Noodle Time, Inc. v. Taiwo Omoboyeje
Claim Number: FA1204001439696
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Taiwo Omoboyeje (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <benihanacouponsx.info> and <benihanacouponsx.org>, registered with Enom, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 17, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <benihanacouponsx.info> and <benihanacouponsx.org> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@benihanacouponsx.info, postmaster@benihanacouponsx.org. Also on April 18, 2012, 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 May 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <benihanacouponsx.info> and <benihanacouponsx.org> domain names are confusingly similar to Complainant’s BENIHANA mark.
2. Respondent does not have any rights or legitimate interests in the <benihanacouponsx.info> and <benihanacouponsx.org> domain names.
3. Respondent registered and used the <benihanacouponsx.info> and <benihanacouponsx.org> in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Noodle Time, Inc., is the owner of the BENIHANA mark, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,230,609 registered March 8, 1983). Complainant’s company is the owner of the BENIHANA trademarks which are recognized internationally for Complainant’s teppanyaki style of dining. Complainant is the largest operator of teppanyaki restaurants in the United States. Complainant also operates a website which allows Internet uses to locate Complainant’s restaurants at <benihana.com>.
Respondent, Taiwo Omoboyeje, registered the <benihanacouponsx.info> and <benihanacouponsx.org> domain names on October 26, 2011. The <benihanacouponsx.info> domain name resolves to a website that appears to be inactive but provides Internet users with links to topics related to Complainant’s business and a link to Complainant’s site. The <benihanacouponsx.org> webpage directs Internet users to a website that advertises “coupons” for Complainant’s business but does not actually supply or offer these products.
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.
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 owns registered trademarks with the USPTO for its BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983). The Panel finds that Complainant has established rights in the BENIHANA mark pursuant to policy ¶4(a)(i) through it trademark registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark 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)). The Panel further finds that, to establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <benihanacouponsx.info> and <benihanacouponsx.org> domain names are confusingly similar to Complainant’s BENIHANA mark. Complainant argues that the <benihanacouponsx.info> domain name incorporates the BENIHANA mark in its entirety with the addition of the generic word “coupons” and the addition of the letter “x”. Complainant further argues that this disputed domain name adds the generic top-level domain (“gTLD”) “.info.” Regarding the second disputed domain name, Complainant argues that the <benihanacouponsx.org> domain name has the entire BENIHANA mark with the addition of the generic word “coupons” and the letter “x” as well as the addition of the generic top-level domain (“gTLD”) “.org.” Based on prior UDRP cases holding that these alterations are not distinctive enough to differentiate a disputed domain name from a mark, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s BENIHANA mark pursuant to Policy ¶4(a)(i). 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); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds Policy 4(a)(i) has been established.
Policy ¶4(a)(ii) states that Complainant bears the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. Here, the Panel determines that Complainant has adequately satisfied this obligation. Respondent has offered nothing in response, however, and has failed to contest Complainant’s allegations in any way or offer any counter evidence. The Panel assumes that Respondent does not have rights or legitimate interest in the disputed domain name as a result of Respondent’s failure to respond to the Complaint. The Panel will nevertheless consider the evidence presented against the Policy ¶4(c) factors to make an independent determination regarding Respondent’s rights and legitimate interests in the disputed domain names. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).
Complainant argues that Respondent is not commonly known by the <benihanacouponsx.info> and <benihanacouponsx.org> domain names. According to the WHOIS information for the disputed domain names there is no connection between Respondent and the <benihanacouponsx.info> and <benihanacouponsx.org> domain names or Complainant’s BENIHANA mark in any way. The Panel notes that the WHOIS information identifies “Taiwo Omoboyeje” as the domain name registrant. The Panel finds no evidence that Respondent is commonly known by either the <benihanacouponsx.info> or the <benihanacouponsx.org> domain names pursuant to Policy ¶4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent is using the <benihanacouponsx.org> domain name to advertise “coupons” for BENIHANA but does not offer any such products. The Panel notes that the resolving website merely contains information about Complainant and coupons to its restaurants without offering any competing programs, coupon codes, or services. Although such use does not compete with Complainant’s offerings, the Panel finds that Respondent is clearly attempting to divert Internet users from Complainant’s website to its website for some gain or interest not related to Complainant. Such use is 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 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Further, Complainant argues that the <benihanacouponsx.info> domain name is inactive, but that the resolving website provides Internet users with links to topics related to Complainant’s business and a link to Complainant’s website. Complainant further argues that the domain name contains third party links to various websites belonging to Complainant’s competitors. The Panel presumes that these links are pay-per-click links in which Respondent is financially benefitting. Based on these facts the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for Complainant’s competitors does not constitute a bona fide offering of goods or services under policy ¶4(c)(i) or a legitimate noncommercial or fair use interest under Policy¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel concludes that Complainant has proven Policy ¶4(a)(ii).
Complainant argues that Respondent has shown bad faith registration and use according to Policy ¶4(b)(iii). Complainant contends that Respondent’s <benihanacouponsx.info> domain name resolve to a website containing links to third-party websites directly competing with Complainant. Complainant also asserts that the displayed links advertising for Complainant’s competitors divert Internet users away from Complainant thereby disrupting complainant’s business. Based on Complainant’s arguments the Panel finds that Respondent registered and uses the <benihanacouponsx.info> domain name in bad faith under Policy ¶4(b)(iii) when featuring pay-per-click links for competing products while disrupting Complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant does not allege that Respondent has shown bad faith registration and use according to Policy ¶4(b)(iv). However, Complainant asserts that Respondent has created a likelihood of confusion with Complainant’s mark through its confusingly similar domain names, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. The Panel finds that the <benihanacouponsx.info> website contains competing hyperlinks, which the Panel may presume generate revenue for Respondent when clicked. Complainant contends that these links and advertisements directly compete with Complainant’s products and business. Further, the Panel presumes that Respondent’s use of the <benihanacouponsx.org> domain name results in some sort of financial gain for Respondent. Based on Complainant’s assertions and evidence, the Panel finds that Respondent registered and used the <benihanacouponsx.info> and <benihanacouponsx.org> domain names in bad faith 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 under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).
Complainant also contends that in light of the fame and notoriety of Complainant's BENIHANA mark, it is inconceivable that Respondent could have registered the <benihanacouponsx.info> and <benihanacouponsx.org> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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)."
The Panel finds the elements of Policy ¶4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benihanacouponsx.info> and <benihanacouponsx.org> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 24, 2012
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