Noodle Time, Inc. v. Takuomi Mochida / Venture-Net Co.,Ltd.
Claim Number: FA1511001647176
Complainant is Noodle Time, Inc. (“Complainant”), represented by Janet C. Moreira of MAVEN Intellectual Property, Florida, USA. Respondent is Takuomi Mochida / Venture-Net Co.,Ltd. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getbenihanacoupons.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2015; the Forum received payment on November 16, 2015. The Complaint was received in both Japanese and English.
On November 18, 2015, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <getbenihanacoupons.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 November 24, 2015, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of December 14, 2015 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@getbenihanacoupons.com. Also on November 24, 2015, the Japanese language 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 November 25, 2015.
On November 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the BENIHANA family of marks in connection with its business as a provider of teppanyaki style dining experiences at over 75 restaurants throughout the United States and abroad. Complainant’s rights in the BENIHANA marks stem from registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,230,609, registered March 8, 1983). Respondent’s disputed <getbenihanacoupons.com> domain is confusingly similar to Complainant’s BENIHANA mark. The disputed domain merely combines Complainant’s BENIHANA mark with the generic terms “get” and “coupons” and the generic top-level domain (“gTLD”) “.com,” which are not sufficient to distinguish the domain name from the mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name based on WHOIS information and a lack of authorization from Complainant to use the mark. Additionally, Respondent’s failure to make an active use of the disputed domain name demonstrates that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered and is using the disputed domain name in bad faith. Despite Respondent’s inactive use, Respondent is in a position to profit from users’ mistaken association of the domain name with Complainant. Respondent clearly had actual or constructive knowledge of Complainant’s rights in the BENIHANA mark at the time of registration because there would be no other reason for Respondent to register the domain except to create a false sense of affiliation.
B. Respondent
Respondent asserts in the unofficial correspondence to the Forum that he did not know Complainant’s trademark was in the disputed domain. The Panel notes that the disputed domain name was created on February 9, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
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 BENIHANA marks through registration of the marks with the USPTO (e.g., Reg. No. 1,230,609, registered March 8, 1983). Previous panels have consistently held that having a mark registered with the USPTO demonstrates rights in that mark. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). This Panel therefore finds that Complainant’s USPTO registrations establish rights in the BENIHANA mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <getbenihanacoupons.com> domain name is confusingly similar to the BENIHANA mark. The domain appears to include the entire mark and adds the generic terms “get” and “coupons,” as well as the gTLD “.com.” Panels have routinely held that the gTLD “.com” is irrelevant under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Panels have similarly found that attaching generic terms to a mark does not create a domain distinguished from the mark to which the terms are attached. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). This Panel finds that Respondent’s <getbenihanacoupons.com> domain is confusingly similar to the BENIHANA mark in which Complainant claims to have rights 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 claims that Respondent has not been commonly known by the disputed domain name. WHOIS information indicates that Respondent identifies as “Takuomi Mochida.” Additionally, Complainant states that it has not authorized Respondent to use the BENIHANA marks. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information, a lack of authorization, and a lack of information in the record to the contrary. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Under Policy ¶ 4(c)(ii), this Panel finds that Respondent has not been commonly known by the disputed domain name.
Complainant further argues that Respondent’s failure to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain, as resolved for Complainant on November 5, 2015, displays a page bearing the message, “Account Suspended, This Account has been suspended. Contact your hosting provider for more information.” Further, in correspondence between the Forum and Respondent, Respondent admits that it is not using the disputed domain name. Panels have held that inactive use of a disputed domain does not fall under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel determines that Respondent’s inactive use of the domain does not fall within Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent’s registration of the disputed domain puts it into a position to profit from illegitimate use of the BENIHANA mark. Panels have held that even inactive use of a domain name can demonstrate bad faith under Policy ¶ 4(b)(iv) if there is no conceivable good faith use that could be made with the disputed domain. See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). In light of the fame and notoriety of the BENIHANA mark, this Panel thus finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that in light of the fame and notoriety of the BENIHANA mark it is inconceivable that Respondent could have registered the disputed domain without actual and/or constructive knowledge of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from the fame and notoriety of the BENIHANA mark that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getbenihanacoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 11, 2015
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