OpenTable, Inc. v. Web
Brands, Inc. c/o WebBrands.com
Claim Number: FA0803001163837
PARTIES
Complainant is OpenTable, Inc. (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opentables.com>, registered with Godaddy.com,
Inc.
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 14, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 17, 2008.
On March 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <opentables.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 19, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 8, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@opentables.com by e-mail.
A timely Response was received and determined to be complete on April 8, 2008.
A timely and complete Additional Submission from Complainant was
received on April 11, 2008.
An Additional Submission from the Respondent was received on April 21,
2008 and communicated to the Panel for consideration.
On April 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complaint asserts:
B. Respondent
By its Response, the Respondent asserts that:
C. Additional Submissions
In its additional submissions, the Complainant considers that:
· the Respondent makes several tenuous arguments and cites several inapposite prior Panel decisions in its Response.
· the Complainant established trademark rights in 1999, well before Respondent sought registration of the <opentables.com> domain name on April 17, 2002, as it is proven by variety of press releases and other information which refer to the Complainant’s trade name “Open Table Inc.”
· the Respondent has no legitimate interest in the <opentables.com> domain name and it is using the domain name in a manner that trades on the goodwill Complainant has established in its mark and is likely to confuse consumers.
· the Complainant’s continuous and extensive use of its OPENTABLE mark as evidenced by its multiple trademark registrations is proof that Complainant has not abandoned any rights to its OPENTABLE trademark.
· the registration of a mark on the principal register provided by this Act or under the Act of March 3, 1881, or the Act of February 20, 1905, represents constructive notice of the registrant’s claim of ownership thereof.
In its Reply to Complainant’s Additional Submission, the Respondent points out that:
· the Additional Submissions of the Complainant are not in accordance with Forum Supplemental Rule 7 as it was not communicated to the Respondent in the procedural term and includes new submissions.
· the Complainant submitted, as a basis for its claim of prior rights, US Trademark Reg. No. 2,535,407, issued November 2001, which cannot constitute evidence of a present right claimed by the Complainant as this mark had itself been abandoned.
· the term “OPEN TABLE” per se remains a common phrase used in the course of business in the restaurant business, and cannot be the exclusive property of any party.
· supplemental material used by the Complainant does not constitute use of the claimed mark.
FINDINGS
The Complainant is a well known supplier of reservation,
table management and guest management software for restaurants. The Complainant had registered several
trademarks which contain the disputed domain name in US and other countries in
Regarding the Supplemental Fillings of the Complainant, the Panel accepts them together with the Respondent’s submission for a fair presentation of its reasoning by each party.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant asserts rights in the OPENTABLE mark through multiple registrations of the mark with several trademark authorities, including the United States Patent and Trademark Office (“USPTO”) on September 19, 2006 (Reg. No. 3,145,088); the Canadian Intellectual Property Office (“CIPO”) on September 19, 2006 (Reg. No. TMA672,864); the Mexican trademark authority (“IMPI”) on March 16, 2006 (Reg. No. 924,258); the Australian trademark authority (“IP Australia”) on October 26, 2006 (Reg. No. 1,086,706); and the Japan Patent Office (“JPO”) on June 23, 2006 (Reg. No. 4,964,008). Complainant also registered the mark with the Office for Harmonization in the Internal Market (“OHIM”) on June 14, 2001 (Reg. No. 1,576,479).
The Panel is persuaded that these
trademark registrations convey rights in the OPENTABLE mark for the purposes of
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
The Panel
accepts also that the Complainant has prior rights in the OPEN TABLE
trademarks, as the first use in commerce of these marks is 1999 as provided in
the USPTO registrations.
In addition, the Panel considers that Complainant has presented sufficient evidence demonstrating common law rights in the OPENTABLE mark which predate its trademark registrations. Complainant contends that it has been offering reservation, table management and guest management software for restaurants under the OPENTABLE mark since as early as June 1999, and due to its continuous and significant use of the mark has established common law rights to the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established);
The
Respondent contends that the <opentables.com>
domain name is comprised of common, descriptive terms and as such cannot be
found to be identical to Complainant’s mark. The Panel considers that such a determination
is not necessary under Policy ¶ 4(a)(i) as this
portion of the Policy considers only whether Complainant has rights in the mark
and whether the disputed domain name is identical or confusingly similar to
Complainant’s mark. See Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i));
see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs.,
FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
The Panel finds that the <opentables.com>
domain name is confusingly similar to Complainant’s OPENTABLE mark, as the
minor addition of the letter “s” to the mark is insufficient to negate
confusing similarity under Policy ¶ 4(a)(i).
The Panel considers that
Complainant made a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. 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.”).
As the Complainant contends the Panel finds
that the Respondent is not commonly known by the <opentables.com> domain name and that Complainant has never authorized Respondent to use the OPENTABLE
mark.
Moreover, the Panel finds that Respondent is
using the disputed domain name to divert Internet users to a commercial landing
website that displays links to third-party websites, some competing directly
with Complainant’s services and it is further commercially benefiting by
receiving click-through fees.
Such use is evidence that Respondent lacks
rights and legitimate interests in the <opentables.com>
domain name.
The assertions of the Respondent do not
rebut the Complainant’s showing, as they do not demonstrate any demonstrable
preparations to use the disputed domain name in connection with 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).
Therefore the Panel concludes that Respondent’s has no rights or legitimate interest in the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel agrees with the Complainant
that the Respondent had actual knowledge about the Complainant’s trademark when
registering the disputed domain name. The
similarity between Complainant’s business and the content displayed on
Respondent’s website is further evidence that Respondent had actual knowledge
of Complainant’s rights in the OPENTABLE marks. Respondent’s registration of a domain name
that contains Complainant’s mark, with knowledge of Complainant’s rights in the
mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”).
Complainant contends that
Respondent is receiving commission for diverting Internet users to third-party
websites, and that Respondent’s use creates a likelihood of confusion and
suggests an attempt to benefit from the goodwill associated with the OPENTABLE
mark. The Panel finds that this use is
evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website).
In
conclusion, the Panel considers that the Respondent registered and has been
using the disputed domain name in 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 <opentables.com> domain name be TRANSFERRED
from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: April 28, 2008