Noodle Time, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2110001968480
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet C. Moreira of MAVEN IP, Florida, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orderatbenihana.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2021; the Forum received payment on October 11, 2021.
On October 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <orderatbenihana.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@orderatbenihana.com. Also on October 14, 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 November 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, Noodle Time, Inc., operates a chain of restaurants under the BENIHANA name. Complainant has rights in the BENIHANA trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,230,609, registered March 8, 1983). The <orderatbenihana.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark and added the generic phrase “order at” and the “.com” generic top level domain (“gTLD”), none of which creates a sufficient distinction.
Respondent does not have rights or legitimate interests in the <orderatbenihana.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s BENIHANA trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because it resolves to a webpage which links to unrelated third party sites.
Respondent has registered and uses the <orderatbenihana.com> domain name in bad faith because Respondent uses the disputed domain name primarily to create confusion and profit from the goodwill earned by Complainant. Further, Respondent had constructive and/or actual notice of Complainant’s rights in the BENIHANA trademark given the trademark’s fame and Complainant’s registration of the trademark with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant also refer to some other US registrations, however the provided copies of Certificates of Registration shows another company name at the same address. Benihana of Tokyo, Inc. & Benihana National Corp.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,784,161 BENIHANA (word), registered May 4, 2010 for goods in Intl Class 21;
No. 3,928,737 BENIHANA (word), registered March 8, 2011 for services in Intl Class 35;
No. 5,150,351 BENIHANA (word), registered February 28, 2017 for goods in Intl Class 29;
No. 5,603,401 BENIHANA (word), registered November 6, 2018 for goods in Intl Class 29;
No. 5,702,279 BENIHANA (word), registered March 19, 2019 for goods and services in Intl Classes 9 and 41;
No. 5,734,805 BENIHANA (word), registered April 23, 2019 for goods in Intl Class 30;
No. 5,883,204 BENIHANA (word), registered October 15, 2019 for services in Intl Class 35;
No. 6,042,643 BENIHANA (word), registered April 28, 2020 for goods in Intl Classes 9, 20, 21 and 25;
No. 5,150,352 BENIHANA (logo), registered February 28, 2017 for goods and services in Intl Class 29 and 43;
No. 2,778,343 BENIHANA HERB TEA (word), registered October 28, 2003 for goods in Intl Class 30;
No. 5,863,612 BENIHANA ORIGINAL YUM YUM SAUCE (word), registered September 17, 2019 for goods in Intl Class 30;
No. 5,603,096 BENIHANA THE JAPANESE STEAKHOUSE (word), registered November 6, 2018 for goods in Intl Class 29; and
No. 5,863,789 BENIHANA ORIGINAL YUM YUM SAUCE (logo), registered September 17, 2019 for goods in Intl Class 30.
The Complainant has also referred to a number of other valid US trademark registrations including the BENIHANA trademark. The Panel notes, however, that the copies of the certificates of registrations provided by the Complainant states another company name, such as Benihana of Tokyo, Inc., and Benihana National Corporation. The Panel assume that these registrations and companies have some relationship with the Complainant, but without any statements or evidence provided by the Complainant, the Panel not take these references into consideration.
The disputed domain name <orderatbenihana.com> was registered on July 7, 2021.
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 BENIHANA trademark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the BENIHANA trademark (e.g., Reg. No. 3,784,161, registered May 4, 2010). Therefore, the Panel finds that Complainant has rights in the BENIHANA trademark under Policy ¶ 4(a)(i).
The Complainant argues that Respondent’s <orderatbenihana.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark and added a generic phrase and the “.com” gTLD. Domain names which incorporate the entire trademark are usually considered confusingly similar and adding a gTLD creates no distinction between a complainant’s mark and a disputed domain. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In addition, adding a generic phrase does not make the disputed domain name sufficiently distinct per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Here, the Panel note that the added the generic phrase “order at” can be seen as a direct generic informative phrase or a call to customers to log in to order goods and services related to the Complainant. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent does not have rights or legitimate interests in the <orderatbenihana.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s BENIHANA trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain 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). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <orderatbenihana.com> and no information suggests that Complainant authorized Respondent to use the BENIHANA trademark. Rather, the fact that the WHOIS information notes that the registrant’s name is private, demonstrates that Respondent is not publically known by the BENIHANA trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <orderatbenihana.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to a webpage featuring third party products which is not a legitimate use. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Here, the fact that Respondent uses the webpage solely to host unrelated third party links for commercial gain is evidence that Respondent lacks legitimate interests in the domain name. Therefore, the Panel may concludes that the Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant asserts that Respondent has registered and uses the <orderatbenihana.com> domain name in bad faith because it registered and uses the disputed domain primarily to create confusion and lure consumers for financial gain. Causing initial interest confusion for financial gain through registration and use of a disputed domain name which is essentially identical to a complainant’s domain and mark is evidence of bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). See also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Here, the disputed domain resolves to a webpage which hosts third-party links for Respondent’s profit. In addition, some links lead to other Japanese restaurants which is further evidence of bad faith as it demonstrates that Respondent is consciously trying to profit from confusion with Complainant’s similar business. Therefore, the Panel finds that Respondent registered and use the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Additionally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the BENIHANA trademark prior to registration of the disputed domain name because of Complainant’s widespread use of the trademark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here conclude that the respondent had actual notice of Complainant's trademark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii), based on the way the disputed domain name is used. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); See also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant asserts that Respondent had constructive knowledge of its rights because of its registrations with the USPTO. In addition, given the notoriety of the mark, Complainant argues Respondent had actual knowledge of its rights in the BENIHANA mark. As stated above, the links connected to the disputed domain name, as well as the use in general, clearly supports the Complainant’s conclusion. Therefore, the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the BENIHANA trademark, and the Panel thereforealso finds bad faith per 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 <orderatbenihana.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 22, 2021
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