OpenTable, Inc. v. Web Brands, Inc. c/o WebBrands.com
Claim Number: FA0803001163837
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint asserts:
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.
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.
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.
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