Noodle Time, Inc. v. Domain Privacy Service
Claim Number: FA1210001466883
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Domain Privacy Service (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbenihanacoupons.com>, registered with FastDomain, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 12, 2012, FastDomain, Inc confirmed by e-mail to the National Arbitration Forum that the <bestbenihanacoupons.com> domain name is registered with FastDomain, Inc and that Respondent is the current registrant of the name. FastDomain, Inc has verified that Respondent is bound by the FastDomain, 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 October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@bestbenihanacoupons.com. Also on October 12, 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 November 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Respondent’s <bestbenihanacoupons.com> domain name is confusingly similar to Complainant’s BENIHANA mark.
2. Respondent does not have any rights or legitimate interests in the <bestbenihanacoupons.com> domain name.
3. Respondent registered or used the <bestbenihanacoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. Respondent does not have trademark rights in the BENIHANA mark or the disputed domain name, and the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.
ii. Respondent’s disputed domain name resolves to a website that “purportedly advertises ‘Coupons’ for BENIHANA® but does not offer any such product and/or service and certainly does not do so with Complainant’s permission.” See Complainant’s Annex 17. Respondent has failed to develop the website resolving from the disputed domain name.
i. Respondent had knowledge of Complainant’s rights in the BENIHANA mark.
ii. Respondent registered the disputed domain name in order to prevent Complainant from using the <bestbenihanacoupons.com> domain name in marketing its products and services.
iii. Respondent’s disputed domain name is meant to confuse Internet users so that Respondent may commercially gain from its use of the disputed domain name.
iv. Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith.
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 claims that it is the largest operator of teppanyaki restaurants in the United States and is the leading Asian themed restaurant chain in the world. Complainant asserts that it owns several trademark registrations with the USPTO for its BENIHANA mark (e.g., Reg. No. 1,230,609 registered Mar. 8, 1983). The Panel accepts such trademark registrations and finds that Complainant has proven its rights in the BENIHANA mark sufficiently to establish rights under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Next, Complainant argues that Respondent’s <bestbenihanacoupons.com> domain name is confusingly similar to Complainant’s BENIHANA mark as Respondent merely adds the generic terms “best” and “coupons” to the mark. The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s use of the BENIHANA mark within the disputed domain name is not diminished by its inclusion of two generic terms or the gTLD. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also 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.”). Therefore, the Panel finds that Respondent’s <bestbenihanacoupons.com> domain name is confusingly similar to Complainant’s BENIHANA mark under Policy ¶ 4(a)(i).
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 does not have trademark rights in the BENIHANA mark or the disputed domain name, and the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information referenced by Complainant indicates that “Domain Privacy Service” is the documented registrant of the <bestbenihanacoupons.com> domain name. The Panel finds that, without any other information or evidence available to it, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Further, Complainant asserts that Respondent’s disputed domain name resolves to a website that “purportedly advertises ‘Coupons’ for BENIHANA® but does not offer any such product and/or service and certainly does not do so with Complainant’s permission.” See Complainant’s Annex 17. The Panel notes that Complainant’s screenshot evidence shows a website that appears to give information on Complainant’s dining options as well as clickable links to “Benihana Coupons.” The Panel finds that Complainant asserts that it also offers coupons and information on its restaurants. However, the Panel notes that Complainant also contends that Respondent has failed to develop the website resolving from the disputed domain name. The Panel, due to Complainant’s argument above and submitted evidence, disregards Complainant’s argument that Respondent is not making an active use of the disputed domain name. However, based upon Respondent’s documented use of the disputed domain name, the Panel finds 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 <bestbenihanacoupons.com> domain name under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Complainant argues that Respondent registered the disputed domain name in order to prevent Complainant from using the <bestbenihanacoupons.com> domain name in marketing its products and services. Complainant notes that Respondent has denied Complainant’s written request for transfer of the disputed domain name. While Complainant does not specify which Policy ¶ 4(b) factor it is arguing under, the Panel speculates that Complainant is attempting to prove Policy ¶ 4(b)(ii). However, the Panel neglects to find bad faith under Policy ¶ 4(b)(ii) as Complainant has not provided evidence that Respondent has engaged in a pattern of bad faith domain name registrations, which the Panel notes is a required element of Policy ¶ 4(b)(ii).
Complainant also argues that Respondent’s disputed domain name is meant to confuse Internet users so that Respondent may commercially gain from its use of the disputed domain name. Further, Complainant argues that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith. As noted under Policy ¶ 4(a)(ii), the Panel notes that Complainant’s evidence indicates that Respondent has placed active content on the disputed domain name’s resolving website. The Panel notes that Complainant does not contend how Respondent is commercially benefitting from its use of the disputed domain name either. However, in reviewing Complainant’s Annex 17, the Panel notes that it appears that several clickable links appear on the resolving website, mixed in with the text of the website. The Panel infers that Respondent is commercially benefiting by creating such links on the resolving website and therefore finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant asserts that Respondent had at least constructive knowledge of Complainant’s rights in the BENIHANA mark as Complainant has used the mark for 45 years and holds many trademark registrations for the mark. 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 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."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestbenihanacoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 26, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page