Haru Holding Corp. v. Haru Sushi
Claim Number: FA1301001482945
Complainant is Haru Holding Corp. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is Haru Sushi (“Respondent”), represented by Kyle Salvador, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harusushigolden.com>, registered with GODADDY.COM, LLC.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
On February 1, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <harusushigolden.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@harusushigolden.com. Also on February 4, 2013, 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 February 25, 2013.
On 1 March 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant contends that it has rights in the HARU & Design mark. The mark is used in connection with Japanese-fusion cuisine, including sushi, and restaurant services. Complainant is the owner of the United States Patent Trademark Office (“USPTO”) registration for the HARU mark (Reg. No. 2,709,147 registered Apr. 22, 2003). See Complainant’s Annex 3.
b) The <harusushigolden.com> domain name is confusingly similar to the HARU mark. Respondent merely takes Complainant’s mark, interestingly also a misspelling of Respondent’s business name, and adds the generic and descriptive terms “sushi” and “golden.”
c) Respondent does not have rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the HARU mark. The WHOIS information for the <harusushigolden.com> domain name is a private registration and thus there is nothing of record that suggests that Respondent is commonly known by the <harusushigolden.com> domain name.
b. Respondent uses the <harusushigolden.com> domain name to promote its own restaurant, Halu Sushi & Asian Bistro. See Complainant’s Annex 8.
d) The <harusushigolden.com> domain name was registered and is used in bad faith.
a. Respondent registered the <harusushigolden.com> domain name to preclude Complainant from registering the same.
b. The confusing similarity of the <harusushigolden.com> domain name misleads customers searching for Complainant’s restaurant and causes them to instead find Respondent’s restaurant. Respondent trades off of the goodwill of the HARU mark to promote Respondent’s own restaurant by another name. Due to the confusing similarity of the disputed domain name, the <harusushigolden.com> domain name is likely to cause confusion, mistake, or deceive as to the affiliation, connection, or association of Respondent with Complainant.
c. Respondent had, at minimum, constructive knowledge of Complainant’s rights in the HARU mark based on Complainant’s registration of the mark with the USPTO. Respondent was undoubtedly aware, however, of the HARU mark given Complainant’s extensive use and the mark’s notoriety and fame.
B. Respondent
a) Respondent wishes to concede the ownership of the domain name to Complainant without admission of guilt or liability.
b) The intent of the domain was to clear confusion on the part of the end-users, as many people cannot distinguish between “R” and “L” in Asian languages.
c) Respondent requests that the Panel denies the remedy requested by Complainant.
Complainant is active in the restaurant business, in which it uses its HARU mark. Complainant is the holder of inter alia the USPTO the HARU mark (Reg. No. 2,709,147 registered Apr. 22, 2003).
Respondent registered the <harusushigolden.com> domain name on April 14, 2008. Respondent operates a restaurant using the name “HALU SUSHI & ASIAN BISTRO.” Respondent has been using the <harusushigolden.com> domain name in connection with promotion for this restaurant. Respondent has consented to concede the ownership of the domain name under dispute.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <harusushigolden.com> domain name
to Complainant. However, the Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. According to the Panel, the “consent-to-transfer” approach is often used by cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. At the same time, Respondent requests the Panel to deny the remedy requested by the Complainant. Therefore, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
As a result, the Panel has decided to analyze the case under the elements of the UDRP.
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 contends that it has rights in the HARU & Design mark. Complainant notes that the mark is used in connection with Japanese-fusion cuisine, including sushi, and restaurant services. Complainant shows to be the holder of the USPTO registration for the HARU mark (Reg. No. 2,709,147 registered Apr. 22, 2003). See Complainant’s Annex 3. Panels have held that the registration of a mark with a federal trademark authority is evidence of having established rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, the Panel finds that Complainant has rights in the HARU mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the <harusushigolden.com> domain name is confusingly similar to the HARU mark. According to Complainant, Respondent merely takes Complainant’s mark and adds the generic and descriptive terms “sushi” and “golden.” The Panel finds that this addition does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” in the domain name. The Panel finds that this addition is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <harusushigolden.com> domain name is confusingly similar to the HARU mark under Policy ¶ 4(a)(i).
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.”).
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant claims that it has not authorized Respondent to use the HARU mark, and that the WHOIS information for the <harusushigolden.com> domain name is a private registration and thus there is nothing of record that suggests that Respondent is commonly known by the <harusushigolden.com> domain name. The Panel notes that the WHOIS record for the <harusushigolden.com> domain name lists “Haru Sushi” as the domain name registrant. Previous panels have found that, even in instances where the WHOIS record suggests some commonality between the respondent and the domain name, where all other information and claims dispute this commonality the Panel may find that the respondent is not known by the disputed domain name. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). In the present case, there is no information showing that Respondent is known by the disputed domain name and respondent states to be willing to concede the domain name without arguing that it has a legitimate interest in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <harusushigolden.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant states that Respondent uses the <harusushigolden.com> domain name to promote its own restaurant, Halu Sushi & Asian Bistro. See Complainant’s Annex 8. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the use of a disputed domain name for a competing use is not a use which is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <harusushigolden.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that the <harusushigolden.com> domain name was registered and is used in bad faith. Complainant asserts that Respondent registered the <harusushigolden.com> domain name to preclude Complainant from registering the same. Panels have found that registering a domain name with the intent of depriving the complainant of the opportunity to reflect its mark in a domain name is evidence of bad faith. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). However, the Panel finds that Complainant fails to provide any evidence showing such pattern.
Complainant next contends that the confusing similarity of the <harusushigolden.com> domain name misleads customers searching for Complainant’s restaurant and causes them to instead find Respondent’s restaurant promotion at the disputed domain name’s resolving website. According to Complainant, Respondent trades off of the goodwill of the HARU mark to promote Respondent’s own restaurant by another name. Complainant notes that, due to the confusing similarity of the disputed domain name, the <harusushigolden.com> domain name is likely to cause confusion, mistake, or deceive as to the affiliation, connection, or association of Respondent with Complainant. The Panel finds that such confusion is indeed likely and that Respondent registered and uses the <harusushigolden.com> domain name in an attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harusushigolden.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: March 18, 2013
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