Haru Holding Corp. v. [Registrant]
Claim Number: FA1311001529571
Complainant is Haru Holding Corp. (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is [Registrant] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haruasian.com>, registered with GoDaddy.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013.
On November 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <haruasian.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 November 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@haruasian.com. Also on November 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
1. Complainant offers Japanese and Japanese-fusion cuisine, and it opened its first restaurant in New York in 2001. Complainant owns and operates seven restaurants in the United States, with six of the restaurants located in the State of New York. Complainant owns a primary website, <www.harsushi.com>, and it is used to promote and market its restaurants through direct e-mail programs, press releases, and print advertising.
2. Complainant is the owner of the HARU mark, used in connection with its Japanese restaurants. Complainant owns registrations for the HARU mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,193 registered March 12, 2002).
3. Respondent’s <haruasian.com> domain name is confusingly similar to Complainant’s HARU mark. The disputed domain name includes Complainant’s mark in its entirety and combines it with the generic word “Asian” and the generic top-level domain name (“gTLD”).
4. Respondent does not have any rights or legitimate interests in the <haruasian.com> domain name.
5. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARU mark in any way. The WHOIS record identifies Respondent as “[Registrant].”
6. The <haruasian.com> domain name resolves to a parked page.
7. Respondent registered and is using the <haruasian.com> domain name in bad faith.
8. Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because the domain name incorporates Complainant’s distinctive and well-known HARU mark.
9. Respondent is attempting to profit from a confusingly similar domain that attracts and misleads Internet users.
10. Respondent registered the <haruasian.com> domain name on December 13, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HARU mark. Respondent’s domain name is confusingly similar to Complainant’s HARU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <haruasian.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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(e), 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 (Nat. Arb. 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 asserts it is the owner of the HARU mark, used in connection with its Japanese restaurants. Complainant states it owns registrations for the HARU mark with the USPTO (e.g., Reg. No. 2,546,193 registered March 12, 2002). Although it is impossible to determine Respondent’s location due to the lack of information in the <haruasian.com> domain name’s WHOIS record, however, even if Respondent resides in a different country than that in which Complainant holds a valid trademark registration, a complainant need not own a registration in a respondent’s country of operation. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the HARU mark pursuant to Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <haruasian.com> domain name is confusingly similar to Complainant’s HARU mark. The disputed domain name includes Complainant’s mark in its entirety and combines it with the generic word “Asian” and the gTLD “.com.” The addition of a generic word 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)). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <haruasian.com> domain name is confusingly similar to Complainant’s HARU mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims Respondent does not have any rights or legitimate interests in the <haruasian.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARU mark in any way. The WHOIS record identifies Respondent as “[Registrant].” Therefore, because Respondent was not authorized by Complainant to use the HARU mark, and neither the WHOIS information nor the other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <haruasian.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims the <haruasian.com> domain name resolves to a parked page. The resolving website contains links to reviews of Complainant’s restaurants. If a domain name containing a complainant’s mark resolves to a parked page this does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <haruasian.com> domain name resolves to a parked page.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and is using the <haruasian.com> domain name in bad faith. Complainant asserts Respondent is attempting to profit from a confusingly similar domain that attracts and misleads Internet users. As described above, the domain name resolves to a parked page displaying links to reviews of Complainant’s business. A parked page with links that appear as a web directory presumably provide the respondent with click through fees and demonstrate bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore, the Panel finds that Respondent registered and is using the <haruasian.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name resolves to a parked page.
Complainant contends Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because the domain name incorporates Complainant’s distinctive and well-known HARU mark. Accordingly, the Panel concludes that Respondent had actual knowledge of Complainant’s mark, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haruasian.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 23, 2013
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