Noodle Time, Inc. v. Above.com Domain Privacy
Claim Number: FA1206001451411
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihana-coupons.net>, registered with Above.com, Pty. Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.
On July 2, 2012, Above.com, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <benihana-coupons.net> domain name is registered with Above.com, Pty. Ltd. and that Respondent is the current registrant of the name. Above.com, Pty. Ltd. has verified that Respondent is bound by the Above.com, Pty. Ltd. 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 July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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-coupons.net. Also on July 10, 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 August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the BENIHANA mark:
1. Complainant uses the mark in connection with restaurant related goods and services;
2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983).
b) The <benihana-coupons.net> domain name is confusingly similar to the BENIHANA mark.
c) Respondent lacks rights and legitimate interests in the <benihana-coupons.net> domain name:
1. Respondent is not commonly known by the <benihana-coupons.net> domain name;
2. The <benihana-coupons.net> domain name resolves to a website that purports to offer BENIHANA coupons but actually displays a multitude of links to Complainant’s competitors’ websites.
d) Respondent registered and is using the <benihana-coupons.net> domain name in bad faith:
1. Respondent registered and is using the <benihana-coupons.net> domain name in order to prevent Complainant from reflecting its mark in a domain name to promote its products;
2. Respondent means for the <benihana-coupons.net> domain name to cause confusion as to the source of the disputed domain name for the purpose of commercial gain;
e) Respondent had constructive and actual knowledge of Complainant’s rights in the BENIHANA mark prior to its registration of the <benihana-coupons.net> domain name.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it has rights in the BENIHANA mark. Complainant argues that it uses the mark in connection with restaurant related goods and services, including coupons. Additionally, Complainant provides evidence supporting its assertion that it is the owner of the USPTO trademark registrations for the BENIHANA mark (e.g., Reg. No. 1,230,609 registered March 8, 1983). Panels have found that the registration of a mark is clear evidence of rights in the mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Additionally, panels hold that the rights acquired through trademark registration satisfy Policy ¶ 4(a)(i) regardless of the location of the parties. 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). Therefore, the Panel finds that Complainant has rights in the BENIHANA mark under Policy ¶ 4(a)(i).
The <benihana-coupons.net> domain name is confusingly similar to the BENIHANA mark, Complainant states. Complainant notes that Respondent simply added the following elements to the BENIHANA mark in the disputed domain name: the descriptive term “coupons,” a hyphen, and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of a descriptive term does not create enough distinction between the <benihana-coupons.net> domain name and the BENIHANA mark to remove the disputed domain name from the realm of confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Moreover, the Panel finds that the addition of a hyphen and gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <benihana-coupons.net> domain name is confusingly similar to the BENIHANA mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not commonly known by the <benihana-coupons.net> domain name. Complainant notes that the WHOIS record for the <benihana-coupons.net> domain name lists “Above.com Domain Privacy” as the domain name registrant and Complainant argues that there is nothing to suggest that Respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that it has not authorized Respondent to use the BENIHANA mark. Therefore, the Panel finds that Respondent is not commonly known by the <benihana-coupons.net> 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).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. The <benihana-coupons.net> domain name resolves to a website that purports to offer BENIHANA coupons but actually displays a multitude of links to Complainant’s competitors’ websites. The screenshots provided by Complainant demonstrate that these links are displayed under headings such as “Free Ihop Coupons” and “Coupons Ruby Tuesday.” Panels have found that the use of a confusingly similar domain name to display links to competing websites does not give the Respondent rights or legitimate interests in the domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <benihana-coupons.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <benihana-coupons.net> domain name in bad faith. Complainant alleges that Respondent registered the disputed domain name in order to preclude Complainant from registering and using the <benihana-coupons.net> domain name to properly advertise and promote its BENIHANA mark. Complainant contends that this is particularly clear because Respondent denied Complainant’s request to have the disputed domain name transferred to Complainant. Panels have found that intentional prevention of a complainant’s registration of its mark in a domain name is evidence of bad faith. 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).”). Therefore, the Panel finds that Respondent registered and is using the <benihana-coupons.net> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant further asserts that the disputed domain name resolves to a website that purports to offer BENIHANA coupons but actually displays a multitude of links to Complainant’s competitors’ websites. According to Complainant, the <benihana-coupons.net> domain name was chosen to cause confusion as to the affiliation, connection, or association of Respondent with Complainant. Complainant alleges that this allows Respondent to mislead and divert Complainant’s customers interested in genuine BENIHANA coupons for the purpose of commercial gain. The Panel finds that Respondent registered and uses the <benihana-coupons.net> domain name in bad faith under Policy ¶ 4(b)(iv) and the Panel also finds that Respondent is using the disputed domain name to take commercial advantage of Internet users mistakes. 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).
Complainant argues that Respondent had constructive and actual knowledge of Complainant’s rights in the BENIHANA mark when Respondent registered the <benihana-coupons.net> domain name. Complainant asserts that its mark has been registered numerous times with the USPTO and the mark has been used extensively, gaining notoriety and fame. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name 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).
Complainant
has proven this element.
Complainant 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-coupons.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 7, 2012
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