WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nandos International Limited v. M. Fareed Farukhi

Case No. D2000-0225

 

1. The Parties

The Complainant is Nandos International Limited, a non-resident company incorporated under the laws of the Republic of Ireland. The Complainantís contact details are:

Nandos Corporate Services,
Ground Floor,
25 Rudd Road,
Illovo, 2196,
South Africa.

The Complainant is represented in this Administrative Proceeding by Mr. Neil Duncan Dundas of Bowman Gilfillan Incorporated of PO Box 3511, Halfway House 1685, in the Republic of South Africa. The e-mail address of Mr. Dundas is <ndundas@johnandkernick.com>

The Respondent is Mr. Fareed Farukhi of 2860 N. Boulevard, Suite 200, Orange, California 92867, United States of America. His e-mail address is <farrukhzia@aol.com> and <fareed@vfcpa.com. The Respondent is not represented in this Administrative Proceeding.

 

2. The Domain Name(s) and Registrar(s)

The domain names complained about are <nandos.com> and <nandoschicken.com>

The Registrar of the domain names complained of in both cases is Network Solutions Incorporated.

 

3. Procedural History

The Complaint submitted by Nandos International Limited was received by e-mail by the WIPO Arbitration and Mediation Center (the Center) on March 29, 2000. A request was made by the Center for Registrar verification on April 1. A hard copy of the Complaint was received by the Center on April 3. The Registrar responded to the request on April 4. An acknowledgement of receipt of the Complaint was sent by the Center to the Complainant on April 5. On that same day a compliance checklist was made by the Center. An Amendment of the Complaint was received on April 6. That very day, the Complaint together with its Amendment was notified to the Respondent. The notification informed the Respondent that an administrative proceeding had been commenced against him pursuant to the Uniform Domain Name Dispute Policy for Assigned Names and Numbers (ICANN) dated October 24, 1999. The Notice also pointed out that according to paragraph 4(a) of the ICANN Rules (the Rules) and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) the Center had verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules, and that payment in the required amount to the Center had been made by the Complainant. The Notice further stated that in accordance with paragraph 4(c) of the Rules, the formal date of the commencement of the administrative proceedings was April 6, 2000. The Response, acknowledging the receipt of the Complaint as amended by the Complainant, was received by the Center from the Respondent on April 26.

The Complainant had asked for a determination of the dispute by a single member of the Administrative Panel. In his Response, the Respondent expressed his wish to have one member of the Administrative Panel to deal with the case.

The Parties were notified of the appointment of an Administrative Panel consisting of one Panelist in the name of Austin NeeAbeohe Evans Amissah on May 10, 2000.

 

4. Factual Background

The Complainant has registered and used the trademarks "Nandos" and "Nandos Chickenland" and had traded using those trademarks individually or in combination, since 1989. It has acquired a reputation internationally in the use of these marks in connection with prepared chicken over the years. It had attempted to gain ownership of the domain names now claimed for some time, but had been unable to do so due to the prior registration of someone else. In May 1998, the Complainantís previous Internet Service Provider, VWV Interactive, attempted to obtain the <nandos.com> domain name from one John Allday and Jude Aluce, but was unsuccessful in doing so because of the amount of money demanded by the registrants, which the Complainant considered exorbitant. In 1999, when the Complainant had changed its Internet Service Provider to the Digital Mall, and in the light of developments in domain name case law, another attempt was made to obtain that domain name. The Complainant then discovered that the <nandos.com> domain name had been transferred to the Respondent, and that the Respondent had also registered <nandoschicken.com> as a domain name. The domain names now claimed are currently not associated, and have never been associated, with any Internet web site. There has been no indication that the Respondent has ever used the registered domain names. On enquiry Respondent indicated that he wanted to license the use of, or sell, the domain names to the Complainant.

 

5. Parties Contentions

A. Complainant:

The case of the Complainant is that it is a company which by itself and by its wholly-owned subsidiaries and associate companies are proprietors of an extensive international portfolio of registered trade marks which incorporate the word "Nandos" either on its own or in association with "Chicken" or "Chickenland". It has been trading internationally as "Nandos" or "Chickenland", or a combination of those names. It has developed, through extensive national and international marketing and advertising campaigns, and through continued exposure in the international media, a considerable international reputation and goodwill in its Nandos name, which is readily and distinctively associated with the Complainantís fast food chicken outlets around the world. Its campaign has earned it 5 nominations and one "London International Advertising Award". The Complainant further claims that the Nandos trading style has been acknowledged on the World Economic Forum Internet web-site in the following terms:

"Nandos is an innovative Ďexperience enhancingí South African quick service restaurant chain specializing in Portuguese-style flame grilled chicken and related products. Nandos currently have over 200 stores in 14 countries stretching from the United Kingdom to Australia and from Israel to Canada and Kenya. The essence of Nandos comprises unique quality food, innovative brand building and a strong identifiable corporate structure."

The Complainantís complaint is that the two domain names complained of, namely <nandos.com> and <nandoschicken.com> are identical to the Complainantís trademarks "Nandos" and "Nandoschickenland". That the fact that the Respondent has registered the domain name <nandoschicken.com> leaves no doubt that the adoption of these names was a carefully planned and calculated step to take unfair advantage of the international repute and goodwill of the Complainantís trademarks. According to the Complainant, there can be no doubt that the public will be confused into believing that these domain names are those of the Complainantís or that the Complainant is associated with or endorses the Respondentís business, which the Complainant denies. The Complainant submits that the domain names complained of are identical to the Nandos trademark in which the Complainant has exclusive rights, whether as registered marks or at common law.

The Complainant further states that it first officially laid claim to the Nandos mark through trademark filings in August 1989 in the Republic of South Africa, i.e. ten years prior to the Respondentís registration of the domain names complained of. According to its case, five years before the Respondentís registration, the Complainant had filed trademark applications in the United States (the country of the Respondent) and received notification of their registration in November 1999. To the Complaint was attached a United States Patent and Trademark Office registration dated November 30, 1999, which gave the date of filing as March 7, 1994, included among its objects as "for prepared chicken" and described its first use and "in commerce" as of August 1, 1999. The Complainant claims that in the light of these facts, its use of the Nandos mark substantially pre-dates the Respondentís claim in the domain names concerned.

According to the Complainant, in response to an e-mail query, the Respondent had replied in October, 1999 as follows:

"I will consider a license arrangement for the use of the name with an option to buy. Please communicate the proposal that you have in regards to the domain names that interest your client vis-ŗ-vis Nandos or Nandoschicken or both."

The Complainant argues that from the above it is evident that the Respondent has no legitimate intention, nor has he ever had such intention, of using the domain names in question; and that the Respondent has not developed any reputation or goodwill of its own in the Nandos name, but rather seeks to gain financially from the Complainantís reputation and goodwill in the name. That the Respondent had the domain names registered with the primary object of selling or renting them to the Complainant. That the Respondent has intentionally and unlawfully registered the Complainantís trademarks as domain names, and secondly, is using the fact as leverage to demand an undue amount of money for their return to the Complainant. These actions, argues the Complainant, were at all relevant times were taken mala fide.

B. Respondent

The response of the Respondent to the Complainantís case is that the domain names in dispute have not been trademarked as such in the U.S.A. The domain names were, according to the Respondent, initially registered in November, 1998. The first and only contact that the Respondent says he has had regarding the domain names was initiated by one Mr. Everet Botha of Digital Mall.com, an ISP (Agent) for the Complainant on October 15, 1999. That this initial contact was made about one year after the domain names were registered. There had been no follow up communication from the Complainant or its ISP or any of its agents or representatives regarding the domain names until the filing of the Complaint with WIPO.

The Respondent states that there had never been an intent, presumably on his part, to act in bad faith, to disrupt any business or to use any form of extortion as alleged by the Complainant. The Respondent avers that he made a good faith effort to respond to the e-mail enquiry by Mr. Botha "in a legitimate business fashion "without any demand of any kind whatsoever." He had no prior knowledge of the Complainantís existence in the market place and especially within the United States. "Nandos is not a very common known name in this part of the world." He claims that his roots are in the southern part of India, a country of great diversity, culture, religion, and ethnicity, where many languages are spoken. "Nandos" in the Kannada Language means "mine" or "ours", and since he was born and raised in that environment, understanding the language and culture, he "found it interesting to apply this word from the Kannada language in the internet space with specific emphasis to the people of Indian origin and in particular the South Indian community in marketing various ethnic foods, clothing, spices, arts, music etc. on the web." His intent was to pursue a web based internet portal for the sub-continent and particularly in the region of South India.

 

6. Discussion and Findings

Under paragraph 15(a) of the Rules the Panel must "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."

Under paragraph 4(a) of the ICANN Policy (the Policy), the Complainant is obliged to prove that:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate rights in respect of the domain name;

(iii) the domain name has been registered and used in bad faith.

According to the ICANN Policy, "In the administrative proceeding, the complainant must prove that each of these three elements are present."

With regard to the first element, namely that the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has an interest, the Complainant, reference is made to the Complainantís claim that it has an portfolio of trademarks which incorporate the word "Nandos" either on its own or in association with "Chicken" or Chickenland"; that it has been trading internationally with these names; and that it has developed a reputation worldwide which associates the name "Nandoís" with chicken prepared according to a certain quality and standard. It should be borne in mind that the right to a trademark does not depend on statute alone. It could be acquired under common law usage. The Claimant has registered trademarks with the names "Nandoís" and "Nandoís Chickenland" in a large number of countries. In other countries, including India, it has a trademark application pending. Several newspaper reports from a number of countries were attached to the Complaint. Most of them mention "Nandoís" in the catering and food retailing business without further specification of the foods in which it deals or other explanation, as if it is a household world. But some of them, such as Australia (which describes the Complainant as "the next generation chicken offer"), South Africa, and United Kingdom, specifically mention chicken as part of the Complainantís retailing portfolio. A lengthy article in the Financial Times of the United Kingdom of July 15, 1998, headed "Rivals in the game of chicken" spoke of the eagerness of the chief executive of Nandoís, "the fast-growing South African chicken restaurant chain to take on powerful US competitors in international markets". The article also mentioned the success of "Nandoís grilled Portuguese-style chicken with peri-peri sauce." And that "the company has opened more than 120 restaurants in South Africa and 60 more in 12 foreign countries, including Australia, Canada, the UK, Israel and Singapore." There is no doubt that the Complainant is well known internationally as a purveyor of prepared chicken.

Exhibit D attached to the Complaint which sets out the list of countries in which the trademarks had been obtained, however, shows that the relevant trademarks which the Complainant has registered worldwide are "Nandoís", which invariably contains an apostrophe, and "Chickenland" or a combination of both. In the United Kingdom, the Complainantís trademark appears as "Nandos Chickenland" without the apostrophe. But in other countries, the normal form is "Nandoís Chickenland".

The Respondent does not deny the existence of the Complainantís trademarks. What he says is that he had no prior knowledge of the Complainantís existence in the market place, especially within the United States. Assuming that this defence were true, it would go to the Respondentís subjective knowledge of the trademarks not to their existence. The trademark "Nandoís" is arguably not identical to the domain name <nandos> registered in the name of the Respondent, in that the domain name has no apostrophe in the word "nandos". But there is no doubt that it is so similar to the trademark "Nandoís" owned by the Complainant, that confusion is bound to occur in the mind of the public who have got used to the trademark. This is especially so because members of the public are unlikely to detect the presence or absence of an apostrophe when they direct their minds to the Complainantís trademarks. In any case, domain names on the Internet do not admit the insertion of apostrophes.

The New Zealand case of Polaroid Corporation v. Hannaford and Burton [1975] 1 NZLR 566 at p. 571 is authority for the statement that allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech. The overall test is one of impression of confusion in the mind of the person making the decision: General Electric Co. v. General Electric Co. Ltd [1972] 1 WLR 729. In the present case, although in writing there might be the slight difference created by the apostrophe, in speech, the two written words are identical. Again, the trademark "Nandos Chickenland" is not identical with the domain name <nandoschicken.com>. But the similarity to the business of the Complainantís business is so close that the use of the word "chicken" in conjunction with the name "Nandos" is also bound to lead to confusion in the minds of the public. Obviously, that is because the main reputation of the Complainantís trademarks is connected with the sale of chicken. For these reasons, the Panel holds that the domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights. Element (i) of the burden which lies upon the Complainant to prove has, therefore, been satisfied.

With regard to the second element of the burden of proof placed on the Complainant by the Rules, namely, that the Respondent has no rights or legitimate rights in respect of the domain name, it is well to bear in mind that domain names being of an international nature, should be considered from an international perspective. The very use in a name with the ".com" designation indicates that the domain name is an international commercial organization. A respondent can have a right to use a domain name in certain circumstances, even if it bears a similarity to a trademark. If that name consists of his own name, for instance, he would be entitled to use it even though it is also a mark to which the Complainant has a right or entitlement. Registration through acquiescence of the original owner would also constitute a defense. Admittedly the obligation to prove that the Respondent has no rights or legitimate interests in respect of the domain name, lies on the Complainant. But it would be of assistance to a Panel deciding the issue if the Respondent were to give an indication of the basis of his claim of right when that is denied by the Complainant. After all, knowledge of that fact is peculiarly within the Respondentís knowledge. In giving this evidence or information, the Respondent could, as indicated in paragraph 4(c) of the Policy, show any of the following, that:

(a) before any notice of the dispute was issued to him, he had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name, in connection with a bona fide offering of goods or services; or

(b) as an individual, business or other organization, he has been commonly known by the domain name, even if he had acquired no trademark or service mark rights; or

(c) he was making a noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark in issue.

The Respondent has not been able to produce any evidence of this kind. He does not claim that <nandos.com> or <nandoschicken.com> has any bearing on his name; nor does he claim that he had used or made any demonstrable preparations to use, the domain names in dispute, or any name corresponding to the international use with which the names are associated. The evidence clearly indicates that he did not register the domain names with the acquiescence of the Complainant. The only claim of right which the Respondent makes is that the word "Nandos" in an Indian language means "mine" or "ours". The effect which the registration of the domain names is performing, assuming that the claim of the Respondent is true, is to block anybodyís else registering or using them internationally even though he is the owner of the same or a similar trademark. Protection ought to be given to persons who have interests in trademarks or service marks and are genuinely trading with those marks as against those who wish to make a profit by cybersquatting or passing off through domain names goods or services as the goods or services of the genuine trademark holder. The Panel is of the view that the Respondent has no rights or legitimate rights to the domain names in dispute.

With regard to the third element of the burden which the Complainant has to discharge, namely, that the domain name in dispute had been registered and used in bad faith, the most damaging evidence against the Respondent is the fact that after obtaining the right to the domain name <nandos.com>, he himself registered the domain name <nandoschicken.com>. He claims that he obtained that domain name for the purpose of his future business in India. If it was merely a coincidence that he obtained the domain name <nandos.com>, when he had never heard of Nandoís, the trademark of the company with the international reputation for food retailing, especially in packaged chicken, it is extraordinary that he should, again as a coincidence, register the domain name <nandoschicken.com>. The registration of <nandoschicken.com> is strong evidence that the Respondent had knowledge of the business operations of the holder of the "Nandoís" and "Nandoís Chickenland" trademarks. Registration or holding of both domain names by the Respondent, in the view of the Panel, clearly shows that he intended either to sell the names to the Complainant or to a third person who would do so, or that he wanted to engage in a business which would associate its products with those of the Complainantís trademarks.

In this respect, the decision of the English Court of Appeal in British Telecommunications plc v. One in a Million Ltd [1998] 4 All ER 476, is instructive. Unlike this case, it was a case which dealt with a number of plaintiffs and defendants who registered the business names of the plaintiffs as domain names with the object of selling them. As there were several plaintiffs whose names had been registered as domain names and the defendants were admittedly in the business of selling such domain names to third persons the illegal trading in business names was indisputable. But even though the particular case before this Panel affects only one Respondent who had two registered domain names which the Complainant claims are objectionable, the principles laid down in that case appear to the Panel to be relevant. The English Court of Appeal considered the plaintiffsí case both on the ground of infringement of trademark and of passing off. On the infringement of trademark point, Aldous LJ in whose judgement Swinton Thomas and Stuart-Smith LJJ concurred, held that the purpose of the defendantsí conduct was to indicate a connection with the plaintiffsí businesses and to take advantage of their reputation represented by the trademarks in a manner which was detrimental to the plaintiffsí reputation. On the passing off point, the Court held that mere registration of the domain names was enough to establish passing off, as it made a representation to persons consulting the register that there was some connection between the owner of the goodwill and the person registering the mark, when this was not the case.

In this decision, the word "use" has been employed in more than one sense. There is first the sense arising from the claim of the Complainant that there had been no indication that the Respondent had ever "used" the registered domain names. That averment led to a certain finding by the Panel in which the word "use" appears limited to the meaning advanced in that connection. Then there is the requirement by the Rules that the Complainant must show that the domain name in dispute has been registered and "used" in bad faith. The Panel is of the opinion that the Complainant employed the word "use" in the former example given in the specific sense of active trading or exploitation or employment of the domain names. In this sense, the Complainantís claim is that there is no indication of such user. And the Panel agrees with the Complainant on that point. The meaning of the word "use" in the third element of the burden of proof incumbent upon the Complainant appears to have a broader meaning, going beyond active exploitation of an article or a product. That sense comes out clearly in the definition of "use" in the Oxford English Dictionary, which says that "use" means: "take, hold, or deploy (something) as a means of accomplishing a purpose or achieving a result". What the Respondent has so far done is to hold on to the domain names until an objective which he has, is attained. That objective is, in the finding of the Panel, in bad faith. In doing so, the Respondent has "used" the domain names in the sense of the third element of the Rules.

Indeed the documents show that when an enquiry was made of the persons who originally registered the domain name <nandos.com>, the answer was their asking for R 25 000.00 (twenty five thousand rands), with the observation that "MacDonalds sold for USD $ 1 million, Pizza Hut USD $ 700,000 etc". And when an enquiry was made on behalf of the Complainant in respect of the two domain names, <nandos.com> and <nandoschicken.com>, held by the Respondent, the latterís response was that he would consider a license arrangement for the use of the names with an option to buy; and asked the Complainantís agent to "Please communicate the proposal that you [the agent] have in regards to the domain names that interest your client "vis-ŗ-vis Nandos or Nandoschicken or both."

Paragraph 4(b)(i) of the Policy provides that:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."

The evidence on this is in the opinion of the Panel conclusive. The Panel, therefore, finds, that the domain names had been registered and are held mala fide by the Respondent.

 

7. Decision

For the reasons given above, the Panel finds that the Complainant has trademarks to which the Respondentís registered domain names are identical or confusingly similar; that the Respondent has no rights or legitimate rights in respect of the domain names; and that the domain names were registered and used mala fide. The Complainant has asked that the domain names should be transferred to the Complainant. The Panel grants this request and orders that the said domain names, <nandos.com> and <nandoschicken.com> be transferred to the Complainant.

 


 

Justice Austin Amissah
Presiding Panelist

Dated: May 23, 2000