Maruchan Inc. v. Maruei co., ltd
Claim Number: FA0903001250787
Complainant is Maruchan Inc. (“Complainant”), represented by Joseph
W. Price, of Snell & Wilmer LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maruchan.com>, registered with Network Solutions, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2009.
On March 13, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <maruchan.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 2009 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant manufactures and markets a variety of instant noodle products internationally under its MARUCHAN trademark.
Complainant first registered its MARUCHAN mark with the United States Patent and Trademark Office (“USPTO”) on December 4, 1990 (Registration No. 1,626,154).
Respondent registered its disputed domain name on February 4, 1997.
Respondent’s disputed domain name resolves to a website that provides links to various products and services, some of which compete with the business of Complainant.
Respondent’s <maruchan.com> domain name is identical to Complainant’s MARUCHAN mark.
Respondent does not have any rights to or legitimate interests in the <maruchan.com> domain name.
Respondent registered and uses the <maruchan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of the registration of its MARUCHAN mark with the USPTO, which is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
Respondent’s <maruchan.com> domain name contains Complainant’s entire MARUCHAN mark with the mere addition of the generic top-level domain “.com.” The addition of a top-level domain such as “.com” is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. Therefore, the disputed domain name is substantively identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant must present a prima facie case in support of these allegations. Once it has done so, the burden shifts to Respondent to prove that it nonetheless does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a contested domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Our review of the record before us confirms both that Complainant has presented the requisite prima facie case in support of its allegations and that Respondent has failed to respond to these proceedings. Therefore, we are entitled to conclude that Respondent does not possess rights to or legitimate interests in the disputed domain name. See, for example, Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.
We will, however, examine the record further to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name within the parameters set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to Complainant’s allegation that Respondent’s domain name resolves to a website that displays links to third-party websites, some of which compete with Complainant’s business. Such use of the domain does not constitute 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services under the Policy).
We also observe that the pertinent WHOIS information lists
Respondent as “Maruei co., ltd” and that the
record does not indicate that Respondent has ever been commonly known by the
disputed domain name. Therefore, we are
entitled to and do conclude that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent is using the disputed domain name to provide links to third-party websites that compete with Complainant’s business. Respondent’s behavior in this respect constitutes disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Furthermore, we may presume from the circumstances here presented that Respondent is receiving compensation in the form of click-through revenues for its use of the disputed domain name as described in the Complaint. Therefore, we conclude that Respondent is attempting to profit from the goodwill Complainant has established in its MARUCHAN mark, which is further evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to to that respondent’s own website, likely profiting from this activity); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using a domain confusingly similar to a complainant’s mark to offer links to third-party websites that offered services similar to those offered by that complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <maruchan.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 27, 2009
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