national arbitration forum

 

DECISION

 

Noodle Time, Inc. v. OrlandoWeb.org

Claim Number: FA1104001385620

 

PARTIES

Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA.  Respondent is OrlandoWeb.org (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <benihanaorlando.com>, registered with GoDaddy.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2011; the National Arbitration Forum received payment on April 26, 2011.

 

On April 26, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <benihanaorlando.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2011 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@benihanaorlando.com.  Also on April 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 May 3, 2011.

 

A timely Additional Submission was received from Complainant by the Forum on May 5, 2011 and was found to have complied with Supplemental Rule 7.

 

A  further timely Additional Submission was received from Respondent  by the Forum on May 5, 2011 and was found to have complied with Supplemental Rule 7.

 

Respondent addressed further correspondence to the Forum on April 27, 2011, April 27, 2011 and May 4, 2011.

 

 

 

On May 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A. Complainant

Complainant alleges that the disputed domain name should no longer be registered with Respondent, but that it should be transferred to Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the disputed domain name is confusingly similar to the Complainant's registered BENIHANA trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that it has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the disputed domain name to Complainant.

In support of its case on the first of these three elements, Complainant relies on the registered BENIHANA trademark to which reference has already been made. It then says that the disputed domain name is confusingly similar to the BENIHANA trademark as the spelling of that word in the domain name is the same as the spelling of the same word in the trademark with the addition only of  the word “orlando”, which must be taken to refer to Orlando, Florida ,which is one of the places where Complainant carries on its restaurant business and where it has in fact two restaurants , thus suggesting that the disputed domain name relates to Complainant's restaurant business, particularly in Orlando.

Complainant then contends, to establish the second element, that Respondent has no rights or legitimate interests in the disputed domain name because the facts show an obvious intention by Respondent to benefit from the reputation of the well-known BENIHANA trademark and to use it in illegitimate way, namely by misleading potential customers of Complainant and giving the false impression that it is affiliated with Complainant. Nor is the disputed domain name used for a bona fide business or at all. Moreover, Complainant contends that it has never authorized Respondent to use its trademark in a domain name or anywhere else and that Respondent is not commonly known by the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that this so because Respondent registered the disputed domain name incorporating the BENIHANA trademark, a famous mark, without any permission from Complainant and has passively held it since then. Complainant contends that these activities of Respondent constitute bad faith registration and use within the meaning of paragraph 4(b) of the Policy and within the general meaning of bad faith. It also contends that this conclusion is reinforced by the following circumstances, namely that the BENIHANA mark is so well known that Respondent must have known of it when he registered the disputed domain name, that doing so suggests a false association with Complainant and that Respondent has made a practice of registering domain names incorporating the trademarks of businesses in the Orlando area.

B. Respondent

 

Respondent contends that BENIHANA  is a registered trademark for Restaurant and other goods and services that are aligned with those activities; that it is permissible to have two companies holding a name and using it for different services. Applying that principle to the present case, Respondent contends that he is starting a business with the words BENIHANA ORLANDO and the website he will develop will contain no infringement on Complainant’s trademark, nor any type of restaurant goods and that the disputed domain name is thus legitimate.

 

C. Additional Submissions

 

The Panel has received and taken into account in its decision several Additional Submissions which are as follows.

 

Complainant

In its supplementary filing Complainant contends that Respondent’s submission that he intends to develop a business gives him no entitlement to the disputed domain name as, even if this were true, it shows that Respondent could have registered a domain name more accurately showing the nature of his business rather than one that infringed and diluted Complainant’s trademark.

 

Respondent

In his supplementary filing Respondent submits that he has a legitimate interest in the disputed domain name because the word ‘benihana’ means sunflower and that it has a special meaning for him.

 

Moreover he contends that he is under no obligation to disclose the nature of that business except that he is adamant that it will not be a restaurant. In support of his intention to use the disputed domain name in his business he adds that his website is being developed.

 

Respondent also denies that he registered or used the disputed domain name in bad faith as he has not used it in connect6ion with restaurants or food and he had made no offer to sell it until he observed that Complainant had filed an oppressive and unmeritorious claim against him.

 

Respondent addressed additional correspondence to the Forum dated April 27, 2011, April 27, 2011 and May 4, 2011 in which he reiterated his contentions.

 

FINDINGS

 

Complainant is a large and successful restaurant company specializing in teppanyaki dining. It operates many restaurants, including two in Orlando, Florida where Respondent lives.

 

Complainant is the registered owner of many United States and international trademarks for BENIHANA including trademark registered number 1,230, 609 for BENIHANA that was registered with the United States Patent and Trademark Office in 1983. It has also registered several domain names incorporating the BENIHANA mark which are used to promote its business.

 

Respondent registered the disputed domain name on February 26, 2011.                                 It is parked at the website of the registrar and carries advertising links, but is not otherwise used for a website.

 

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 and/or Confusingly Similar

The Panel accepts the evidence submitted by Complainant that it owns the registered BENIHANA trademarks to which reference has been made, that they are all current and that it therefore has rights in those marks (hereinafter collectively referred to as “the BENIHANA mark.”).

The Panel also finds that the disputed domain name is confusingly similar to the BENIHANA mark. The spelling of the substantial part of the domain name is the same as that of the mark; all that has been done to create the domain name is to add to the BENIHANA mark the word “orlando” ”, which must be taken to refer to Orlando, Florida, which is one of the places where Complainant carries on its restaurant business and where it has two restaurants, thus suggesting that the disputed domain name relates to Complainant's restaurant business. In this regard, it has frequently been held that the addition of a geographical indicator such as a country or city does not negate or weaken confusing similarity to a trademark that otherwise exists as it does in the present case. Thus it was said in Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Aug. 4, 2008) "…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark." See also Juicy Couture, Inc. v. Huang Fengchun / Qin Xiao; FA 1338761 (Nat. Arb. Forum Sept. 22, 2010).

Accordingly, the objective bystander, faced with the disputed domain name and the BENIHANA mark, would assume that the domain name was referring to the well-known international teppanyaki restaurant operator Benihana and in particular its restaurants in Orlando.

It has also long been held that minor features such as hyphens and suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.

For these reasons, the Panel finds that the disputed domain name is confusingly similar to the BENIHANA mark and that the Complainant has made out the first of the three elements that it must establish

Rights or Legitimate Interests

Under paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the respondent proves any of these elements or indeed anything else that shows he has a right or interest in the disputed domain name, the complainant will have failed to discharge its onus and the complaint will fail.

It is now generally accepted that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show he does have rights or legitimate interests.  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”). Put another way, Complainant should put its best evidence forward and then after Respondent has replied, the Panel will decide on the balance of probabilities whether Complainant has proved this element.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the domain name.

The prima facie case is based on the facts that:

(i)            the BENIHANA trademark is well known in the United States and

internationally and has been so for many years;

(ii)        it indicates the name of the well-know international restaurant operator that also operates in Orlando where the Respondent is apparently domiciled;

(iii)      the Respondent chose this prominent name for his domain name and added only the word “orlando” which must be taken to refer to Orlando, Florida, thus raising the inference in the minds of the internet public that the domain name would lead to the online facility of Complainant and in particular to its establishments in Orlando, Florida, an inference that was false;

(iv) the Respondent was not authorized by Complainant to use the BENIHANA name or mark in a domain name or anywhere else; and

(v) the foregoing facts raise the inference that Respondent has registered and will use the disputed domain name for an illegitimate purpose if he has the opportunity to do so.

Respondent has had the opportunity to rebut this prima facie case and has made several submissions to achieve that result. However, the Panel has decided on the balance of probabilities, having given careful regard to those submissions, that Respondent has not rebutted the prima facie case against it.

Respondent’s argument is that he is permitted to use the BENIHANA mark provided that he does not use it for restaurant or related services. Whether that is true or not, it does not show, one way or the other, whether Respondent has a right or legitimate interest in the domain name. The purpose of this element is to focus attention on the domain name and not on Complainant’s trademark and it is up to Respondent to show what it is that entitles him to say that he has a right to the domain name or a legitimate interest in it.

 

In this regard, the Policy cites three situations which, if made out on the evidence, will automatically give rise to such a right or legitimate interest.

Respondent’s evidence does not bring him within the first of these three situations, paragraph4(c)(i), because he has not been using the domain name for an offering of goods and services and , even if he had been, it would not have been bona fide, for using Complainant’s trademark in his domain name cannot be bona fide.

Nor does Respondent’s evidence bring him within paragraph 4(c)(ii), because he is not known by the domain name and there is no evidence to that effect.

Moreover, paragraph 4(c)(iii) cannot help, as it is drawing far too long a bow to suggest that Respondent’s use of the domain name is “noncommercial”, as he makes it plain that his intention is to use the domain name in his new business. Nor can it conceivably be seen as fair to design a domain name using Complainant’s trademark and allow it to be used by the registrar to carry advertising links.

Accordingly, it cannot be said that Respondent has shown a right or legitimate interest by using any of the three situations specified in paragraph 4(c) of the Policy.

Respondent is, however, also permitted to rely on anything else he wishes to rely on to show a right or legitimate interest. Here Respondent relies on the claims that the word ‘benihana’ means sunflower and that it has a special meaning for him and also that, whatever his business, it will not be in restaurants or food.

 

In such cases as this, where there is competing evidence, the duty of a panel is clear, in that it must weigh the evidence and decide on the balance of probabilities whether it shows a plausible claim to a right or legitimate interest in the disputed domain name. In the present case, the panel finds Respondent’s case on this issue singularly unpersuasive. None of it volunteers a plausible explanation as to why the word “benihana” was chosen at all, or what connection that word might have with Respondent’s proposed business. Respondent’s case is also weakened by two further matters; first, the absence of any reason why he did not choose a domain name consistent with or suitable for whatever business he proposes to open; and, secondly, the evidence that he has also registered domain names evoking various other businesses in Orlando, suggesting that he is developing a business of taking other peoples’ trademarks and using them to his own advantage. This practice is highly suspicious and raises substantial doubts as to whether Respondent has a right or legitimate interest in the disputed domain name. On the present state of the evidence, the panel finds that Respondent does not have such a right or interest.

 

Complainant has thus made out the second of the three elements that it must prove.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.

Complainant relies on the provisions of paragraph 4(b) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy. Complainant also contends that this is a case of passive holding which also constitutes bad faith.

The Panel finds that the evidence submitted by Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. That is so for the following reasons.

First, the evidence shows that Respondent has registered as a domain name Complainant’s well known BENIHANA trademark. To this trademark the Respondent has added only the word “orlando”, where Complainant operates two restaurants, suggesting that the disputed domain name relates to the Complainant's restaurants in Orlando, Florida where Respondent is domiciled. This in turn raises the assumption that the domain name was registered for the illegitimate purpose of trading off the name and reputation of Complainant for commercial purposes and thus in bad faith, for Respondent clearly had Complainant in mind when he registered the domain name without permission. As Complainant has shown, the very use of such a well-known trademark as BENIHANA without any permission is indicative of bad faith. In the absence of any explanation from Respondent for doing so, other than the implausible one that “benihana” means “sunflower” and has a special meaning for him and in the light of his record of registering other domain names without any apparent authority to do so, the Panel finds that Respondent registered the disputed domain name in bad faith.

Secondly, the evidence adduced by Complainant raises the inference that the Respondent registered the domain name with the intention either of trying to sell it or using it in the manner described in paragraph 4(b)(ii), (iii) and/or (iv) of the Policy. Respondent’s pattern of registering domain names incorporating registered marks demonstrates bad faith under paragraph 4(b) (ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated paragraph 4(b) (ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). 

Further, the website to which the domain name resolves must create a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to paragraph 4(b) (iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Serves., 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 under paragraph 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to paragraph 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). 

As to paragraph 4(b) (IV), Respondent must carry some responsibility for the content on the website and in the opinion of the panel this also brings the case within the provisions of that paragraph: Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) and Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007). That is so because the only inference open on the facts is that Respondent’s intentions were wholly illegitimate and designed to harm the interests of Complainant.

Moreover, in the opinion of the Panel, this is an appropriate case to apply the principle of passive holding as expounded in Telstra Corporation Limited v. Nuclear Marshmallows, (supra) followed in many decisions cited by Complainant. Complainant’s BENIHANA mark is so well known that, in the absence of a persuasive reason for registering the domain name, the inference must be that Respondent has held the domain name for an illegitimate reason.

Accordingly, for those reasons the Panel concludes that the case presented by the Complainant and the UDRP decisions it has cited show that the Respondent registered and used the domain name in bad faith within the meaning of paragraph 4 (b)of the Policy and within the general concept of bad faith.

The Complainant has accordingly made out the third of the three elements that it must establish.

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 <benihanaorlando.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC Panelist

Dated: May 12, 2011

 

 

 

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