Noodle Time, Inc. v. Darren Morgan
Claim Number: FA1311001531922
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA . Respondent is Darren Morgan (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanasushi.com>, registered with 1&1 Internet AG.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2013; the National Arbitration Forum received payment on November 26, 2013.
On November 28, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <benihanasushi.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 December 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@benihanasushi.com. Also on December 3, 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 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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.
Complainant’s Contentions
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
Respondent registered the <benihanasushi.com> domain name on April 5, 2009.
Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
For 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 argues that it uses the BENIHANA mark in connection with its teppanyaki-style restaurant chain. Complainant notes that it has registered the BENIHANA mark with the USPTO (e.g., Reg. No. 1,230,609 registered on March 8, 1983). The Panel agrees that even as Respondent claims to reside in Canada, Complainant’s USPTO registration is good evidence of Complainant’s rights under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims that Respondent’s <benihanasushi.com> domain name is confusingly similar to the BENIHANA mark as the domain name merely places the term “sushi” and the gTLD “.com” on to the BENIHANA mark. The Panel agrees that the gTLD is not a considerable addition. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel also agrees that as “sushi” identifies a type of food that may be commonly served in a teppanyaki-style restaurant such as BENIHANA, the addition of the term “sushi” to this domain name enhances confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds that the <benihanasushi.com> 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 argues that Respondent is not known by the <benihanasushi.com> domain name. Complainant claims that Respondent is not an authorized user or a licensee of the BENIHANA mark. The Panel notes that the WHOIS information lists the registrant of record for the <benihanasushi.com> domain name as “Darren Morgan.” As the record shows no other evidence as to Respondent’s identity, the Panel concludes that Respondent is not known by the <benihanasushi.com> domain name under Policy ¶ 4(c)(ii). See 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 ever commonly known by the disputed domain name).
Complainant next claims that Respondent is not actively using the domain name for any active purpose other than to promote the availability of the domain name for public purchase. The Panel notes that the <benihanasushi.com> domain name evidently resolves to a URL at the <buylocaldomainname.com> domain name’s website wherein the domain name is offered for a minimum of $5,000. The Panel notes that the offer expired about two years ago on December 21, 2011. The Panel agrees that the domain name is being held onto solely for resale and the Panel agrees that such a use is neither bona fide under Policy ¶ 4(c)(i), nor legitimately noncommercial or fair under Policy ¶ 4(c)(iii). 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Complainant has proven this element.
Complainant bases Respondent’s bad faith on the fact that Respondent is holding out the <benihanasushi.com> domain name for sale. The Panel notes of the 2011 offer to sell the domain name for a minimum of $5,000. The Panel agrees that such an offer is evidence of bad faith and follows the findings of previous panels in agreeing that there is an element of Policy ¶ 4(b)(i) bad faith in the reselling of domain names in great excess of out-of-pocket expenses. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Complainant also argues that Respondent is intentionally preventing Complainant from registering its mark in the <benihanasushi.com> domain name. The Panel notes that the Policy does not recognize bad faith through the prevention of domain name registration, unless it is shown that the respondent has been previously found to have acted in bad faith in a domain name dispute, or if there is otherwise evidence of a pattern of prevention. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)); see also Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”). The Panel agrees that a finding of bad faith under Policy ¶ 4(b)(ii) is inappropriate based upon the lack of any averments, allegations, or evidence suggesting that Respondent has engaged in a pattern of bad faith conduct, or a pattern of preventing complainant’s registration of domain names.
Complainant also argues that Respondent is passively holding the domain name. The Panel notes that the evidence provided suggests that the domain name resolves to the <buylocaldomainname.com> domain name’s website wherein the domain name was offered for a minimum of $5,000. Ordinarily any use of a domain name wherein the domain name routes the Internet user to a website with displayable content is not ordinarily considered a “passive” or “inactive” use within the meaning of the Policy. See, e.g., 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). As Respondent is evidently actively using the domain name to send Internet users to the auction website, the Panel finds that there is no passive or inactive use of this domain name.
Complainant finally claims that Respondent was on notice, at a minimum of constructive notice, as to Complainant’s interest in the BENIHANA mark prior to registering the <benihanasushi.com> domain name. Complainant argues that the fame of the BENIHANA mark and the confusingly similar nature of the domain name suggest that Respondent was actually aware of Complainant’s BENHINANA mark at the time of domain name registration. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel finds Respondent had actual knowledge of Complainants’ mark when registering the disputed domain name and therefore, the name was registered in bad faith.
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 <benihanasushi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 31, 2013
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