Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC
Claim Number: FA1607001685263
Complainant is Haru Holding Corporation (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is Michael Gleissner / NextEngine Ventures LLC (“Respondent”), represented by Roman A. Popov of Morton & Associates LLLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sushiatharu.com>, registered with Domainsurgeon.com 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2016; the Forum received payment on July 25, 2016.
On July 25, 2016, Domainsurgeon.com LLC confirmed by e-mail to the Forum that the <sushiatharu.com> domain name is registered with Domainsurgeon.com LLC and that Respondent is the current registrant of the name. Domainsurgeon.com LLC has verified that Respondent is bound by the Domainsurgeon.com 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 July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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 firstname.lastname@example.org. Also on July 26, 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 August 15, 2016.
On August 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant contends as follows:
Complainant owns the HARU mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,546,193, Registered Mar. 12, 2002).
Respondent’s <sushiatharu.com> domain name is confusingly similar to Complainant’s HARU mark. The disputed domain name adds the generic words “sushi” and “at” as well as the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <sushiatharu.com> domain name. Respondent is not commonly known by the disputed domain name as evinced by the WHOIS information. Respondent has not made an active use of the disputed domain since registering it.
Respondent registered and is using the <sushiatharu.com> domain name in bad faith. Respondent has failed to make an active use of the disputed domain name. Respondent has prevented Complainant from registering the <sushiatharu.com> domain name for its own account. Respondent registered <sushiatharu.com> with actual or constructive knowledge of Complainant’s rights in the HARU mark.
Respondent contends as follows:
Respondent’s <sushiatharu.com> domain name is not confusingly similar to the HARU mark. The addition of the terms “sushi” and “at” create a unique domain name distinct from Complainant’s HARU mark. The word “haru” means spring in Japanese, and therefore is generic.
Respondent has rights and legitimate interest in the disputed domain name. Respondent had 4 days between acquiring the <sushiatharu.com> domain name and receiving Complainant’s cease-and-desist letter and being made aware of the potential for the current proceeding. Respondent was unable to create an active website in the short amount of time and with the potential of having the domain transferred.
Respondent did not register and is not using the <sushiatharu.com> domain in bad faith. Respondent was unaware of Complainant’s trademark at the time it registered the disputed domain. Respondent is a citizen of Hong Kong and was unaware of Complainant’s six restaurants in the Northeast region of the United States (in Boston and New York). Respondent has not had adequate time to make active use of the disputed domain name.
The <sushiatharu.com> domain name was registered on June 10, 2016.
Complainant has rights in the HARU mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark or business name in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent has made no use of the at-issue 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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HARU trademark with the USPTO is sufficient to establish its rights in a mark under Policy ¶ 4(a)(i). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <sushiatharu.com> domain name contains Complainant’s HARU mark preceded by the generic terms “sushi” and “at” with the top-level domain name “.com” appended to the resulting string to complete the domain name. The differences between Respondent’s at-issue domain name and Complainant’s trademark fail to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <sushiatharu.com> domain name is confusingly similar to Complainant’s HARU trademark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Where there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might conclude that Respondent has rights or interests in respect of the <sushiatharu.com> domain name.
WHOIS information for the <sushiatharu.com> domain name lists “Michael Gleissner” as the domain name’s registrant and there is nothing in the record that even remotely suggests the Respondent is otherwise commonly known by the <sushiatharu.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Further, Respondent’s confusingly similar <sushiatharu.com> domain name is inactive. Failure to use a domain name is neither a bona fide offering of goods or service under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (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).”). While Respondent avers that it will make a bona fide use of the domain name, only recently registered the domain name, and has not had a reasonable amount of time to set up a website, nowhere does Respondent offer even a hint as to why the domain name was registered or what Respondent’s intended purpose was in doing so.
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and Respondent fails to show it nevertheless has rights or interest in the at-issue domain name. Therefore, Respondent lacks rights and/or interests in respect of the at-issue domain name.
The domain name was not registered or used in bad faith. As discussed below, the evidence is insufficient for the Panel to conclude that Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
First, the Panel agrees with Respondent that there was a relatively short time between the domain name’s registration and the instant dispute. Such a short time may be insufficient to launch a proper website. However as mentioned above regarding rights and interests, Respondent offers no suggestions as to how it plans to use the domain name when it certainly could have. Respondent’s contention that it will use the domain name for some unspecified bona fide purpose sometime in the future is but a bald allegation in the Response. Notably, some intended good faith use other than for a website, or even some reasonable intended use, might suggest Respondent’s lack of bad faith. See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed). However, the burden is not on Respondent to show that it has not acted in bad faith, and simply holding a domain name inactively does not demonstrate a respondent’s bad faith under Policy ¶ 4(a)(iii). See Nike, Inc. v. Crystal International, WIPO/D2002-0352 (No use at all (simply holding the domain name), without more, does not satisfy Policy 4(a)(iii)).
Second, Complainant fails to disclose any bad faith circumstances that squarely fall within one of the express provisions of Policy ¶ 4(b). Complainant’s claim that Respondent’s use of Complainant’s trademark in its <sushiatharu.com> domain name prevents Complainant from registering the same domain name is of course undeniable, as is generally true whenever a domain name contains another’s trademark. But that particular circumstance, per Policy at ¶4(b)(ii), demonstrates bad faith only “provided that [the respondent] have engaged in a pattern of such conduct.” There is no claim or evidence of Respondent’s “pattern of such conduct” within the record and Complainant proffers no other Policy ¶ 4(b) circumstances.
The lack of paragraph 4(b) circumstances is by no means fatal to a panel’s finding of bad faith. It is well settled that Policy ¶ 4(b) is not meant as an all-encompassing enumeration of paragraph 4(a)(iii) bad faith 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). The terms that prefix Complainant’s trademark in the at-issue domain name, “sushi “and “at,” together seem to indicate that their subject term, “haru”, is not being used in its descriptive sense to mean Spring, the mark’s common Japanese meaning. Instead the terms appear to refer to the proper name of a venue, perhaps Respondent’s HARU restaurants. But no hard and fast conclusion may be drawn. The mere fact that Respondent’s domain name contains Complainant’s trademark does not, without more, create an inference of bad faith.
Furthermore and contrary to Complainant’s claims, constructive knowledge of a trademark does not generally underpin Policy ¶ 4(b)(iii) bad faith. Complainant’s urging that Respondent should be found to have constructive notice of the HARU mark and thereby Respondent’s inclusion of Complainant’s entire mark in the domain name demonstrates Respondent’s bad faith is thus unavailing. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). On the other hand, a finding that a respondent had actual knowledge of Complainant’s trademark prior to registering an at-issue domain name has been found to be indicative of the respondent’s bad faith. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name”). However here, the Panel finds no convincing evidence that Respondent had actual knowledge of Complainant’s trademark prior to the instant dispute. There is no direct evidence of such knowledge and only scant indirect evidence, as alluded to elsewhere herein. Complainant’s HARU mark is not widely used and is geographically limited to two Northeastern United States cities, Boston and New York. Complainant’s mark also is composed of a common Japanese word. While Complainant contends that Respondent resides in New York, the registration record for the domain name offered with the Complaint shows the registrant’s locale to be Hong Kong. Respondent expressly claims residence in Hong Kong and denies that it had knowledge of Complainant’s mark prior to the dispute.
Finally, there are ways that the generic word “haru” might be used as part of a domain name in good faith, either as a reference to Complainant or otherwise. For instance the at-issue domain name might be used to host a criticism or commentary website. Until the domain is actually used or an adverse inference may be taken from longer term inactivity, it is equally speculative to hold that the <sushiatharu.com> domain name will be used in bad faith as it is to hold that it will be used in good faith.
Therefore given the foregoing and in light of the record, the evidence of Respondent’s bad faith registration and use of its <sushiatharu.com> domain name is insufficient to satisfy Complainant’s burden of persuasion under Policy ¶ 4(iii) and the Complaint fails. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith) . If in the future the relevant circumstances materially change, Complainant may address such circumstances in a fresh complaint.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sushiatharu.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: August 30, 2016
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