Noodle Time, Inc. v. Bharat Kumar
Claim Number: FA1802001771678
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet C. Moreira, Florida, USA. Respondent is Bharat Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benihanahost.info>, registered with NameCheap, Inc.
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 Forum electronically on February 13, 2018; the Forum received payment on February 13, 2018.
On February 13, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <benihanahost.info> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 February 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@benihanahost.info. Also on February 19, 2018, 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 March 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is recognized internationally for its signature teppanyaki style of dining which has made the dining experience a cultural icon over the years. Complainant is the largest operator of teppanyaki restaurants in the country and the leading Asian themed restaurant chain in the world, having served over 120 million meals since 1964. Complainant has rights in the BENIHANA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,230,609, registered March 8, 1983). Respondent’s <benihanahost.info> domain name is identical or confusingly similar to Complainant’s mark as it contains the BENIHANA mark in its entirety and merely adds the generic term “host” along with the generic top-level domain (“gTLD”) “.info.”
Respondent has no rights or legitimate interests in the <benihanahost.info> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, after displaying a message indicating the website is associated with malware, the resolving domain merely displays an error message.
Respondent registered and uses the <benihanahost.info> domain name in bad faith as the website appears to be associated with malware. Further, Respondent passively holds the domain name without making any use of the resolving webpage. Additionally, due to the fame and notoriety of the BENIHANA mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time it registered the infringing domain name. Finally, Respondent has intentionally precluded Complainant from registering and using the <benihanahost.info> domain name to properly advertise and promote Complainant’s business, which is particularly evident in light of the fact that Respondent ignored Complainant’s request for transfer of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <benihanahost.info> domain name.
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 claims rights in the BENIHANA mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,230,609, registered March 8, 1983). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the BENIHANA mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <benihanahost.info> domain name is identical or confusingly similar to Complainant’s mark as it contains the BENIHANA mark in its entirety and merely adds the generic term “host” along with the gTLD “.info.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <benihanahost.info> domain name is confusingly similar to the BENIHANA mark under Policy ¶4(a)(i).
Complainant has proved 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <benihanahost.info> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Bharat Kumar” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BENIHANA mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <benihanahost.info> domain name under Policy ¶ 4(c)(ii).
Complainant claims that the domain name is linked to a website containing malware. Using a confusingly similar domain name in connection with malware generally fails to confer rights and legitimate interests in the domain name. See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant provides screenshots of the Respondent’s website which contains a questionnaire for users to enter in non-personal information, and an installation request for Adobe Flash Player, which installs malware on a user’s computer. Phishing schemes and downloading malicious software can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use.). Complainant provides a screenshot of the initial message displayed when attempting to access the domain name, which states “Warning: Trouble ahead.” The Panel finds that Respondent’s disputed domain name is used in connection with malware, failing to bestow rights and legitimate interests in the domain name.
Complainant contends that the infringing domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving domain, which displays the message “Hmmm…can’t reach this page.” Accordingly, the Panel finds that Respondent fails to actively use the resolving webpage, failing to confer rights and legitimate interests in the infringing domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel may consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s domain name has connections with malware. Using a domain name in connection with malware can evince bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant demonstrates that Respondent engages in a phishing scheme to obtain users’ information and downloads malware onto the users’ computers. Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii)). As noted above, Complainant provides a screenshot of the initial message displayed when attempting to access the domain name, which states “Warning: Trouble ahead.” Accordingly, the Panel finds that the resolving webpage associated with the infringing domain name contains malware in bad faith per Policy ¶ 4(a)(iii).
Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s provided screenshot displays the message “Hmmm…can’t reach this page.” Accordingly, the Panel finds that Respondent fails to actively use the domain name in bad faith.
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s BANIHANA mark at the time of registering the <benihanahost.info> domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith registration and use under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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.
Complainant has proved this element.
DECISION
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 <benihanahost.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 19, 2018
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