Haru Holding Corp. v. dwayne walker
Claim Number: FA1311001531393
Complainant is Haru Holding Corp. (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is dwayne walker (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haru-sushi.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2013; the National Arbitration Forum received payment on November 24, 2013.
On November 25, 2013, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <haru-sushi.com> 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 November 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2013 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@haru-sushi.com. Also on November 26, 2013, 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 December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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:
Respondent’s <haru-sushi.com> domain name, the domain name at issue, is confusingly similar to Complainant’s HARU mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and operates Japanese restaurants and has been in business since 2001. Complainant operates seven restaurants in the United States, with six of the seven located in New York. Complainant has a primary website located at <harusushi.com>. Complainant has rights in the HARU mark, used in connection with Japanese restaurants and owns registrations for the HARU mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,193 registered March 12, 2002).
Respondent’s <haru-sushi.com> domain name is confusingly similar to Complainant’s HARU mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “sushi” and the generic top-level domain (“gTLD”) “.com.” Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARU mark in any way. The WHOIS record lists “dwayne walker” as the domain name registrant. The <haru-sushi.com> domain name resolves to a website displaying advertisement links of Complainant’s competitors. Respondent is using the disputed domain name to operate a pay-per-click page with advertising links to other websites of Complainant’s competitors. Respondent had knowledge of Complainant’s HARU mark prior to registering the <haru-sushi.com> domain name because Complainant’s mark is well-known and Complainant has trademark registrations for the mark. Further, the content of Respondent's associated website makes it clear that he was aware of Complainant's HARU mark when he registered the <haru-sushi.com> domain name on April 6, 2013.
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 has rights in the HARU mark, used in connection with Japanese restaurants and owns registrations for the HARU mark with the USPTO (e.g., Reg. No. 2,546,193 registered March 12, 2002). Therefore, Complainant has rights in the HARU mark pursuant to Policy ¶ 4(a)(i) by virtue of its valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “sushi” and the gTLD “.com.” The addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Further, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See 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, Respondent’s <haru-sushi.com> domain name is confusingly similar to Complainant’s HARU mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARU mark in any way. The WHOIS record lists “dwayne walker” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the HARU mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <haru-sushi.com> domain name under Policy ¶ 4(c)(ii).
The <haru-sushi.com> domain name resolves to a website displaying advertisement links of Complainant’s competitors. Using a confusingly similar domain name to display links of a complainant’s competitors does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See 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, Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <haru-sushi.com> domain name resolves to a website displaying advertisement links of Complainant’s competitors.
The website associated with <haru-sushi.com> contains a header that “This domain may be for sale.” Past panels have found that evidence of a respondent’s willingness to sell a disputed domain name further demonstrates the respondent’s lack of rights or legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, Respondent’s willingness to sell the <haru-sushi.com> domain name demonstrates further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name to operate a pay-per-click page with advertising links to other websites of Complainant’s competitors. Using a confusingly similar domain name to operate a pay-per-click page with advertising links to other websites of Complainant’s competitors demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). 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.’”). Therefore, Respondent registered and is using the <haru-sushi.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is obtaining commercial gain by displaying links to Complainant’s competitors via the disputed domain name.
Respondent had knowledge of Complainant’s HARU mark prior to registering the <haru-sushi.com> domain name because Complainant’s mark is well-known and Complainant has trademark registrations for the mark. Constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, in light of the content of the website associated with the disputed domain name, it appears that Respondent was well aware of Complainant’s mark. Accordingly, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haru-sushi.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 26, 2013
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