Noodle Time, Inc. v. Telos CHAMIR
Claim Number: FA1204001439742
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Telos CHAMIR (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihana.info>, registered with Key-Systems GmbH.
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 April 17, 2012; the National Arbitration Forum received payment on April 17, 2012. The Complainant was submitted in both English and German.
On April 18, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <benihana.info> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 24, 2012, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of May 14, 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@benihana.info. Also on April 24, 2012, the German language 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 May 16, 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 will 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
Complainant made the following contentions:
1. Complainant has rights in the BENIHANA mark which it uses in connection with teppanyaki restaurants;
2.Complainant has registered the BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983) multiple times with the United States Patent and Trademark Office (“USPTO”);
3. The <benihana.info> domain name is identical to the BENIHANA mark;
4. Respondent is not commonly known by the <benihana.info> domain name;
5. The <benihana.info> domain name resolves to a website which displays links to competing and noncompeting goods and services;
6. Respondent has prevented Complainant from reflecting its mark in a disputed domain name to advertise and promote its BENIHANA mark properly;
7. Respondent registered and is using the disputed domain name to create a false association with Complainant to operate its commercial website;
8. Respondent had constructive and/or actual knowledge of Complainant’s rights in the BENIHANA mark prior to its registration and use of the <benihana.info> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that has been engaged in the restaurant industry since 1964 and is the leading Asian themed restaurant chain in the word.
2. Complainant owns trademark registrations for the BENIHANA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,230,609 registered March 8, 1983).
3. Respondent registered the disputed domain name on September 1, 2011 .The domain name resolves to a website which displays links to competing and non-competing goods and services under headings such as “Free Restaurant Coupons” and “Download Google Chrome.”
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in German, thereby making the language of the proceedings in German.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it has rights in the BENIHANA mark, which it uses in connection with Asian teppanyaki restaurants. Complainant provides the Panel with evidence of its USPTO registrations for the BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983). Panels have previously held that the registration of a mark with a trademark authority, regardless of the location of the parties, is sufficient evidence of a complainant’s rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (i)); 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). Therefore, the Panel finds that Complainant has rights in the BENIHANA mark pursuant to Policy ¶ 4(a) (i).
The second question is whether the disputed domain name is identical or confusingly similar to the BENIHANA mark. Complainant argues that the <benihana.info> domain name is identical to the BENIHANA mark. Panels have held that the addition of the generic top-level domain (“gTLD”) “.info” is irrelevant to a Policy ¶ 4(a) (i) analysis. See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). Therefore, the Panel finds that Respondent’s mere addition of a gTLD to the BENIHANA mark in the disputed domain name fails to distinguish the domain name and thus the <benihana.info> domain name is identical to the BENIHANA mark pursuant to Policy ¶ 4(a)(i).
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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BENIHANA trademark and to use it in its domain name.
(b) Respondent has then decided to cause the domain name to resolve to a website which displays links to competing and non-competing goods and services under headings such as “Free Restaurant Coupons” and “Download Google Chrome.”
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that Respondent is not commonly known by the
<benihana.info> domain name. Complainant asserts that the WHOIS record for the <benihana.info> domain name lists “Telos CHAMIR” as the domain name registrant. Complainant alleges that this listing demonstrates that Respondent is not commonly known by the disputed domain name. The Panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that the WHOIS record is illustrative of whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <benihana.info> domain name under Policy ¶ 4(c) (ii).
(e)Complainant also claims that Respondent is not making a use of the disputed domain name that would confer rights or legitimate interests in the <benihana.info> domain name on Respondent. Complainant alleges that the <benihana.info> domain name resolves to a website which displays links to competing and non-competing goods and services under headings such as “Free Restaurant Coupons” and “Download Google Chrome.” Panels have found that the display of links to goods and services, whether competing or not, is not a Policy ¶ 4(c) protected use of a disputed domain name. 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that the disputed domain name is neither a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. 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 has 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.
First, Complainant argues that Respondent has registered and is using the <benihana.info> domain name in bad faith because Respondent, by registering an identical domain name, has prevented Complainant from reflecting its BENIHANA mark in a disputed domain name in order to promote and advertise its BENIHANA mark properly. The Panel finds that Respondent’s registration of a disputed domain name identical in nature to the BENIHANA mark demonstrates bad faith by preventing Complainant from reflecting its BENIHANA mark in a domain name under Policy ¶ 4(b) (ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
Secondly, Complainant asserts that Respondent registered and is using the disputed domain name commercially and in order to create a false association with Complainant. Complainant contends that the identical <benihana.info> domain name resolves to a website which displays links to the competing and non-competing goods and services referred to above. Therefore, the Panel finds that Respondent registered and is using the <benihana.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) in order to take commercial advantage of Internet users’ mistakes as to the source, sponsorship or affiliation of the domain name by creating a false association with Complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b) (iv)).
Thirdly, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the BENIHANA mark prior to registration of the domain names because of Complainant's widespread use and fame of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BENIHANA mark and in view of the conduct that Respondent engaged in with respect to the domain name, 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 first 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 <benihana.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 17, 2012
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