WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elbaik Food Systems Co. S.A. v. Mr. Syed Bilal Ahmed / Kushal Gupta, Dharmishi Technologies
Case No. D2021-2620
1. The Parties
The Complainant is Elbaik Food Systems Co. S.A., Luxembourg, represented by Anand & Anand, India.
The Respondent is Mr. Syed Bilal Ahmed / Kushal Gupta, Dharmishi Technologies, India.
2. The Domain Name and Registrar
The disputed domain name <al-baik.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2021 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 August 25, 2021.
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 September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. On September 8, 2021, the Respondent sent an email. The Response was filed with the Center on September 27, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 22, 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 is a company organized under the laws of Luxembourg, having its registered office in Luxembourg. Its principal place of business is Jeddah, Saudi Arabia, where it commenced trading in 1974, and it now operates a franchised chain of more than 125 high volume restaurants in various global locations including Egypt, Bahrain, Indonesia, the Philippines, and the United Arab Emirates. The Complainant promotes its restaurant business by way of its website at “www.albaik.com”, the corresponding domain name for which was registered on December 7, 2001. The Complainant indicates that millions of pilgrims from around the world have been introduced to its brand by virtue of its outlets at the entrance to the city of Makkah al-Mukarramah (popularly known as “Mecca”). The first such outlet was launched in 1990 and was followed by another two in the same district later in the 1990s. The Complainant claims that its chain is among the largest production restaurants in the world, having the capacity to serve up to 250,000 customers per day. The Complainant claims that it is well-known among Indian visitors to the places where its restaurants are based and provides evidence that it has been receiving requests for franchises of its restaurant brand from Indian residents since at least June 25, 2015.
The Complainant owns a variety of registered trademarks in different jurisdictions including in India, where the Respondent is based. For example, the Complainant owns Indian Registered Trademark no. 778166 for a figurative mark consisting of the word ELBAIK with a hat device, with application date of November 13, 1997. The Complainant is also the owner of Indian Registered Trademark no. 778169 for a figurative mark consisting of a cartoon chicken tipping its hat above wording in Arabic which the Complainant states transliterates as ALBAIK or ELBAIK, with identical pronunciation, with application date of November 13, 1997. The Complainant also owns a variety of registered trademarks for the figurative mark ALBAIK in a stylized script featuring the word in red on a white background, including for example, International Registered Trademark no. 961172, registered on March 11, 2008 and designated in respect of Bahrain, Morocco, Turkey, and the United States of America.
The Complainant produces a “Trademark IP Sublicense Agreement” dated June 4, 2017 between its sub-licensee and a third party whereby a restaurant bearing the Complainant’s ALBAIK mark was to be established in Delhi, India. The Complainant says that said restaurant business was duly established but was not continued following the present pandemic. The Complainant is now relaunching its services in India.
The disputed domain name was registered on March 7, 2009. According to screenshots produced by the Complainant, the website associated with the disputed domain name is the business website for the
“AL-BAIK.COM restaurant chain” with a listed “Head Office” in Lucknow, Uttar Pradesh, a “Regional Office” in Mumbai, and an “International Office” in the United Arab Emirates. Said website features a logo with a waving cartoon chicken, various promotional slogans such as “Experience The Taste Of Middle East”, “THE MOST FAVORITE LARGEST FOOD CHAIN IN INDIA / ABROAD” and notes in a statement from the founder of the business that “[…] AL-BAIK.COM story was started in 2009 when I opened the first restaurant in Lucknow, Uttar Pradesh […] Today I am proud to say there are more than 99 AL-BAIK.COM restaurants, and with a commitment to being wherever our customers need us we shall continue to expand”. Said website offers franchising opportunities to interested parties. In its “tag cloud”, apparently being a list of tags for search engine indexing purposes, said website features phrases such as “albaik franchise”, “albaik official”, “original albaik”, and “albaik head office”.
The Respondent asserts that it is Belal Ahmed, Proprietor of M/s AL-BAIK.COM and that the holder of the disputed domain name is the person who re-developed and re-designed the current website. The Respondent produces a screenshot indicating that the website at the disputed domain name currently contains the following disclaimer: “AL-BAIK.COM is not a part of and no where [sic] associated with ELBAIK Food Systems Company S.A. All the cuisines prepared at AL-BAIK.COM restaurants are unique and completely different from those offered by ELBAIK Food Systems Company S.A.”
Entries from the Internet Archive “Wayback Machine” for the disputed domain name reviewed by the Panel show that it has displayed pay-per-click (“PPC”) advertising and has been offered for sale through an aftermarket domain name sales company since as early as October 7, 2007. This use continued through 2009, when the Respondent claims to have acquired the disputed domain name, and beyond. While the PPC advertising itself has not been archived, an entry from February 3, 2011 shows that the related searches against the disputed domain name were for restaurants and fast food. The last screenshot in which the disputed domain name was hosted on PPC advertising and offered for sale was February 10, 2020. The next screenshot, dated November 3, 2020, shows the first recorded instance of the Respondent’s website for its AL-BAIK.COM fast food business.
A screenshot provided by the Complainant of the “About Us” section of the website associated with the disputed domain name dated July 23, 2021 shows a statement from the Respondent which says that the Respondent’s business was founded in 2009, when the first restaurant was opened in Lucknow, Uttar Pradesh. The corresponding archived screenshot from January 16, 2021, reviewed by the Panel, shows an identical statement from the Respondent but with the year of opening of the first restaurant in Lucknow given as 2017.
A screenshot of the Respondent’s “Instagram” page produced by the Complainant promotes the launch of the website associated with the disputed domain name on October 15, 2020. The Respondent accuses the Complainant of having manipulated this in an unspecified manner but the Parties appear to agree as to the accuracy of the text of the launch promotion and its date. A screenshot of a “Facebook” page which bears to be that of the Respondent’s business shows in its description a claim that the business was started in 2017. Said “Facebook” page itself shows a date of creation of February 4, 2020. Although the Respondent denies any connection to the “Facebook” page, and accuses the Complainant of falsifying this, the Panel notes that the telephone number and website address displayed there correspond to the details on the website associated with the disputed domain name. Various other details also match, including, for example, a warning to beware of duplicate websites with similar names.
5. Parties’ Contentions
The Panel has summarized the Parties’ contentions below. In the interests of economy, some of the Respondent’s contentions have been combined and organized by the Panel under the three elements of the Policy.
The Complainant contends as follows:
Identical or confusingly similar
The disputed domain name is virtually identical to the Complainant’s mark, in which the Complainant has statutory and unregistered rights. The hyphen is immaterial. The Complainant’s mark has been declared as a well-known mark in multiple decisions by the High Court of Malaya, Malaysia. It is an established practice under the Policy that a domain name consisting of a well-known trademark in its entirety shall be considered as confusingly similar to such mark.
Rights or legitimate interests
The Complainant has overwhelming statutory and unregistered rights in the ALBAIK trademark. It has not licensed or otherwise permitted the Respondent to use this or to apply for a corresponding domain name. The disputed domain name was registered by the Respondent to make unjust commercial gains and to trade on the fame and recognition of the Complainant’s mark to cause initial interest confusion and bait Internet users to access the Respondent’s website. There could be no plausible explanation for the use of the disputed domain name by the Respondent except for riding on the goodwill of the Complainant.
Registered and used in bad faith
The Respondent is aware of the Complainant’s substantial reputation and goodwill. The Respondent’s emphasis on “The Taste of Middle East” renders it similar to the Complainant and targets the Complainant’s goodwill. The Respondent uses identical tags in its “Tag Cloud” to redirect unwary users interested in the Complainant’s franchise to the website associated with the disputed domain name. The Respondent’s site features on a Google search for “albaik franchise in India”. The Complainant has filed lawsuits in India concerning third parties in which its statutory and unregistered trademark rights have been recognized by the Indian Courts. The Complainant would be held responsible for any loss caused to unwary Internet users by the Respondent’s activities. The Respondent may attempt to sell the disputed domain name to the Complainant or to a third party at an exorbitant price.
There is a general proposition which has been upheld in numerous cases under the Policy that the registration of a domain name incorporating a well-known mark of a complainant constitutes bad faith. The Complainant has continuously protected its trademark by various adjudicating forums, including in India.
The Respondent contends as follows:
The Complaint is based on a false and baseless story of cybersquatting which is devoid of merit. The Complainant has no rights in the disputed domain name and the Respondent has rights acquired from long use of over 12 years. The disputed domain name was created in good faith without knowledge of the Complainant’s rights. The Respondent has run restaurants and cafés in India since 2009 with more than 20 franchised outlets. The trademark AL-BAIK.COM and corresponding domain name are known and used by a large variety of customers due to the Respondent’s immense and enviable goodwill. The Respondent’s franchisees are listed on its website. The Respondent displays a notice of non-association with the Complainant at the top of its website. The Complainant has not approached this forum with clean hands and its Complaint is based on assumptions and presumptions having a complete denial of the Rules, natural justice and corresponding trademark and domain name law.
The Respondent has continuously used the name “AL-BAIK.COM” at least since 2002 and finally registered the disputed domain name on March 7, 2009 and started extensive promotion of its business, including to franchisees, at that point. The Respondent has its own franchisees across India in the name of its mark “AL-BAIK.COM”.
Identical or confusingly similar
The disputed domain name does not make use of the Complainant’s mark. The Complainant does not have overwhelming statutory or unregistered rights with respect to the ALBAIK trademark. Said mark is not identical to the disputed domain name. The disputed domain name does not use the Complainant’s mark as a dominant and essential feature. It is denied that the Complainant has a trademark registration in India.
Rights or legitimate interests
The Complainant’s submissions are denied. The Respondent has been running restaurants and cafes through multiple retail outlets and over 20 franchised outlets across India in the name of “AL-BAIK.COM” for more than 20 years and, for more than 12 years (since March 7, 2009), via the disputed domain name. The Respondent was established much earlier than the Complainant’s arrival in India. The Respondent is the first person to introduce the name “AL-BAIK.COM” in India and is a pioneer in its establishment and in the building of goodwill in the corresponding business. The Respondent has invested a substantial amount in promoting, advertising and publicizing same. The Respondent has earned immense goodwill across India under the AL-BAIK.COM mark, and the disputed domain name, which is known and used by a large base of customers and considered to be associated with the Respondent only and no-one else. The livelihood of 100 people depends upon the Respondent’s trademark and the disputed domain name. The Respondent has around 30 outlets across the major cities of India including its franchisees. The Respondent’s uninterrupted, continuous and extensive use of the disputed domain name over 12 years has vested it with irrevocable rights, title, and legitimate interests.
Registered and used in bad faith
The Complainant’s submissions are denied in their entirety. The Respondent registered the disputed domain name in good faith. The Respondent has all rights in the disputed domain name acquired from a long use thereof, of over 12 years’ standing. The disputed domain name was created without knowledge of the Complainant. The Respondent’s business dates back to at least 2009. The tag cloud “The Taste of Middle East” does not associate the Respondent’s business to the Complainant’s as the Complainant is not legally authorized to represent the taste or recipes of Middle Eastern countries. The tag cloud did not direct the public who are actually searching for the Complainant’s business to the disputed domain name. The Complainant is not operating its business in India, unlike the Respondent which operates in India only and has no desire to be associated with the Complainant.
The Respondent has not concealed its identity but has mentioned its name, photograph, contact details, and background on the website associated with the disputed domain name. With regard to the Respondent’s Instagram post of the launch of its website dated October 15, 2020, the Respondent registered the disputed domain name on March 7, 2009 with a sole mala fide intent to block it from unauthorized usage in the future. The Instagram page as produced by the Complainant appears to have been tampered with and manipulated by the Complainant. It is denied that the Respondent stated on a Facebook page that it had started its business in 2017. The Respondent has no knowledge of or information about the existence of the Facebook page, which appears to have been tampered with and manipulated by the Complainant.
The Respondent did not prevent the Complainant reflecting its mark in a domain name, nor disrupted the Complainant’s business, as the Complainant has no business operations in India or any kind of trademark protection there.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary matter: Identity of Respondent
The Rules define the respondent as “the holder of a domain name registration against which a complaint is initiated”. In the present matter case, the Registrar has disclosed Kushal Gupta, Dharmishi Technologies as the holder of the disputed domain name. The Response was prepared not by or on behalf of that entity but on behalf of Mr. Syed Bilal Ahmad, Proprietor of M/s AL-BAIK.COM. The Response states that the present holder of the disputed domain name is the web developer for the latter entity.
The Panel notes that the website associated with the disputed domain name bears to be that of a business named AL-BAIK.COM. Said website contains a statement from “Mr. Syed Bilal Ahmad, Founder,
AL-BAIK.COM”. In these circumstances, the Panel considers that there is a sufficient nexus between the disputed domain name and Mr. Syed Bilal Ahmad, such that the present holder of the disputed domain name may be considered to be a mere proxy for this person. In accordance with usual practice, the holder of the disputed domain name and its chosen privacy service will continue to be named as Respondents in this Decision but the Panel will treat Mr. Syed Bilal Ahmad as the principal Respondent and references to “the Respondent” in the remainder of this Decision refer only to this person.
B. Preliminary matter: Non-compliant Response
In terms of paragraph 11(b) of the Supplemental Rules, the word limit under paragraph 5(c)(i) of the Rules, being the portion of the Response which responds specifically to the statements and allegations contained in the Complaint, is 5,000 words. The factual and legal grounds of the Response (consisting of the Respondent’s numbered paragraphs 16 to 40 inclusive) amount to 5,617 words. If the lengthy preamble to the Response is also included in the word count, the Response amounts to just under 7,000 words. On both measures, the Response appears to the Panel to be non-compliant with the word limit.
The Panel notes that the substantive portion of the Response is however relatively limited in extent. The reason why the Response has exceeded the word count is that the Respondent has chosen to deny the submissions in the Complaint individually by repeating each of these in turn accompanied by a specific denial in each case. The Panel has endeavored to extract from the Response all of the substantive portions which do not amount to a repetition of the Complaint. Had the Respondent submitted the Response in the latter format, not only would it have been considerably easier to follow, but it would also likely have been compliant with the word limit in the Supplemental Rules.
In the particular circumstances of this case, therefore, the Panel determines that the Response shall be admitted. In so doing, the Panel has had regard to paragraph 10(b) of the Rules, in terms of which the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
C. Identical or Confusingly Similar
This aspect of the inquiry is handled in two stages. First, the Panel must determine whether the Complainant has UDRP-relevant rights in a trademark, whether registered or unregistered. Secondly, any such trademark is compared to the disputed domain name, typically excluding the generic Top-Level Domain (“gTLD”), in a straightforward side-by-side analysis, in order to assess identity or confusing similarity.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its Indian trademarks and in the International trademark as set out in the factual background section above. The Respondent has denied that the Complainant possesses such marks but provides no substantive reasoning for such denial. The Panel has confirmed that the marks are ex facie valid and has verified their status on the relative official websites.1
Taking the Complainant’s International mark as the example closest in appearance to the disputed domain name, the Panel first notes that this is a figurative mark containing both a design and word element. Design elements are largely disregarded for the purpose of assessing identity or confusing similarity under the Policy. However, where the design elements comprise the dominant portion of the relevant mark, such that they effectively overtake the textual elements in prominence, the trademark registration may be held to be insufficient by itself to support standing under the Policy (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the Panel is satisfied that the word element is capable of being separated from the design element, leaving the term “albaik” to be compared to “al-baik” in the second level of the disputed domain name. Thus, the only difference is the addition of the hyphen in the disputed domain name. The Panel is satisfied that said addition is of no distinguishing value and may be discounted.
The Complainant also claims an unregistered trademark in the mark ALBAIK based on its longstanding use in the Complainant’s domain name <albaik.com>, registered on December 7, 2001 and as an identifier of tis various restaurants operating since 1974, whether transliterated from Arabic or as represented in Latin script. The Complainant produces media articles which demonstrate that it is known as ALBAIK (in Latin script) notwithstanding the fact that it also has registered marks for the term “elbaik” to cover what it indicates are two possible identically pronounced alternative transliterations of its name from Arabic. In the absence of substantive challenge, the Panel accepts the Complainant’s submissions as to the transliteration and pronunciation of its mark. The Complainant goes on to affirm the status of the ALBAIK trademark with reference to the court decisions in its favor which it has produced, arising from the courts of both India and Malaysia. The Complainant’s media coverage also provides support for submissions that its ALBAIK mark has been viewed by millions of pilgrims attending the city of Mecca annually since its first restaurant was launched there in the early 1990s.
The Respondent does not mount any material challenge to the Complainant’s averments or evidence on this topic and simply makes a general denial regarding identity and confusing similarity. The Respondent neither offers its own assessment, nor puts forward any alternative method of comparison. The Panel is satisfied on the basis of the present record that the Respondent has established a secondary meaning in the term ALBAIK, which has become a distinctive identifier that consumers associate with the Complainant’s goods and services (see section 1.3 of the WIPO Overview 3.0). The Complainant’s claim to an unregistered trademark in this term is therefore made out.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainant notes that it has not licensed or permitted the Respondent to use its ALBAIK trademark or to apply for a corresponding domain name. The Complainant adds that the Respondent is trading off the fame and recognition of the Complainant’s mark and that there is no plausible explanation other than that the Respondent is riding on the goodwill of the Complainant. The Complainant also produces evidence supporting the extent of its business, including media recognition of said ALBAIK mark and its multinational activities, including its highly prominent outlets whereby the mark is likely to be exposed to a substantial number of Islamic pilgrims undertaking the Hajj, themselves arriving from multiple different countries, including India, where the Respondent is based. The Complainant also indicates, via a list of its various trademarks, that it has interests across the Middle East, including in the United Arab Emirates, where the Respondent claims to have its international office. In these circumstances, the Panel finds that the Complainant has established the requisite prima facie case. The burden of production shifts to the Respondent to bring forward relevant evidence of its rights or legitimate interests in the disputed domain name.
As noted above, the Respondent has produced a lengthy Response, the bulk of which consists of bare denials of the Complainant’s case. Besides these, the Panel has identified that the general thrust of the Respondent’s case is that the Respondent established its business in India, named “AL-BAIK.COM”, before the Complainant had any interests in that country, and notably without knowledge of the Complainant’s mark. This is effectively a case that the Respondent has rights and legitimate interests in terms of paragraph 4(c)(i) of the Policy. There are, however, a number of problems with the Respondent’s case. In the first place, the Respondent asserts that it has continuously used the name “AL-BAIK.COM” at least since 2002 (and in other parts of the Response says “for more than 20 years”) and finally registered the disputed domain name on March 7, 2009. Given that the business name consists solely of a domain name, this seems an extremely unlikely scenario to the Panel.
The Respondent would have the Panel believe that it established a business named “AL-BAIK.COM” and operated it for some seven years without having secured the corresponding domain name, only finally registering this in March 2009. Even if the Panel had been inclined to give credence to this assertion, the Respondent has produced absolutely no evidence whatsoever of the date of establishment of its business or its first use of the “AL-BAIK.COM” name. It merely makes a bare assertion in this respect. Furthermore, the statement of the Respondent which appears on the website associated with the disputed domain name contradicts such assertion, given that it says that the Respondent’s business was founded in 2009 (not 2002), when the first restaurant was opened in Lucknow, Uttar Pradesh. The Respondent makes no attempt to reconcile these two alternative narratives.
The date when the Respondent began to trade in connection with the disputed domain name has also been called into question in the Complaint, given that the Complainant asserts with reference to the Respondent’s “Instagram” page and a “Facebook” page also apparently associated with the Respondent (although the Respondent denies any connection to the latter) that the launch of the website for the disputed domain name took place in October 2020. Having reviewed the social media evidence supplied by the Complainant, the Panel agrees that this is the only reasonable inference to be made. It is significant that “Facebook” pages of this kind generally display a creation date, and in this case, that date is given as February 4, 2020. Faced with this evidence, the Respondent simply accuses the Complainant of having falsified it. As noted above, the page contains the details of the Respondent’s business including its telephone number and the address of its website, and the Respondent can only be suggesting that the Complainant created the entirety of this page in order to supplement its case.
It occurred to the Panel, particularly as the question of the launch date of the Respondent’s business had already been placed in issue by the terms of the Complaint and associated evidence, that the matter could be resolved straightforwardly by an examination of the website history for the Respondent’s website available on the Internet Archive “Wayback Machine”. Subject to certain non-material technical limitations, any such entries would be a snapshot of the website on the given date and would be immune to any alleged falsification by the Complainant. The Panel therefore reviewed a selection of the entries for the corresponding website, using the disputed domain name, spanning the years 2003 to 2021.1 The Panel noted the results of its review in the factual background section above.
In short, the archive entries affirm the Complainant’s case and do not support that of the Respondent. In any event, the Respondent’s case stretches credulity to breaking point in the Panel’s opinion. The Respondent would have the Panel believe that it created a name for its business akin to a domain name in 2002. It did not buy that domain name at that time, although from at least May 23, 2003, the disputed domain name was listed for sale on the “Sedo” platform. Ultimately, the Respondent says that it acquired the disputed domain name in March 2009. Yet, rather than develop this into even a holding page for its restaurant business, it continued with the use adopted by the previous registrant, that is, to offer the domain name for sale and to point it to PPC advertising. Indeed, based upon the related searches still visible in the screenshot from February 2011, the website associated with the disputed domain name would most probably have pointed visitors to the Respondent’s competitors in the restaurant trade. That the Respondent would have allowed this to happen is simply not credible.
Ultimately, the Internet Archive shows that the disputed domain name was hosted on PPC advertising and offered for sale until at least February 10, 2020. The next screenshot, from November 3, 2020, shows the appearance of the first instance of the Respondent’s website. Given the fact that the Internet Archive tends to take only periodic screenshots, this date is entirely consistent with the date of launch of the website on the Respondent’s “Instagram” page as produced by the Complainant. Importantly, the Panel notes that the archived pages of the Respondent’s website themselves show a further inconsistency in the alleged date of founding of the Respondent’s business. The Respondent’s personal statement on its website originally gave the year of opening of the first restaurant in Lucknow as 2017. Only later was this amended to 2009. Had this been the only inconsistency, the Panel might have put it down to a typographical error during in the construction of the website. However, the date appears in three separate places, so is unlikely to be accidental. Taken together with the other inconsistencies in the Respondent’s submissions and the lack of any supporting evidence, which ought to have been readily available to anyone who had run a business for some 20 years, the Panel does not accept the Respondent’s case that it had a pre-existing business before the Complainant commenced activities in India.
Given that the inconsistencies in its assertions tend to undermine the Respondent’s case as a whole, the Panel considers it unlikely that the Respondent came upon the name “AL-BAIK.COM” independently of the Complainant’s ALBAIK or ELBAIK trademarks. There is a plausible case on the record for how the Complainant’s marks would have come to the Respondent’s attention. In the first place, there is the fact that the Complainant’s business is known to many pilgrims across the world by virtue of its presence in Mecca. In the second place, there is the fact that the Complainant first registered its ELBAIK trademarks in India in 1997. In the third place, there is evidence dating at least from as early as 2015 that the Complainant has received multiple inquiries from Indian businesses about the prospect of obtaining a franchise. In the fourth place, there is evidence that the Complainant was founded and remains highly active in the Middle East, while the Respondent admits to a connection by way of its “International Office” to the United Arab Emirates. In the fifth place, there is the fact that the Complainant had an active presence in India through its trademark sub-license agreement between 2017 and 2020. In response to the weight of this material, the Respondent brings forth nothing more than bare denials.
In all of these circumstances, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case on this topic. The Complainant has therefore carried its burden in terms of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The essence of the Complainant’s submissions is that the Respondent created a website using the disputed domain name in order to divert Internet users and, in particular, interested potential franchisees, from the Complainant’s business to the Respondent’s business. This is effectively a submission in terms of paragraph 4(b)(iv) of the Policy. In the present case, the issue of the Respondent’s likely knowledge of the Complainant’s ALBAIK trademark has been dealt with in the preceding section on rights and legitimate interests. The Panel has found that there is no evidence before it that the Respondent had a pre-existing business named “AL-BAIK.COM” before the launch of the website at the disputed domain name in late 2020. Likewise, no explanation was tendered by the Respondent as to how it came upon the name “AL-BAIK.COM” independently of the Complainant’s pre-existing registered and unregistered trademarks. It is significant in particular that the Complainant has operated under the domain name <albaik.com> since 2001 and this seems to the Panel to be the most likely reason for the Respondent’s adoption of the disputed domain name. The cloud tags in the Respondent’s website also appear to betray a knowledge of the Complainant’s marks. It is very unlikely that a business seeking to rely on the presence of a hyphen in its domain name would leave this out in tags intended for search engine optimization unless, in this particular case, it was deliberately referencing the Complainant’s mark. Furthermore, the inconsistencies in the Respondent’s case, as discussed in the preceding section, also suggest that its allegations of a pre-existing business and, more importantly, an independent derivation of its business name, are lacking in credibility.
The Respondent seeks to escape the thrust of the Policy by way of a disclaimer which it has placed on the top of its website. This disclaimer is not shown either on the screenshot produced by the Complainant or the archived entries viewed by the Panel. In these circumstances, the Panel considers that it is likely to be an ex post facto addition and, as such, is of no evidential value. In any event, as noted in section 3.7 of the WIPO Overview 3.0, where the overall circumstances of a case point to the Respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. On the contrary, the Panel considers that this addition to the Respondent’s website amounts to an admission as to the fact that users may be confused, as does the included statement “Beware of any duplicate websites trying to sell franchise [sic] with similar names”.
Had the Respondent supplemented the case which it asserted on the present record with suitable dated examples of independent evidence, for example, covering the operations and extent of its business from 2002, the acquisition date of the disputed domain name, the use of the disputed domain name between the acquisition date and the launch of the current website, and a plausible explanation for how it came up with its business name, the Panel’s conclusions might have been different. However, given that the Response largely puts forward a collection of bare denials and assertions, unsupported by evidence (other than of the recently posted disclaimer) and contains factual inconsistencies in the sequence of events which are impossible to reconcile, the Panel considers that the Respondent has failed to put forward a credible defense to the Complainant’s submissions that the disputed domain name was registered with the Complainant in mind and with intent to target its ALBAIK trademark.
In light of the above analysis, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
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 name <al-baik.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: November 5, 2021
1 The Panel visited the websites of the WIPO Global Brand Database at “www.wipo.int” and of Intellectual Property India at “www.ipindiaonline.gov.in” and searched the Complainant’s Indian and International marks noted in the factual background section to confirm their status on the official registers by way of limited factual research into matters of public record (on this topic, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
2 See previous footnote regarding limited factual research conducted by the Panel.