Ra Sushi Holding Corporation v. Janice Liburs
Claim Number: FA1403001547625
Complainant is Ra Sushi Holding Corporation (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is Janice Liburs (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ra-group.net>, registered with DomainRoyale.com LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 8, 2014; the National Arbitration Forum received payment March 10, 2014.
On March 12, 2014, DomainRoyale.com LLC confirmed by e-mail to the National Arbitration Forum that the <ra-group.net> domain name is registered with DomainRoyale.com LLC and that Respondent is the current registrant of the name. DomainRoyale.com LLC. verified that Respondent is bound by the DomainRoyale.com LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2014, 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@ra-group.net. Also on March 13, 2014, 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 April 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant is the exclusive owner and rights holder to the RA trademark.
a. Complainant’s restaurants are famous for the “RA experience,” meaning the personalized experience of dining in a high-energy restaurant setting. Complainant has served hundreds of thousands of guests nationwide since 1997, and now owns 25 locations.
b. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for its collection of RA marks.
i. RA (Reg. No. 2,209,246 registered December 8, 1998); (Reg. No. 3,087,775 registered May 2, 2006); (Reg. No. 4,199,774 registered August 28, 2012); and (Reg. No. 4,307,449 registered March 26, 2013).
ii. Complainant urges that its RA marks have become instantly recognizable and famous.
c. Respondent’s <ra-group.net> domain name is confusingly similar to Complainant’s RA mark in that it combines Complainant’s RA mark in its entirety with the generic term “group.” Respondent further adds the generic top-level domain (“gTLD”) “.net.”
2. Respondent has no rights to or legitimate interests in the <ra-group.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. The true identity of the owner of the disputed domain name is unknown. The WHOIS Information identifies the registrant as “Moniker Privacy Services LLC.”
ii. Complainant has not authorized or licensed Respondent to use its mark in the disputed domain name.
b. No indication suggests that Respondent has used or is making preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
i. Respondent’s disputed domain name resolves to a website merely listing links to third-party websites that contain the term “ra” and variations thereof.
ii. Complainant urges that Respondent’s website also does not offer goods or services.
3. Respondent registered and is using the <ra-group.net> domain name in bad faith.
a. Respondent uses the disputed domain name to collect revenue through a pay-per-click scheme.
b. Passively holding a domain name indicates bad faith use and registration under Policy ¶ 4(a)(iii).
c. Respondent had notice of Complainant and its RA marks prior to registering the <ra-group.net> domain name.
1. The Panel noted that respondent registered the <ra-group.net> domain name May 19, 2013.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and is using the disputed domain name in 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant asserts that it is the exclusive owner and rights holder to the RA trademark. Complainant explains that its restaurants are famous for the “RA experience,” meaning the personalized experience of dining in a high-energy restaurant setting. Complainant contends that it has served hundreds of thousands of guests nationwide since 1997, and now owns 25 locations. Complainant provides evidence of its ownership for the collection of RA marks through its registrations with the USPTO. See (Reg. No. 2,209,246 registered December 8, 1998); see also (Reg. No. 3,087,775 registered May 2, 2006); (Reg. No. 4,199,774 registered August 28, 2012); (Reg. No. 4,307,449 registered March 26, 2013). Complainant asserts that its RA marks have become instantly recognizable and famous. Prior panels have concluded that evidence of a USPTO registration is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Additionally, the Panel notes that it is irrelevant whether complainant registered its mark in the location of respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds that Respondent has rights in the RA mark under Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <ra-group.net> domain name is confusingly similar to Complainant’s RA mark under Policy ¶ 4(a)(i)). Complainant elaborates by explaining that Respondent combines Complainant’s RA mark in its entirety with the generic term “group.” Additionally, Complainant claims that Respondent adds the gTLD “.net.” Prior panels have found that adding a generic term and a gTLD does not distinguish a disputed domain name from a given mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel notes that Respondent also inserts a hyphen between complainant’s RA mark and the term “group.” Panels have frequently found that adding a hyphen does not sufficiently differentiate a domain name from a registered mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that Respondent’s <ra-group.net> domain name is confusingly similar to Complainant’s RA mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 has no rights or legitimate interests in the <ra-group.net> domain name under Policy ¶ 4(c)(ii). Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant notes that the true identity of the owner of the disputed domain name is unknown. Complainant points to the WHOIS Information and contends that it identifies the registrant as “Moniker Privacy Services LLC.” Additionally, Complainant contends that it has not authorized or licensed Respondent to use the disputed domain name. The Panel notes that in the past, panels have found that a respondent is not commonly known by a domain name where no evidence on the record indicates that respondent is commonly known by the disputed domain name. See 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). The Panel finds that Respondent is not commonly known by the <ra-group.net> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that no evidence suggests that Respondent has used or is making preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant states that Respondent’s disputed domain name resolves to a website merely listing links to third-party websites that contain the term “ra” and variations thereof. Complainant states that Respondent’s website also does not offer goods or services. The Panel notes Complainant’s Annex 14 that displays the website that resolves from the disputed domain name. The Panel finds that some of the links featured on the resolving website include, “Arbeitsrecht Rechtsanwalt,” “RA Arthritis,” “Rechtsanwalt Erbrecht,” “What is RA,” “RA Sushi Restaurant,” and “RA RA.” Panels have previously found that using a confusingly similar domain name to resolve to a website displaying links to third-parties in order to collect click-through revenue does not convey rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent registered and is using the <ra-group.net> domain name in bad faith. Complainant urges that Respondent uses the disputed domain name to collect revenue through a pay-per-click scheme. See Annex 14. The Panel notes that previous UDRP panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent uses a disputed domain name to resolve to a website displaying links or advertisements for commercial gain. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). This Panel agrees and finds that Respondent registered and is using the <ra-group.net> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel notes that Complainant asserts that Respondent is passively holding a domain name in bad faith under Policy ¶ 4(a)(iii). Previous panels have traditionally found that “passively holding” a domain name is evidenced by the respondent’s failing to make an active use of the disputed domain name. 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 Policy). The Panel, however, notes, that Respondent displays third-party links on the website resolving from the <ra-group.net> domain name. While not a bona fide use, it nevertheless would not be considered an “inactive use.” It further supports findings of bad faith registration and use. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent had notice of Complainant and its RA marks prior to registering the <ra-group.net> domain name. Complainant states that its RA mark is unique and no reason is shown for Respondent’s registration of the disputed domain name other than to create a false allusion of association with Complainant’s RA marks. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant; UDRP case precedent declines to find bad faith based on constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and the Panel finds that this actual knowledge does support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ra-group.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist,
Date: April 23, 2014
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