WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dishoom Limited v. WhoisGuard, Inc / Gabriella Garlo
Case No. D2020-3442
1. The Parties
The Complainant is Dishoom Limited, United Kingdom, represented by Dechert, United Kingdom.
The Respondent is WhoisGuard, Inc., Panama / Gabriella Garlo, Brazil.
2. The Domain Names and Registrar
The disputed domain names <dishoom.recipes> and <dishoom.restaurant> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 31, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021.
The Center appointed Carol Anne Been as the sole panelist in this matter on February 10, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant developed a unique restaurant and bar concept based on traditional cafes in Bombay (Mumbai), India, that it launched in 2010. The Complainant now operates multiple locations of its restaurant and bar concept in the United Kingdom. The Complainant’s restaurants have been listed repeatedly in the Michelin Guide and the Good Food Guide, and have received other awards and media coverage in at least the United Kingdom and India. The Complainant also has used its mark in the title of a popular cookbook.
The Complainant operates under the trademark DISHOOM, in which it owns the rights and good will, and benefits from a substantial reputation. The Complainant owns registrations for its DISHOOM mark in, among other jurisdictions, the United Kingdom since 2008 (under the registration number 2468689 and registered on March 7, 2008), European Union since 2009, and Brazil since 2017. The Complainant operates its website at the domain name <dishoom.com>.
The disputed domain names were registered on November 23, 2020. The disputed domain names have been used to host a directory of pay-per-click (“PPC”) links to sites for restaurants and food delivery services similar to the services of the Complainant.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. The only differences between the disputed domain names and the Complainant’s mark are the addition of the Top-Level Domains (“TLD”), “.recipes” and “.restaurant”, which reinforce a connection to the Complainant.
The Complainant alleges it has not licensed or otherwise permitted or authorized the Respondent to use its mark, and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names.
The Complainant alleges the Respondent would have been aware of the Complainant’s mark when the disputed domain names were registered, and that the disputed domain names were registered and are used in bad faith for commercial gain by intentionally misleading consumers seeking the Complainant or its products or services to divert them to unrelated sites for similar products and services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark rights in the mark DISHOOM in the United Kingdom since 2008, the European Union since 2009, and Brazil (where the Respondent is located) since 2017. The Complainant’s rights in its mark predate registration of the disputed domain names.
The disputed domain names use the entire DISHOOM mark of the Complainant, with no additional elements, thus incorporating the Complainant’s mark in its entirety without modification. The only differences of the disputed domain names from the Complainant’s mark is found in the TLD of the disputed domain names. TLDs, “.recipes” and “.restaurant”, being mere technical requirements, do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark, See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, providing: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
The Panel finds the disputed domain names are confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its
mark or to register domain names incorporating its mark.
The Respondent appears to use the disputed domain names for commercial purposes and monetary gain through PPC links which generally is not a legitimate or fair use.
The Respondent had the opportunity to explain any claim to legitimate use of the disputed domain names, but did not respond to the complaint. Therefore, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which the Respondent has not rebutted.
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain names ten years after the Complainant began use of its mark, and several years after the Complainant obtained national registrations for its mark, including in the United Kingdom, European Union and Brazil. The disputed domain names were registered after the Complainant had achieved a broad reputation for its mark, restaurants and cookbook, including through awards and extensive media coverage. The Complainant’s rights in its mark could have been discovered through a trademark search or an Internet search. In addition, the Panel is of the opinion that the use of TLDs “.recipes” and “.restaurant” in the disputed domain names in fact reinforces a finding of bad faith.
Due to the broad reputation of the Complainant and the uniqueness of its mark, it is reasonable to infer that the Respondent knew of the Complainant when the disputed domain names were registered.
The use of the disputed domain names to host a directory of PPC links to sites for restaurants and food delivery services similar to the Complainant’s services indicates use of the disputed domain names to misleadingly divert traffic intended for the Complainant to the Respondent’s websites for commercial gain.
The Respondent had the opportunity to respond to the Complaint, but failed to do so. The Respondent’s failure to rebut the case asserted by the Complainant indicates the lack of any other plausible explanation.
The Panel finds the Respondent registered and is using the disputed domain names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <dishoom.recipes> and <dishoom.restaurant>, be transferred to the Complainant.
Carol Anne Been
Date: February 23, 2021