Haru Holding Corporation v. AI Matusita
Claim Number: FA1606001679867
Complainant is Haru Holding Corporation (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, United States. Respondent is AI Matusita (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harusushicafe.com>, registered with Odysseus 888, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2016; the Forum received payment on June 16, 2016.
On June 21, 2016, Odysseus 888, LLC confirmed by e-mail to the Forum that the <harusushicafe.com> domain name is registered with Odysseus 888, LLC and that Respondent is the current registrant of the name. Odysseus 888, LLC has verified that Respondent is bound by the Odysseus 888, 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 June 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2016 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@harusushicafe.com. Also on June 24, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the HARU mark in connection with superior Japanese and Japanese-fusion cuisine. Complainant has registered the HARU mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,193, registered Mar. 12, 2002), which establishes rights in the mark. Respondent’s <harusushicafe.com> domain name is confusingly similar to the HARU mark in its entirety, the descriptive wording “Sushi Cafe” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <harusushicafe.com> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent related to Complainant. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <harusushicafe.com> domain name. Rather, the domain name resolves to an unrelated website offering consumer financial services.
Respondent is using the <harusushicafe.com> domain name in bad faith. Respondent had actual and/or constructive notice of the HARU mark and Complainant’s rights therein because of the mark’s fame, notoriety, and multiple trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Haru Holding Corporation of Aventura, FL, USA. Complainant is the owner of domestic and international registrations for the mark HARU which it has used continuously since at least as early as 1996 in connection with its restaurant services. Complainant advertises its services through its multiple restaurant locations and on its website at <harusushi.com>.
Respondent is AI Matusita of Tokyo, Japan. Respondent’s registrar’s address is listed as Irvine, CA, USA. The Panel notes the <harusushicafe.com> domain name was registered on or about August 29, 2015.
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(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 (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 registered the HARU mark with the USPTO (e.g., Reg. No. 2,546,193, registered Mar. 12, 2002), and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the HARU mark. Prior panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel here finds that Complainant has established Policy ¶ 4(a)(i) rights in the HARU mark.
Next, Complainant argues that Respondent’s <harusushicafe.com> domain name is confusingly similar to the HARU mark as it incorporates the mark in its entirety, the descriptive wording “Sushi Cafe” and the gTLD “.com.” Past panels have found such alterations to a mark are insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel here finds that Respondent’s <harusushicafe.com> domain name is confusingly similar to the HARU mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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 (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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <harusushicafe.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent related to Complainant. The WHOIS information regarding the disputed domain name, lists “Al Matusita” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. In light of the available evidence, this panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names).
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <harusushicafe.com> domain name. Rather, Complainant contends that the domain name resolves to an unrelated website offering consumer financial services. Previous panels have found such unrelated use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). The Panel here finds that Respondent’s <harusushicafe.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the HARU mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (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 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <harusushicafe.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 11, 2016
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