ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. A Complaint was filed by counsel for the Complainant, NOODLE TIME, INC. of New York City, New York with eResolution naming as the Respondent, MAX MARKETING of Troy, Michigan, the registered owner of the disputed domain name - benihanaoftokyo.com.
2. The procedural history of this case is set out in detail in the letter sent by Robert Cassius de Linval, Head Clerk, eResolution to Maurice Wolf, lead Panelist appointed to hear this case, which is attached to this decision as Exhibit I.
3. (a) Paragraph 5(e) of the Rules for Uniform Domain Name Resolution Policy Dispute [hereafter, 'ICANN Rules'], provides that, in the absence of any response,'. . . the Panel shall decide the dispute case based on the complaint. . . . ', Accordingly, the Panel accepts as true the statements set forth as factual information in the Complaint as no response or other document refuting these factual statements were submitted by the Respondent.
(b) The Complainant presents evidence in the form of a certificate issued by the U.S. Patent and Trade mark Office showing that the Complainant, Noodle Time, Inc., is the present title owner of a trademark that had been registered with the U.S. Patent and Trademark Office on August 1, 1972 and that such trademark had been in use since April 1964. Upon receiving the Complaint eResolution verified that on 20 May, 1999. the domain name of benihanaoftokyo.com had been registered with Network Solutions, Inc., by Max Marketing of Troy, Michigan. Thus, setting the stage for the domain name dispute in this case.
4. The Complainant states that it operates a chain of restaurants under the trade name of Benihana of Tokyo and alleges that the Respondent has no connection with this chain of restaurants, is not related in any way to the Complainant, nor has the Complainant ever licenced or otherwise authorized the Respondent to use the name 'Benihana of Tokyo' or to obtain the registration of the disputed domain name.
Complainant further alleges the Respondent's registration and use of the disputed domain name is in bad faith as the Respondent has admitted that he had acquired this domain name for the purpose of selling, renting or otherwise obtaining compensation from the Complainant.
The Complainant further claims that the Respondent has intentionally tried to create confusion with the Complainant's mark so that he could benefit by this confusion. Finally, the Complaint alleges that the Respondent tried to extort money from the Complainant by threatening to destroy e-mail messages intended for the Complainant but sent to the disputed domain.
5. The Uniform Domain Name Dispute Resolution Policy [hereafter the ICANN Policy], Paragraph 1, makes it clear that the ICANN Policy is incorporated in each Registration Statement by reference and that the Registrant is considered to know its contents. The ICANN Policy further states that a Registrant is bound by this Policy and that disputes between the Registrant and a third party over a domain name must be resolved by the system of arbitration conducted under the ICANN Rules called a 'mandatory administrative proceeding'. [See Paragraph 4 of the ICANN Policy].[All references to Paragraph numbers are to the respective paragraphs in the ICANN policy, unless otherwise noted.]
The ICANN Policy was adopted in order to ensure that disputes arising from domain names could be resolved in an efficient manner equitable to the parties to the dispute. Such parties are given the opportunity to present evidence to an independent and impartial arbitrator to support the claims made by the Complainant, on the one hand and for the Respondent, on the other, to demonstrate that the use of the disputed domain name is proper and in accordance with the ICANN Policy. [See Paragraph 4].
Of course, when one party to such a dispute fails to abide by the ICANN Rules and does not submit a response to the Complaint, it is difficult for any arbitrator to view the merits of the case from the perspective of the Respondent and must rely on the statements and evidence submitted by the Complainant and the provisions of the ICANN Policy applicable to these facts.
The arbitrator may properly draw an inference that the failure of the Respondent to answer the claims of the Respondent should be considered as an admission that such claims are true.[Paragraph 14 of the ICANN Rules] Accordingly, if the Complainant's claim includes sufficient credible evidence that the Respondent has violated the ICANN Policy, the arbitrator must find for the Complainant and order the appropriate action taken with respect to the registration of the disputed domain name. This, it is to be noted, is not a default award but an award based on the evidence before the Panel which is unrefuted.
In the instant case, as noted above, the Complainant alleges that the Respondent registered and uses the disputed domain manner in a manner prohibited by the ICANN Policy. Paragraph 4a requires the Complainant to demonstrate that three elements of a case are present for either cancellation or transfer of the disputed domain name. These are:
a. That the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
b. That the Respondent has no rights or legitimate interests in respect of the domain name, and
c. The domain name was registered and is being used in bad faith.
The question before this Panel, therefore, is whether the Complainant has satisfied the requirements of Paragraph 4a with respect to these three elements, all of which must be proved.
(i) Is the disputed domain name identical or confusingly similar to the Complainant's trademark?
The Panel finds that the Respondent has met his burden of proof with respect to the question whether the disputed domain name is '. . . identical or confusingly similar to a trademark or service mark in which the complainant has rights.. . .' [Paragraph 4a(i).] This finding is based on the evidence submitted by the Complainant, primarily the certificate issued by the US Patent and Trademark Office, as noted above, which proves that the disputed domain name is identical to that of the name registered by the Complainant and on Exhibit 2 to the Complaint, which shows that confusion exists between the disputed domain name and the registered trademark.
(ii) Does the Respondent have any rights or legitimate interest in the domain name?
Perhaps it may have been possible for the Respondent to have shown that he has such rights or interest. But, in the absence of any response, as previously noted, this Panel accepts the statements of the Complainant that the Respondent has no such rights or interest.
(iii) Was the domain name registered and it is being operated in bad faith?
To show such bad faith, the Complainant is required to demonstrate that at least one of the four situations detailed in Paragraph 4 b is applicable to the registration and use of the disputed domain name.
We find that the Complainant has demonstrated that the registration and use of the disputed domain name were not undertaken in good faith. It would appear from the record that the Respondent never had any intention of using the disputed domain name for any legitimate business purpose and that it was
. . . acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of . . . documented out-of-pocket costs directly related to the domain name:' [Paragraph 4b (i)]
We further note that the Respondent represented and warranted that ' . . .to. . . [his] . . . knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.' [Paragraph 2].
We find that the this representation and warranty were not truthful and not made in good faith and that the Respondent, who has no evident connection with the restaurant business in general or to the Benihana of Tokyo chain, in particular, knew that the registration of this domain name was an infringement and violation of the rights of a third party.
In view of this finding we need not determine also whether the Respondent also registered the domain name for any unlawful purpose nor whether he knowingly used the domain name in violation of any applicable rules sand regulations, other than those cited above of the ICANN Policy and Rules.
Having found for the Complainant, the issue of remedies must now be addressed by the Panel.
It is noted that the Complainant seeks both cancellation and transfer of the disputed domain name to the Complainant. However, our reading of the ICANN Policy relating to remedies [Paragraph 4i] indicates that only the imposition of one of these two remedies is permitted, not both. The Panel may either cancel the disputed domain name or, in the alternative, transfer the domain name registration to the Complainant.
It is evident that if the Panel were to cancel the domain name, that is, render the registration null and void, there would be nothing thereafter to transfer to the Complainant. It appears, therefore, that the Complainant erred in requesting both remedies. In view of the circumstances, we deem this error to be of no consequence and elect to treat the request for remedies as a request for transfer of the disputed domain name to the Complainant.
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3c, the Panel orders the domain name of benihanaoftokyo.com to be transferred to the Complainant.
This decision of the Administrative Panel in Case No. AF-0100 was rendered on the 9th of March, 2000.
(s) Maurice Wolf