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Rocket delivery .com : A 2003 #domain lost in 2019 via the #UDRP process

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UDRP result: Transfer domain.

RocketDelivery.com, a domain registered in 2003, was wrestled away from its registrant via the UDRP process.

The Complainant, Coupang Corporation, claimed that it has international trademarks for ROCKET, along with a Korean one for ROCKET DELIVERY. These trademarks go back to 2014, roughly 11 years after the domain was registered.

The Respondent disputed all that but was self-represented; the decision might have been different with solid attorney representation.

The Complainant somehow knew the Respondent acquired the domain in 2018, and it might have been data from Namebio that show that $518 dollar sale on GoDaddy. The Respondent claimed there is a business plan in place, that did not elaborate on.

The Complainant thus got RocketDelivery.com and the full details on this decision follow:

Coupang Corporation v. Adam Metzger

Claim Number: FA1905001842049

PARTIES

Complainant is Coupang Corporation (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America. Respondent is Adam Metzger (“Respondent”), Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rocketdelivery.com> (‘the Domain Name’), registered with Gandi SAS.

PANEL

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.

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 7, 2019; the Forum received payment on May 7, 2019.

On May 9, 2019, Gandi SAS confirmed by e-mail to the Forum that the <rocketdelivery.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@rocketdelivery.com. Also on May 10, 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.

A timely Response was received and determined to be complete on June 4, 2019.

The Complainant submitted an administratively compliant additional submission on June 7, 2019.

On June 7, 2019 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Relevant contentions of the Complainant can be summarized as follows:

The Complainant launched its next day ‘Rocket Delivery’ service in 2014. It owns Korean and International trade mark registrations for and including ROCKET for on line retail and e commerce services including registrations for ROCKET plus Korean characters that mean ‘delivery’.

The Domain Name was created on May 30, 2003, however the Complainant has reason to believe that the current registrant did not acquire the Domain Name until 2018 – over four years after the Complainant acquired rights in marks including ROCKET.

The Domain Name is confusingly similar to the Complainant’s ROCKET marks, the addition of a gTLD not being sufficient to prevent that confusing similarity.

The Respondent is not commonly known by the Domain Name and has no rights or legitimate interests in the Domain Name.

The Domain Name has been used to redirect users to a web site that is currently parked, but which nonetheless appears to be directly related to Complainant’s e-commerce rocket delivery services. The web site states ‘e commerce delivery transformed/Get anything to anyone anywhere at the speed of Rocket Delivery/Coming to you February 2019’.

Respondent has chosen the confusingly similar Domain Name to redirect users to his parked website advertising services to be offered that directly compete with those of the Complainant for commercial gain. This is not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It is registration and use in bad faith under ¶ 4(b)(iv) of the Policy. Passive holding can also be bad faith under ¶ 4(b)(iii) of the Policy.

The Domain Name was acquired less than a month after the Complainant applied to register multiple ROCKET formative marks on the International register and was registered opportunistically in bad faith. The timing and the intended use declared on the web site shows the Respondent was aware of the Complainant and its business.

The Respondent has used a privacy service and did not respond to the Complainant’s cease and desist letter.

B. Respondent

Relevant contentions of the Respondent can be summarized as follows:

The Complainant has no trademarks for ‘rocket delivery’ in any language.

The Complainant does not use ‘rocket delivery’ in connection with operating their business except for in a handful of English news releases.

The Korean characters used and registered as part of trade mark registrations by the Complainant mean ‘shipments’ not ‘delivery’.

The Complainant’s one and only market is in South Korea and their website and app are in Korean. It has staff in the US and in China, but does not have any customers outside of Korea.

The Complainant has no exclusive rights to the name ‘rocket delivery’ or ‘rocket’. Rocket means ‘fast’ and is descriptive, if not generic and is commonly used.

The Complainant sought to buy the domain from the Respondent.

The Complaint is Reverse Domain Name Hijacking (‘RDNH’) and the Complainant overstates its case.

The Respondent and his business partners are in the early stages of a startup business venture to provide a goods delivery platform to small European e commerce sellers which was due to launch February 2019, but funding did not come through so the Respondent has changed his plan. The Respondent will remain in ‘stealth’ mode until launch, but has no intention of entering the Korean market or marketing directly to consumers.

The Domain Name was not acquired to sell to the Complainant, for the purposes of disrupting the business of a competitor or to attract Internet users through confusion. The Respondent has and will not indicate that the Complainant has any connection with the Respondent.

The Complainant sent the Respondent four threatening letters which he has no obligation to respond to as they are groundless and it seemed best to ignore them.

The Respondent used a privacy service to limit SPAM.

C. Additional Submissions

Relevant contentions in the Complainant’s Additional Submission can be summarized as follows:

Rather than offer evidence of his own legitimate interests in the Domain Name Respondent instead accuses the Complainant with baseless or irrelevant accusations. Respondent is silent regarding his own efforts to obfuscate facts in these proceedings, does not make it clear when he acquired the Domain Name other than ‘early 2018’, and has not provided any evidence regarding his purported plans for the Domain Name.

The Complainant obtained certified translations of its registrations which are at least as reliable as the Respondent’s evidence of Koreans he asked or Google translations, if not more so. Further the English translation provided by the Complainant attached to International registration 1441781 was commissioned by the USPTO and says the non-Latin characters in that mark applied for means ROCKET DELIVERY.

The Complainant has provided use of ROCKET DELIVERY on its web site and its social media dating back to 2014 and third party coverage of its ROCKET DELIVERY service in both Korea and the USA.

The Complainant’s business extends beyond Korea with USA offices and the Complainant’s trademark rights cover the European Union including Germany and the UK. The Complainant owns valid trade mark rights for its ROCKET marks and a Google search for ROCKET DELIVERY brings up results relating to the Complainant first and then results related to generic use relating to actual rockets.

Respondent does not argue that he is making legitimate noncommercial or fair use of the Domain Name or that he is commonly known by the Domain Name. The stated intention to use for an e commerce business has now been removed from the Respondent’s page. Even if the Respondent had produced evidence of his purported business since he intends to compete with the Complainant this would not be a bona fide offering of services. Alleged third party uses of a mark do not establish Respondent’s rights or legitimate interests. Many of the examples cited are either irrelevant or distinguishable. The Respondent has failed to produce any evidence that he intends to use the Domain Name related to a descriptive or generic meaning.

The Respondent’s assertions that he did not register the name to disrupt the business of a competitor or to cause confusion are contradicted by his avowed business intentions and the previous statements on his web site. The Respondent said he did due diligence before using the name and the Complainant’s rights will have come up on Internet searches.

A claim of RDNH has to meet a high standard that is difficult to meet and is appropriate only in cases where the Complainant knew or should have known that it could not meet one of the elements of its Complaint. The Complainant has put forward well-supported arguments and evidence that it has satisfied each of the three required elements. The Complainant’s offer to purchase the Domain Name does not assist in a finding of RDNH, the offer was made early in the Complainant’s investigations before the Respondent’s identity was known. The Respondent’s efforts to sell the Domain Name for 700,000 Euros is further evidence of his use and registration in bad faith being well in excess of out of pocket costs directly related to the Domain Name.

FINDINGS

The Complainant launched its next day Rocket Delivery service in 2014. It owns Korean and International trade mark registrations the distinctive part of which is ROCKET for on line retail and e commerce services including registrations for ROCKET plus Korean characters where those Korean characters have a generic meaning for the services in question.

The Respondent acquired the Domain Name in 2018. The Domain Name is currently not being used, but the Respondent has stated that it is to be used for a goods delivery platform for e commerce sellers. The Domain Name has been offered for sale for 700,000 euros.

DISCUSSION

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.

Identical or Confusingly Similar

The Domain Name is confusingly similar to the distinctive part of the Complainant’s ROCKET formative registered marks (which have been used for online retail and e commerce services with first use recorded as 2014) adding only the generic term ‘delivery’ and the gTLD .com which do not prevent confusing similarity between the Domain Name and the Complainant’s marks. The parties appear to be in agreement that the Korean characters used and present in some of the Complainant’s registered marks have a generic meaning. While the precise meaning of the characters is not agreed, the fact that the meaning is generic means this does not affect relevant analysis. On the evidence filed, the Panel finds that ‘rocket’ is not generic for the relevant services in question.

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant’s mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘delivery’ in the Domain Name to a sign identical to the distinctive part of the Complainant’s marks does not prevent confusing similarity between the Domain Name and the Complainant’s trademarks pursuant to the Policy.

The gTLD .com does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s ROCKET formative registered marks.

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Respondent does not argue noncommercial legitimate use or fair use of the Complainant’s mark.

It is clear from the evidence that the Respondent intends to use the Domain Name for competing e commerce services which are not connected with the Complainant. The usage of the Domain Name in relation to similar services not connected with the Complainant is likely to cause confusion such that it cannot amount to the bona fide offering of services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the Complainant’s business did not constitute a bona fide use of goods and services). It does not matter that the Complainant’s services are only offered in one or a few countries for the purposes of this analysis.

As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

In the opinion of the Panelist, the use the Respondent intends to make of the Domain Name would be confusing and disruptive in that visitors to the Respondent’s site might reasonably believe it is connected to or approved by the Complainant as it will use a sign confusingly similar to the Complainant’s marks and will compete with the Complainant as that term is understood under the Policy. The Respondent does not deny that it was aware of the Complainant and its business. Accordingly, the Panel holds that by registering the Domain Name the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).

Further the Domain Name is currently not being used and has been offered for sale for an amount far in excess of out of pocket costs of acquisition of the Domain Name also indicative of bad faith in these circumstances.

Since the Complainant has satisfied all three limbs of the Policy there is no question of RDNH. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail’.). The fact that the Complainant tried to buy the Domain Name before knowing the identity of the Respondent and before finishing its investigation into matters is not an indication of RDNH.

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under provisions 4(b)(i), (iii) and (iv) and there is no need to consider further allegations of bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <rocketdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.

Dawn Osborne, Panelist

Dated: June 8, 2019


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