Noodle Time, Inc. v. Charles Post / CXDXN
Claim Number: FA1110001413147
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Charles Post / CXDXN (“Respondent”), Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanacoupons.us>, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the Forum received a hard copy of the Complaint on October 26, 2011.
On October 26, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <benihanacoupons.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 8, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <benihanacoupons.us> domain name is confusingly similar to Complainant’s BENIHANA mark.
2. Respondent does not have any rights or legitimate interests in the <benihanacoupons.us> domain name.
3. Respondent registered and used the <benihanacoupons.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Noodle Time, Inc., operates numerous teppanyaki restaurants across the country. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BENIHANA mark:
Reg. No. 1,230,609 registered March 8, 1983;
Reg. No. 1,371,624 registered November 19, 1985;
Reg. No. 1,412,570 registered October 7, 1986;
Reg. No. 3,784,161 registered May 4, 2010; &
Reg. No. 3,928,737 registered March 8, 2011.
Respondent, Charles Post / CXDXN, registered the <benihanacoupons.us> domain name on June 5, 2011. The disputed domain name resolves to a nonfunctioning website, displaying a message that says the <benihanacoupons.us> domain name is not loading at the moment. The resolving website also lists a few “sponsored links.”
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."
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(f), 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.”).
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BENIHANA mark:
Reg. No. 1,230,609 registered March 8, 1983;
Reg. No. 1,371,624 registered November 19, 1985;
Reg. No. 1,412,570 registered October 7, 1986;
Reg. No. 3,784,161 registered May 4, 2010; &
Reg. No. 3,928,737 registered March 8, 2011.
The Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the BENIHANA mark through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also 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.”).
Complainant contends that Respondent’s <benihanacoupons.us> domain name is confusingly similar to Complainant’s BENIHANA mark because the disputed domain name combines the mark with the generic term “coupons” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of a generic term is irrelevant in distinguishing between a disputed domain name and Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)). The Panel also determines that attaching the ccTLD “.us” does not remove the disputed domain name from the realm of confusing similarity with Complainant’s mark. See Accor v. Weber, FA 1039728 (Nat. Arb. Forum Sept. 17, 2007) (“[T]he addition of a country code is not sufficient to negate the confusingly similar aspect of the disputed domain name to the mark under Policy ¶ 4(a)(i).”); see also Wells Fargo & Co. v. The Trust Advocates, Inc., FA 1117262 (Nat. Arb. Forum Jan. 17, 2008) (determining that “the inclusion of the country-code ‘.us’ fails to add any distinguishing characteristic to the disputed domain name”). Therefore, the Panel concludes that Respondent’s <benihanacoupons.us> domain name is confusingly similar to Complainant’s BENIHANA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <benihanacoupons.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. The Panel will examine the record, however, to determine whether Respondent does possess rights or legitimate interests in the disputed domain name according to the Policy ¶ 4(c) factors. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <benihanacoupons.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent is not commonly known by the <benihanacoupons.us> domain name as Complainant has not authorized Respondent to use the BENIHANA mark and the WHOIS record fails to indicate any relationship between the Respondent and the disputed domain name. As the WHOIS information here identifies Respondent as “Charles Post / CXDXN,” the Panel agrees with Complainant and concludes that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(iii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not using the <benihanacoupons.us> domain name in connection with a bona fide offering of goods or services because the “page remains inactive but provides Internet users with links to topics related to Complainant’s business and/or a link to Complainant’s website.” The Panel should note that previous panels have not found both inactive use and an intent to profit by posting pay-per-click links, as these two uses are incompatible. The Panel may find, therefore, that Respondent has failed to make active use of the <benihanacoupons.us> domain name as indicated by the message displayed on the resolving website that states the disputed domain name is not working right now. The Panel may conclude that the links displayed on the resolving website and referred to by Complainant are automatically generated and populated by the domain name server as a result of Respondent’s failure to actively use the disputed domain name and therefore hold that the links are inconsequential to the Panel’s determination of inactive use. The Panel may consequently conclude that Respondent’s failure to use the disputed domain name to actively display original content indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii) as it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(ii) and 4(c)(iv). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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 [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] Policy ¶ 4(c)(iii).”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Alternatively, the Panel may find that Respondent is responsible for the links displayed on the resolving website and conclude that Respondent’s intended use for the disputed domain name is hosting these pay-per-click links, which presumably generate profit for Complainant, to competing and unrelated third-party websites. The Panel may determine that this function is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges both that Respondent is not using the disputed domain name for an active purpose and that Respondent is displaying pay-per-click links to competing third-party businesses on the resolving websites. As noted above, these two allegations are generally incompatible, and panels have not previously found both to exist simultaneously. If the Panel concludes that Respondent is using the disputed domain name to post pay-per-click links, the Panel may also hold that Respondent’s use of the disputed domain name to advertise links to Complainant’s competitors disrupts Complainant’s business and signifies bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
If the Panel concludes that Respondent uses the disputed domain name to post pay-per-click links, the Panel may also determine that Respondent has shown bad faith registration and use under Policy ¶ 4(b)(iv). The Panel presumes that Respondent profits from receipt of pay-per-click fees from the links displayed on the resolving website and that Respondent uses the BENIHANA mark in the disputed domain name to attract and confuse consumers for this purpose. Accordingly, the Panel may hold that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
In the alternative, the Panel may conclude that the website resolving from the <benihanacoupons.us> domain name is inactive and nonfunctioning and that the links displayed are automatically populated by the domain name server, not Respondent. The Panel may then determine that Respondent has failed to actively use the disputed domain name, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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 UDRP Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant also asserts that Respondent had constructive and/or actual knowledge of Complainant’s rights in the BENIHANA mark prior to registration of the disputed domain name. While past panels have found that constructive notice is generally insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual knowledge of the mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benihanacoupons.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 12, 2011
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