Noodle Time, Inc. v. Max Marketing
Claim Number: FA1408001575437
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA . Respondent is Max Marketing (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanaoftokyo.com>, registered with NETWORK SOLUTIONS, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2014; the National Arbitration Forum received payment on August 18, 2014.
On August 18, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <benihanaoftokyo.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 August 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@benihanaoftokyo.com. Also on August 25, 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 September 18, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Complainant, Noodle Time, Inc., has been using the BENIHANA OF TOKYO mark in commerce since 1964 in connection with the operation of Asian-themed, teppanyaki restaurants.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the BENIHANA OF TOKYO mark (Reg. No. 940,142, registered on August 1, 1972).
iii. The disputed domain name is identical to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent has failed to make an active use of the disputed domain name.
i. Respondent has registered and is using the disputed domain name for bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company operating in the field of Asian-themed, teppanyaki restaurants.
2. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the famous BENIHANA OF TOKYO mark (Reg. No. 940,142, registered on August 1, 1972).
3. Respondent registered the disputed domain name <benihanaoftokyo.com> on May 20, 1999.
4. Respondent has used the disputed domain name to feature links to competitors of Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant asserts that it has been using the BENIHANA OF TOKYO mark in commerce since 1964 in connection with the operation of Asian-themed, teppanyaki restaurants. Complainant contends that it has a valid registration with the USPTO for the BENIHANA OF TOKYO mark (Reg. No. 940,142, registered on August 1, 1972). The Panel therefore determines that Complainant’s registration of the BENIHANA OF TOKYO mark with the USPTO indicates that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).The evidence is also that the trademark is famous and the Panel accepts that fact.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s famous BENIHANA OF TOKYO trademark. Complainant argues that the disputed domain name <benihanaoftokyo.com> is identical to the mark in which Complainant has rights. The Panel notes that the disputed domain name encompasses the entirety of Complainant’s BENIHANA OF TOKYO mark with the mere deletion of spaces and addition of the generic top-level domain (“gTLD”) “.com”. The Panel notes that the deletion of spaces and addition of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel holds that the disputed domain name is identical to the BENIHANA OF TOKYO mark in which Complainant has rights under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s famous BENIHANA OF TOKYO trademark and to use it in its domain name in its entirety;
(b) Respondent has used the disputed domain name to feature links to competitors of Complainant;
(c) Respondent has used Complainant’s trademark in the above manner without the consent or approval of Complainant;
(d)Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of disputed domain name is listed as “MAX MARKETING”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. The situations are comparable at present as the only information available to the Panel is that listed in the WHOIS due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name;
(e)Complainant submits that Respondent has failed to make an active use of the disputed domain name. However, a screen shot of the landing page of the disputed domain name reveals that Respondent has used the disputed domain name to feature links to competitors of Complainant. See Compl. Attached Ex. 15. The Panel observes that the featured links include “Restaurant Supplies”, “Restaurant Coupons”, and “Steak Coupons”. See id. The Panel therefore determines that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has failed to make an active use of the disputed domain name, which indicates bad faith under Policy ¶ 4(a)(iii). However the Panel recalls that a screen shot of the disputed domain name shows links that lead Internet users to third-party sites, some of which are competitors of Complainant. Therefore, the Panel considers that Respondent is using the disputed domain name for commercial gain through reliance on mistake or confusion by linking consumers to products sold in competition with Complainant. The Panel recalls that the disputed domain name contains such links as “Restaurant Supplies”, “Restaurant Coupons”, and “Steak Coupons” which redirect Internet users to websites that compete with Complainant. See Compl. Attached Ex. 15. The Panel therefore determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name and that Respondent likely profits from that confusion. The Panel therefore finds evidence of bad faith pursuant to 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.’”).
Secondly, Complainant also contends that, in light of the fame and notoriety of Complainant's BENIHANA OF TOKYO mark, it is inconceivable that Respondent could have registered the <benihanaoftokyo.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Although arguments of bad faith based on constructive notice are not normally regarded as persuasive in this field, the Panel finds that because of the fame of Complainant’s mark, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence 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).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BENIHANA OF TOKYO mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benihanaoftokyo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 19, 2014
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