Noodle Time, Inc. v. Matt Klein / RRIS-ClientExpectations
Claim Number: FA1204001439749
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Matt Klein / RRIS-ClientExpectations (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAM
The domain name at issue is <benihana.mobi>, 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 April 17, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <benihana.mobi> 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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.mobi. Also on April 19, 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 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 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
Complainant made the following contentions:
1. 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).
2. Complainant’s mark has acquired secondary meaning through its advertisement and wide usage.
3. Respondent’s <benihana.mobi> is identical to Complainant’s BENIHANA mark.
4. Respondent has no rights or legitimate interest in Complainant’s BENIHANA mark.
5. Respondent is not commonly known by Complainant’s mark.
6. Respondent registered the <benihana.mobi> domain name in bad faith.
7. Respondent had notice of Complainant’s mark.
B.Respondent
Respondent did not submit a Response in this proceeding.
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 August 31, 2011.The domain name is inactive except that the website at which it is parked contains unrelated hyperlinks associated with the selling of domain names.
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 is whether Complainant has rights in a trademark or service mark. Complainant presents the Panel with evidence of its trademark registration with the USPTO for its BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983). Based on this evidence, the Panel finds that Complainant has established rights in the BENIHANA mark pursuant to Policy ¶4 (a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
The second question is whether the disputed domain name is identical or confusingly similar to the BENIHANA mark. Complainant asserts that Respondent’s <benihana.mobi> mark is identical to Complainant’s BENIHANA mark. The Panel takes notice that the disputed domain name features Complainant’s mark in its entirety, as well as adding the generic top-level domain (“gTLD”) “.mobi.” Based on preceding UDRP cases holding that this alteration is insufficient to differentiate a disputed domain name from a mark, the Panel holds that Respondent’s disputed domain name is identical to Complainant’s BENIHANA mark pursuant to Policy ¶ 4(a) (i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the addition of “.mobi” was a functional change and thus the <gwbakeries.mobi> domain name was identical to the GW BAKERIES mark under 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 his domain name.
(b) Respondent has then decided to use the domain name by causing it to resolve to a parking page at Go Daddy and for a purpose inferred by the Panel to be commercial.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that that Respondent lacks rights and legitimate interests in the <benihana.mobi> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant reasons that the WHOIS information, which identifies “Matt Klein” as the registrant of the disputed domain name, suggests Respondent is not known as an entity other than the trademark associated with Complainant. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
(e) Complainant also contends that Respondent uses the <benihana.mobi> domain name to resolve to a website that is parked with GoDaddy and appears to have no active use. Complainant argues that Respondent’s failure to develop the website is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Based on this evidence, the Panel finds that Respondent has no legitimate interest or bona fide offering of goods or services pursuant to Policy ¶4(c) (i) and ¶4(c) (iii) either because Respondent’s <benihana.mobi> domain name is inactive or because it is parked. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c) (iii).”); see alsoBloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c) (iii).”) Further, the Panel has examined the screen shots provided by Complainant and notes that the resolving website features unrelated hyperlinks associated with the selling of domain names. See Complainant’s Annex 16. The Panel determines that this unrelated use is neither a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(I) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
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 shown bad faith registration and use because of its inactive use of the <benihana.mobi> domain name. Complainant argues that Respondent has intentionally precluded Complainant from reflecting its own BENIHANA mark in a corresponding domain name. Based on the evidence presented, the Panel finds bad faith registration under Policy ¶ 4(a) (iii) as it determines that Respondent is not making an active use of the disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a) (iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Secondly, the matter also comes within the meaning of Policy ¶ 4(b)(iv)). As the Panel has already determined that Respondent also uses the disputed domain name to offer unrelated hyperlinks, the Panel infers that Respondent commercially benefits from these hyperlinks. As the Panel also infers that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b) (iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Thirdly, 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 <benihana.mobi> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. It is true that arguments of bad faith based on constructive notice are generally thought to be inconclusive in resolving UDRP proceedings. However, the Panel agrees with Complainant 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).
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 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 <benihana.mobi> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 17, 2012
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