Haru Holding Corporation v. Domain Administrator / Tfourh, LLC
Claim Number: FA1602001660423
Complainant is Haru Holding Corporation (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is Domain Administrator / Tfourh, LLC (“Respondent”), represented by May Greenberg of Tfourh, LLC, Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haru.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2016; the Forum received payment on February 16, 2016.
On February 11, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <haru.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@haru.org. Also on February 17, 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.
A timely Response was received and determined to be complete on March 8, 2016.
On March 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends that:
- the Complainant has rights in the HARU mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,193, filed May 10, 2000, registered March 12, 2002), according to the Compl., at Attached Annex 3.
- The Complainant began using the its HARU trademarks in 1996 and filed applications to register its HARU with the USPTO in 2001. The HARU trademarks have been used and promoted extensively for nearly 20 years, in connection with superior Japanese and Japanese fusion cuisine in one of the most metropolitan and international cities in the world, with the opening of first HARU restaurant in New York in 1996, according to the Compl., at Attached Annex 10.
- Complainant’s primary website <harusushi.com> was first registered in on January 5, 2000, according to the Compl., at Attached Annex 4.
- Respondent’s <haru.org> domain name is identical to the HARU mark because it is altered by only the addition of the generic top-level domain (“gTLD”) “.org.”
- the Respondent is not commonly known by the <haru.org> domain name because the available WHOIS information identifies Respondent as “Domain Administrator / Tfourh, LLC.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive and non-developed website, containing only parked links to provide pay-per-click revenue, according to Compl., at Attached Annex 12.
- the Respondent registered and used the <haru.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the HARU mark, as demonstrated through its fame and use of the mark. Respondent uses the <haru.org> domain name in bad faith because the resolving website constitutes an inactive and non-developed website.
- The Respondent took over the disputed domain name in 2007 from Eastwind Group (an owner located in New York, where predominantly the HARU restaurants of the Complainant are located)
- The original registrant had at least constructive knowledge of the HARU trademarks based on the Complainant’s use in the same city where the original registrant was located and Complainant’s applicant and subsequent registration of the HARU trademarks. The current registrant and Respondent, even if it were to claim lack of knowledge of the federal registration of the HARU trademarks was undoubtedly aware of the HARU trademarks to purchasing and/or renewing the disputed domain name due to the extensive use, notoriety and fame of HARU trademarks according to Compl., at attached Annexes 3, 10 and 18.
B. Respondent
By its submissions, the Respondent responds that:
- Respondent’s registration of the <haru.org> domain name predates Complainant’s rights in the HARU mark.
- The term “haru” is Japanese for “spring,” and therefore, generic.
- Respondent is in the business of acquiring generic domain names for investment and development, and hosting pay-per-click advertising links provides rights and legitimate interests.
- Complainant has failed to show that Respondent was aware of its rights in the HARU mark at the time of registration or that Respondent, in any way, targeted Complainant’s mark.
- Complainant did not initiate any proceedings until nearly 14 years following the registration of the disputed domain name and therefore the Complainant is barred in taking actions against the Respondent under the doctrine of laches or at least such long delay raises an inference that the Complainant did not truly believe Respondent engaged in bad faith registration.
The Complainant is the holder of HARU trademarks and has used them since 1996 in relationship with Japanese food restaurants business, predominantly in New York. The disputed domain name has been initially registered in 2001 by a company owned by a New York located owner and transferred in 2007 to the actual registrant and Respondent who has been using it for pay per click business, which in the special circumstances of this case cannot be accepted as indicating legitimate rights and interests of the Respondent.
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.
Complainant claims it has rights in the HARU mark through its registration with the USPTO (Reg. No. 2,546,193, filed May 10, 2000, registered March 12, 2002). Complainant has provided this registration in its Annex 3. Accordingly, the Panel finds that Complainant has rights in the HARU mark under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). Further, past panels have agreed that when a mark has been registered with the USPTO, relevant rights date back to the filing date of such a mark. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Nat. Arb. Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful). Therefore, this Panel agrees that the relevant rights in the HARU mark date back to May 10, 2000. Also, the Panel notes that, the use of the HARU mark in relationship to the Complainant’s line of business may be also considered in connection to the opening of the first HARU restaurant in New York.
Complainant argues that Respondent’s <haru.org> domain name differs from the HARU mark only in that it contains the gTLD “.org.” As such, the Panel finds that the <haru.org> domain name is identical to Complainant’s HARU mark under Policy ¶ 4(a)(i). See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
While Respondent argues that its registration of the <haru.org> domain name predates Complainant’s alleged rights in the HARU mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this element of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <haru.org> domain name is comprised of a common and generic term in Japanese and as such cannot be found to be identical to Complainant’s mark, the Panel is of the opinion that such a determination is not necessary under Policy ¶ 4(a)(i) as this element of the Policy considers only whether Complainant has rights in the HARU mark and whether the <haru.org> domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel determines that the Complainant has proven the first element under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 alleges that Respondent is not commonly known by the <haru.org> domain name because the available WHOIS information identifies Respondent as “Domain Administrator / Tfourh, LLC.” Complainant maintains that its Annex 10 demonstrates that Respondent, or any registrant of the <haru.org> domain name, has never been commonly known by the name. The Panel notes that Respondent does not claim to be so known. Therefore, the Panel finds that Respondent is not commonly known by the <haru.org> domain name according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <haru.org> domain name resolves to an inactive and non-developed website, containing only parked links to provide pay-per-click revenue. Complainant has provided evidence of such use in its Annexes 10 and 12, to demonstrate that this is the only way in which the domain name has been used. The Panel finds this evidence sufficient to show that Respondent has failed to make an active use, and as a consequence finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”).
Respondent argues that the term, “haru” of the <haru.org> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent contends that the term “haru” is Japanese for “spring,” as claimed on Complainant’s USPTO registration.
Respondent claims to be in the business of acquiring generic domain names for investment and development. Respondent maintains that it owns many generic domain names, such as <antholgoie.com>, <cuarto.com> <coffret.com>, <sakura.com>, <abrasive.org>, <daylight.org>, <meal.org>, and others listed in Paragraph 8 of its Response Annex. Respondent contends that in the interim stages of development of these websites, it uses them to host pay-per-click links to produce advertising revenue, as it has done with the <haru.org> domain name. Although registering domain names comprising of generic words, might represent a legitimate business practice in itself, this Panel finds difficult to conclude that, in this particular case, considering the circumstances of initial registering and renewing or transferring of the disputed domain name, the registration and use of the disputed domain name is legitimate in itself. This Panel, considers that by knowing about the Complainant’s business in Japanese food, fact which cannot be denied, both at the initial registration and later at the renewal or transfer to the actual registrant and Respondent, the latter could not ascertain any legitimate rights or interests in the disputed domain name.
Therefore, the Panel determines that the Complainant has proven the first element under Policy ¶ 4(a)(ii).
Complainant does not make any arguments regarding Respondent’s bad faith registration or use of the <haru.org> domain name that are specifically enumerated under Policy ¶ 4(b). However, the Policy is not limited to only those arguments specifically enumerated. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent registered the <haru.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the HARU mark. Complainant has provided, in its Annex 10, historical use of and WHOIS information for the <haru.org> domain name, which Complainant purports to show that Respondent acquired the domain name sometime during or after 2007. Complainant argues that at such a time, Respondent’s acquisition of the domain was done in bad faith because it was done with actual knowledge based upon Complainant’s fame and use of the HARU mark. The Panel finds this sufficient to show both that Respondent acquired the <haru.org> domain name during or after 2007, and that Respondent so acquired it with actual knowledge of Complainant’s rights, the Panel finds that Respondent registered the <haru.org> domain name in bad faith. 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) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Moreover, the Panel has considered that the rights of the Complainant in the HARU trademark may date back to 2000, when it filed for the trademark registration or even earlier in 1996, when the opening of the first HARU restaurant in New York took place. As a conclusion under this matter, this Panel cannot give weight to the defense of the Respondent about not knowing about the Complainant’s trademark at the time of registration.
Complainant alleges that Respondent uses the <haru.org> domain name in bad faith because the resolving website constitutes an inactive and non-developed website, and that it has been so inactive for the duration of its registration. Complainant has provided evidence of this use in its Annexes 10 and 12, to demonstrate that this is the only way in which the domain name has been used. The Panel finds this evidence sufficient, and determines that Respondent uses the <haru.org> domain name in bad faith under Policy ¶ 4(a)(iii). 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).
Doctrine of Laches
Respondent contends that Complainant waited 14 years to bring this claim. Respondent maintains that it registered the <haru.org> domain name on April 11, 2001, and that Complainant has provided no explanation for such a delay in bringing its claim, therefore rendering the delay unreasonable. This Panel finds that the doctrine of laches does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Reverse Domain Name Hijacking
As the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <haru.org> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka - Panelist
Dated: March 28, 2016
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