
It has been observed that transfer by consent provides a loophole of a kind for those who habitually target the trademarks of others by avoiding a public decision against them. The Panel may decide that Complainant has not consented to the transfer of the disputed domain name without a decision on the merits by the Panel and so decide that transfer of the disputed domain name deserves to be the result of findings in accordance with the Policy[i].
On the basis of the facts in this case, the Panel decides that this is the preferable approach and so has elected to fully analyse the case under the Policy.
PRELIMIARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes the Korean language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Korean. Nevertheless, Complainant requests that the proceedings continue in the English language.
The Panel has discretion under the Rules to allow that request and in the past UDRP panels have taken account of factors which demonstrate a respondent’s proficiency with the English language[ii]. Here, the Panel notes that the resolving website carries English language statements and that the disputed domain name combines the trademark with the English language word “live”, itself descriptive in context. Further, Respondent has written to the Forum in English[iii]. The Panel finds sufficient evidence to warrant that the proceedings should be in English. Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings should be conducted in English[iv].
Primary Issues
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[v].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[vi]. Complainant provides evidence of a national Korean registration for the trademark COUPANG and so the Panel finds that Complainant has rights in that trademark.
The domain name takes the trademark and appends the descriptive word “live” and the “.com” gTLD, neither addition carrying any distinctive value. The trademark remains the recognisable and distinctive part of the disputed domain name which the Panel finds to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[vii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[viii].
The publicly available WhoIs information identifies of the domain name registrant as “Park Jin Yong”. That name does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. Complainant provides screenshots of the resolving webpage. From what has been described of it already above, it can be said that the domain name is essentially not in use. 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 that a legitimate non-commercial or fair use has been made of it under the Policy. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name[ix].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted and the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(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 who 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 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that none of those scenarios has direct application. However, the Panel finds both registration and use in bad faith[x]. Absent a reasoned Response, the Panel has not been presented with any explanation for use of Complainant’s mark. The term is not generic and appears to have no ordinary meaning, even in Korean. In accordance with paragraph 14(b) of the Rules, the Panel draws the reasonable inference that Respondent knew of the trademark and of Complainant’s business at the time it registered the disputed domain name. The Panel finds that Respondent did not have a legitimate use in mind when registering the domain name and so finds registration in bad faith under the Policy.
The disputed domain name is not being used. Nonetheless, the Panel accepts that the trademark is well known, something acknowledged by earlier panels[xi], and cannot envisage any use of the disputed domain name which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coupanglive.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: February 3, 2021
[i] See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
[ii] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[iii] Whether that be with the aid of a translation engine or not makes little difference when combined with the other listed factors.
[iv] See, for example, FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English; see also Coupang Corp. v. Hyung Jun Lim, Case No. FA1906001847602 (FORUM July 20, 2019); CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, Case No. D2016-1893 (WIPO Nov. 9, 2016).
[v] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[vi] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[vii] See, for example, 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 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.
[viii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[ix] See, for example, 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 has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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 non-commercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
[x] See, for example, Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”).
[xi] See, for example, Coupang Corp. v. chen ki, Case No. FA1905001844179 (Forum June 13, 2019) (“In the present case, Complainant’s [COUPANG] trademark is well known. It is difficult to envisage any use of the disputed domain names that would not violate the Policy . . . .”)
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