Noodle Time, Inc. v. Private Whois Service
Claim Number: FA1105001391002
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanas.com>, registered with Internet.BS Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 27, 2011.
On May 31, 2011, Internet.BS Corp. confirmed by e-mail to the National Arbitration Forum that the <benihanas.com> domain name is registered with Internet.BS Corp. and that Respondent is the current registrant of the name. Internet.BS Corp. has verified that Respondent is bound by the Internet.BS Corp. 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 June 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@benihanas.com. Also on June 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2011, 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" 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 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 operates teppanyaki, Asian-themed restaurants, throughout the United States.
Complainant owns trademark registrations for the BENIHANA service mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,230,609, issued March 8. 1983.
Respondent registered the <benihanas.com> domain name on May 26, 2003.
The disputed domain name resolves to a website featuring hyperlinks that direct Internet users to third-party websites offering coupons and discounts for restaurants in competition with the business of Complainant.
Respondent’s contested <benihanas.com> domain name is confusingly similar to Complainant’s BENIHANA mark.
Respondent is not commonly known by the <benihanas.com> domain name.
Complainant has not authorized Respondent to use the <benihanas.com> domain name.
Respondent does not have any rights to or legitimate interests in the contested domain name.
Respondent both registered and uses the disputed <benihanas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark 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 a 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 rights in the BENIHANA service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
This is true without regard to whether the mark is registered in a country where Respondent resides or does business. See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Respondent’s <benihanas.com> domain name is confusingly similar to Complainant’s BENIHANA service mark. The only differences between them are the additions of the letter “s” and of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the domain name are insufficient to distinguish one from the other under the standards of the Policy. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but renders the domain name confusingly similar to a complainant’s marks).
Similarly, attaching a gTLD to the mark of another in forming a domain name does not affect a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore determines that Respondent’s <benihanas.com> domain name is confusingly similar to Complainant’s BENIHANA service mark pursuant to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent on the point of its lack of rights to or legitimate interests in the disputed domain name, whereupon Respondent acquires the burden to show that it has such rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interests in the subject domain names”).
Complainant has satisfied its prima facie burden under this head of the Policy. Respondent’s failure to answer the allegations of the Complaint filed in this proceeding therefore permits us, without more, to presume that Respondent has no rights to or legitimate interests in its contested domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also 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.
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
In this connection, we begin by observing that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the <benihanas.com> domain name and that Complainant has not authorized
Respondent to use that domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as Private Whois Service, which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <benihanas.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(a)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in it under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next note that Complainant asserts, without objection from Respondent, that the <benihanas.com> domain name resolves to a web page featuring links to the websites of other restaurants,’ which sites offer coupons and discounts in competition with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from the visits of Internet users to the sponsored links, whether by the receipt of click-through fees or otherwise. This misappropriation of Complainant’s mark does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under 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 contested 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various competing commercial websites, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <benihanas.com> domain name disrupts Complainant’s business by advertising for the websites and offerings of competing third-party restaurants via a domain name which is confusingly similar to Complainant’s BENIHANA service mark. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that a respondent registered and used the <sportlivescore.com> domain name in order to disrupt a complainant’s business under the LIVESCORE mark where that respondent maintained a website in competition with the business of that complainant); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of that complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
On the record before us it is evident that Respondent registered the <benihanas.com> domain name containing Complainant’s BENIHANA service mark with the intention to attract consumers seeking Complainant’s website. It is also evident that Respondent has attempted to profit from this misuse of Complainant’s mark by creating a likelihood of confusion between the domain name and Complainant’s mark, presumably by generating pay-per-click revenues from the visits of internet users to the links of third-party restaurants competing with the business of Complainant. This behavior demonstrates bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website, which offered competing travel services, came within the purview of Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have 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, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <benihanas.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 5, 2011
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