Noodle Time, Inc. v. Brian Mieras
Claim Number: FA1202001430006
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Brian Mieras (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanacoupon.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received payment on February 16, 2012.
On February 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <benihanacoupon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 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@benihanacoupon.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 27, 2012, 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.
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
Complaint made the following submissions.
1. Complainant has registered the BENIHANA mark with the United States Patent and Trademark Office (“USPTO”), for example trademark No. 1,230,609 registered March 8, 1983;
2.Respondent’s <benihanacoupon.com> domain name is confusingly similar to Complainant’s BENIHANA mark;
3. Respondent’s disputed domain name resolves to a website offering links to Complainant’s own website and to third-party businesses that compete with Complainant;
4. Respondent lacks rights or legitimate interests in the disputed domain name;
5. Respondent had constructive and/or actual knowledge of Complainant’s rights in the BENIHANA mark when it registered the disputed domain name;
6. Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company famous for its signature style of teppanyaki style of dining and has been conducting that business for many years. It is the largest operator of teppanyaki restaurants in the US and the leading Asian themed restaurant chain in the world having served over 100 million meals since 1964.
2. Complainant has registered the BENIHANA mark with the United States Patent and Trademark Office (“USPTO”) as trademark registered number 1,230,609, registered March 8, 1983 and has also registered many other trademarks in the US and internationally for BENIHANA. .
3. Respondent registered the disputed domain name on May 22, 2011. It resolves to a website offering links to Complainant’s own website and to third-party businesses that compete with Complainant in the offering of coupons;
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.
(4) 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 the 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.”).
Complainant has submitted that it has established its rights in the BENIHANA mark by registering with trademark authorities throughout the world and in support of that has adduced evidence that it is the registered owner, inter alia ,of trademark registered number 1,230,609 registered on March 8, 1983 with USPTO for BENIHANA. The Panel accepts that evidence. Based upon the registrations issued to Complainant by the USPTO, the Panel finds that Complainant has established its rights in the BENIHANA mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Complainant has therefore established that it has trademark rights in the BENIHANA mark.
Complainant also submits that Respondent’s disputed domain name is confusingly similar to its BENIHANA mark. Complainant states the disputed domain name includes the entire BENIHANA mark, which it does, while adding the generic top-level domain (“gTLD”) “.com” and as a suffix the generic term “coupon.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s BENIHANA mark under Policy ¶ 4(a) (i) because Respondent failed to differentiate its domain name from Complainant’s mark. That is so because, when Respondent, as it has in this case, takes the whole of the BENIHANA mark and incorporates it in a domain name and adds a word such as “coupon” which is a common feature of the restaurant industry where coupons are issued to be redeemed for meals, internet users will naturally assume that the domain name relates to the offering of coupons at BENIHANA restaurants whose trademark or name is incorporated in the domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to the complainant’s registered mark).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark because it incorporates the trademark and gives the false impression that it deals with coupons legitimately offered by Complainant, which it does not.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 it 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.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen as his domain name Complainant’s BENIHANA mark and has embodied the whole of the mark into the domain name, adding only as a SUFFIX the word “coupon” which implies that the domain name relates to coupons for meals at Benihana restaurants and the generic Top Level Domain “.com”;
(b) Respondent has then linked the domain name to a website displaying links to Complainant and also to businesses that promote coupons for use with goods and services offered by those businesses in competition with Complainant, thus giving the false impression to internet users that it is an official domain name of Complainant and that it has led to an official website of Complainant promoting or endorsing those competing offerings of coupons.
(c) Moreover, Complainant argues that Respondent is not, and has not been, commonly known by the disputed domain name and the Panel finds that that is the case. Complainant has established by evidence that the WHOIS information identifies the registrant of the disputed domain name as “Brian Mieras.” The Panel notes that Respondent has not submitted any evidence or made any contentions that contradict Complainant’s assertion. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii) based upon the evidence available. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
(d) Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant has shown that the disputed domain name resolves to a website that offers links to both Complainant and its competitors. Previous panels have concluded that using a disputed domain name in this fashion does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). The Panel therefore determines that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (iii).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. According to Complainant’s evidence, the disputed domain name resolves to a website offering links to its website and also to the websites of its competitors promoting coupons. The Panel infers from this that Respondent collects click-through fees for each Internet user diverted to one of the linked websites. Thus, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv). That is so because Respondent has attempted to attract Internet users to his web site by creating a likelihood of confusion with the BENIHANA mark as to the sponsorship, or endorsement of the coupon products on his website and particularly as to whether they are products of Complainant or sponsored or endorsed by Complainant.. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b) (iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also contends that, in light of the fame and notoriety of Complainant's BENIHANA mark, it is unlikely that Respondent could have registered the <benihanacoupon.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Actual knowledge can be inferred from established facts and in the present case, the Panel infers from the notoriety of the BENIHANA mark and its popularity over so many years, that Respondent knew of the mark, its association with the restaurant industry and its related activities. The Panel therefore agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and, as a result, finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). That is so because bad faith is established within the meaning of that provision if Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor which the Panel finds was Respondent’s intention .That in turn is so because Respondent was clearly trying to advance the business of Complainant’s competitors and consequently disrupting the business of Complainant. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benihanacoupon.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 29, 2012
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