WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elbaik Food Systems Co. S.A. v. Withheld for Privacy Purposes, Privacy Services Provided by Withheld for Privacy ehf / Kushal Gupta, Dharmishi Technologies
Case No. D2021-2622
1. The Parties
The Complainant is Elbaik Food Systems Co. S.A., Luxembourg, represented by Anand & Anand, India.
The Respondent is Withheld for Privacy Purposes, Privacy Services Provided by Withheld for Privacy ehf, Iceland / Kushal Gupta, Dharmishi Technologies, India, represented by Locus Justica, India.
2. The Domain Name and Registrar
The disputed domain name <albaiks.com> (the “Domain Name”) is registered with NameCheap, Inc. (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 Domain Name. On August 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 19, 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 23, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent sent several emails to the Center on September 7, 2021, September 8, 2021, and September 13, 2021. Further to a communication received on October 11, 2021, from the Complainant, the Center notified the Parties that the administrative proceeding was suspended until November 10, 2021 for purposes of settlement discussions concerning the Domain Name. On November 17, 2021, the Complainant sent an email requesting to reinstitute the proceeding. The proceeding was therefore reinstituted as of November 18, 2021. The Response was filed with the Center on November 27, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 25, 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, with a registered office in the city of Luxembourg. It is headquartered in Jeddah, Saudi Arabia, where its predecessor commenced trading in 1974 as a fast-food restaurant selling broasted chicken. The Complainant now operates a franchised chain of more than 125 high-volume restaurants in Saudi Arabia, Egypt, Bahrain, Indonesia, the Philippines, and the United Arab Emirates. The Complainant promotes its restaurant business online through its website (the “Complainant’s website”) at “www.albaik.com”, using a domain name it acquired in December 2001. The Complainant’s website is presented in English and Arabic versions and links to Facebook and Twitter social media pages. The Complainant states that the Arabic version of its name, البيك, transliterates to “ ‘AL BAIK’ or ‘EL BAIK’ in the Latin alphabet, with identical pronunciation. According to the description of the Complainant’s marks in the online database of the United States Patent and Trademark Office, the English translation of the word ‘AL BAIK’ is “a title given to a gentlemen of a certain stature equivalent to ‘Sir’ or ‘Baron’ ”.
The Complaint reports that millions of Muslim pilgrims from around the world, including India (where the Respondent is located), have been introduced to its brand through its restaurants at the entrance to the city of Makkah al-Mukarramah (commonly known in English as “Mecca”). The first such outlet opened in 1990 and was followed by two others later in the 1990s. The Complainant claims that its chain is among the largest production restaurant chains in the world, having the capacity to serve up to 250,000 customers daily. The Complainant furnishes evidence of substantial international advertising and recruiting online and in print media. The Complainant’s trademarks appear not only on signage and in advertising but on co-branded labeling of food and beverage products such as Coca-Cola, Pepsi, and Nestle drinks. The Complaint includes evidence of the Complainant’s sponsorship of social and educational programs in multiple countries, as well as widespread media recognition of the company and its marks over a period of many years. The fact that the Complainant’s brand is known in India is reflected in more than 500 requests to franchise restaurants in India; the earliest examples furnished with the Complaint date from 2015.
The Complainant holds numerous trademark registrations in more than 40 countries. As described and documented in the Complaint and annexes, the Complainant’s “flagship brands” are ELBAIK, ALBAIK, ELBAIK with a hat device, the ALBAIK “chick logo”, and ALBAIK with Arabic script and figurative logo, collectively referred to as the “ALBAIK trademarks”. The registered marks include International Trademark Registration Number 961172 for the figurative mark ALBAIK in a stylized Latin script featuring the word in red on a white background, registered on March 11, 2008 and designated for Bahrain, Morocco, Turkey, and the United States of America (“United States”), as well as International Trademark Registration Number 961173 for the red and yellow figurative mark ALBAIK featuring the word in both stylized Arabic and Latin scripts beside a drawing of a cartoon chicken tipping a top hat. The latter mark is designated for Bahrain, the European Union, Georgia, Morocco, Oman, Turkey, and the United States.
The Complainant also holds Indian trademarks, including Indian Trademark Registration Number 778166 for a figurative mark consisting of the words ELBAIK in Latin script under a drawing of a top hat, with application and registration date of November 13, 1997, and Indian Trademark Registration Number 778169 for a figurative mark consisting of a cartoon chicken tipping a top hat above the Arabic form of “ELBAIK”, with application and registration date of November 13, 1997.
The Complainant cites Malaysian High Court decisions finding that the ALBAIK trademark and its formative trademarks are “well known” marks within the meaning of Article 6 of the Paris Convention and Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). The Complaint also attaches a July 22, 2021, decision of the High Court of Delhi, India in which the court recognized the Complainant’s statutory and common law rights in ALBAIK marks, in a case involving signage at copycat restaurants and websites at the domain names <ilovealbaik.com> and <albaikinternational.com>.
The Complaint attaches a “Trademark IP Sublicense Agreement” dated June 4, 2017, between its Indian sub-licensee and a third party, including provisions under which a restaurant bearing the Complainant’s ALBAIK name and marks was to be established in Delhi, India. The Complaint states that this restaurant business operated until 2020, when it was suspended during the COVID-19 pandemic restrictions. The Complainant indicates that the business is in the process of reopening in India.
The Registrar reports that the Domain Name was registered in the name of a domain privacy service on October 9, 2020. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant as the Respondent Kushal Gupta, listing the organization as Dharmishi Technologies in Kanpur, Uttar Pradesh, India.
A Response was submitted by counsel for Mr. Syed Bilal Ahmad as “proprietor” of “M/S AL-BAIK.COM”. The Response does not indicate the status of “M/S AL-BAIK.COM” as a legal entity. (In India, the courtesy title “M/S”, originally an abbreviation of the French “Messieurs”, is often used for partnerships but also sometimes for joint stock companies.) The Domain Name is used for an English-language website advertising the business of ALBAIK-COM (the “Respondent’s website”), and the registrant Mr. Gupta and his organization Dharmishi Technologies are identified in the Response as the designer and developer of the website. Accordingly, the Panel refers hereafter to Mr. Gupta, Dharmishi Technologies, Mr. Ahmad, and M/S ALBAIK.COM collectively as the “Respondent”.
The Domain Name resolves to the Respondent’s website headed with a red, yellow and white logo featuring a cartoon drawing of a chicken and advertising “Al Baik”, “The Taste of Middle East”, “a major fast food restaurant chain with 99+ outlets in India that primarily sells broasted chicken and shrimp with a variety of sauces”. The Respondent’s inventory of retail establishments seems to be nebulous, as the “99+” touted on the home page drops to “50+” on the “About Us” page, and the Response states that there are “around 30 outlets”. The Respondent’s website actually advertises only a restaurant in Lucknow, India, including delivery service, with a telephone number and webform to contact the company for information about franchise opportunities. The website identifies the company’s “head office” in Lucknow as well and a “global partner” in the United Arab Emirates. The website also links to Facebook and Instagram social media pages.
The Response states (as does the website) that the Respondent has been operating restaurants and cafés in India since 2009. The Respondent currently operates a website much like the Respondent’s website described above but with additional pages of information at “www.al-baik.in” (the “Respondent’s main website”) and also holds the domain name <al-baik.com>, which redirects to the Respondent’s main website. The Response claims that the Respondent registered <al-baik.com> on March 7, 2009 but offers as supporting evidence only a reference to the Registrar’s WhoIs database, which shows that the domain name was created on that date and is currently registered to Dharmishi Technologies, the Respondent’s website developer. The Panel notes that the WhoIs database shows that <al-baik.in>, where the Respondent’s main website currently resides, was created on September 30, 2020. The Internet Archive’s Wayback Machine does not have any archived pages for <al-baik.in>. From the screenshots captured on the Wayback Machine, it appears that <al-baik.com> was simply listed for sale until late 2020 and finally resolved to a website advertising the Respondent’s business in November 2020.
The Respondent’s main website at “www.al-baik.in” now displays the Respondent’s menu and lists the Respondent’s owned or franchised outlets in several Indian cities. It also furnishes detailed information about franchising arrangements.
The following disclaimer appears at the head of the home page of the Respondent’s main website (but not on the Respondent’s website associated with the Domain Name):
“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.”
The Respondent states that it registered the Domain Name on October 6, 2019 (a year earlier than the domain privacy registration shown by the Registrar in this proceeding). The earliest screenshot in the Wayback Machine displaying a website advertising the Respondent’s business is dated from October 2020.
The Complainant states that it became aware of the Respondent in July 2021, when individuals in India contacted the Complainant directly concerning the Respondent’s solicitations for franchises, including requirements for substantial financial deposits. The Complainant also began to find that customers confused its restaurants with the Respondent’s restaurants in Google Reviews.
Consequently, the Complainant initiated the present UDRP proceeding against the Respondent concerning the Domain Name and also a separate proceeding concerning the domain name <al-baik.com>. The latter proceeding was recently decided in Elbaik Food Systems Co. S.A. v. Mr. Syed Bilal Ahmed / Kushal Gupta, Dharmishi Technologies, WIPO Case No. D2021-2620 (“Elbaik I”). On similar facts, the panel in Elbaik I ordered the transfer of <al-baik.com> to the Complainant, which has evidently not yet been effected at the time of this decision.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its ALBAIK trademarks, in which the Complainant claims common law as well as registered trademark rights.
The Complainant states that the Respondent has no permission to use the Complainant’s marks in the Domain Name and no other rights or legitimate interests in the Domain Name, as the “Complainant has overwhelming statutory and common law rights, both in India and globally in the trademark ALBAIK.” According to the Complainant, “[t]he Impugned Domain Name was registered by the Respondent solely with the ulterior motive to make unjust gains by depriving the Complainant of its legitimate rights of registering an identical domain name”, creating “initial interest” confusion among Internet users.
The Complainant argues that this is a case of “passing off” with malicious intent. A brochure available on the Respondent’s website referred to the Complainant’s website at “www.albaik.com” rather than the Domain Name, and the Respondent identified its email address as “albaik.com@[generic email domain]”, thus appearing in both instances to be the Complainant rather than a different entity. The Complainant suggests that this conduct dilutes and tarnishes its “well-known and famous trademark”.
The Respondent argues that it has been conducting a lawful restaurant business in India since 2009, before the Complainant’s arrival on the market in India, under the trademark and service mark AL-BAIK.COM. The Respondent challenges the Complainant’s assertion that the Complainant’s marks are well known in India and denies prior awareness of them.
The Respondent states that its website prominently disclaims affiliation with the Complainant.
The Respondent denies any intent to exploit the Complainant’s marks and contends that the Respondent has been building its own reputation in India for many years with an AL-BAIK.COM mark. “It is further submitted that the respondent has been continuously and un-interruptedly using the name ‘AL-BAIK.COM’ at least since year 2002 and finally got registration on the domain name <al-baik.com> on March 7, 2009 and started extensive promotion of his business and distributing franchisee since then.”
The Respondent explains the acquisition of the Domain Name as follows: “the respondent registered another domain name <albaiks.com> on October 6, 2019 for additional protection of his brand image from the un-social elements and for use only in India.”
The Respondent summarizes:
“It is submitted that through a long use of trademark AL-BAIK.COM more than 20 years and through an uninterrupted, continuous and extensive use of the domain in question from more than 12 years has vested irrevocable rights, title and legitimate Interests of the Respondent in the domain name in question and the trademark/service mark AL-BAIK.COM.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations in many countries for figurative marks that prominently feature ELBAIK or ALBAIK in Latin or Arabic script (or both). In addition, as in Elbaik I, the Panel finds persuasive evidence in the record and in Indian and Malaysian judicial decisions that ALBAIK has attained secondary meaning and is properly recognized as an unregistered word mark for purposes of the Policy. The Domain Name is nearly identical, adding only a final “s” to the ALBAIK mark, which is visually and phonetically similar and may suggest simply a possessive or plural version of the mark to English speakers. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ALBAIK and ELBAIK marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights in many countries, including India, a lack of permissive use, and reasons to infer that the Respondent was aware of the Complainant and its mark before registering the Domain Name in 2020 or (as claimed) in 2019. The Complainant refers to large numbers of Indian visitors to its restaurants in Mecca, media recognition, Indian trademark registrations since the late 1990s, and Indian franchising and restaurant operations since 2017. This shifts the burden of production to the Respondent.
The Respondent claims to have been using an AL-BAIK mark in India for 20 years and to have been operating with the Domain Name for 12 years, but there is simply no support in the record for these claims beyond the Respondent’s bald assertions. The Domain Name was registered in October 2020, according to the Registrar (although its WhoIs database cites a “creation date” in October 2019), so the Respondent could hardly have been using it in business for 12 years. The Panel finds no archived screenshots dated earlier than October 2020 of any website advertising the Respondent’s business using any of the domain names associated with the Respondent, <albaiks.com>, <al-baik.com>, or <al-baik.in>. Despite the liberal sprinkling of “TM” symbols on the latter website, the Response does not refer to any registered trademarks or trademark applications. And while the websites display a variety of possible company names and spellings, the record does not include evidence on the legal status of any entity actually organized and doing business with a corresponding name in 2002 or 2009, when the Respondent variously claims it started doing business or generating goodwill associated with an AL-BAIK mark.
Taken as a whole, the Panel does not find the Respondent’s account credible concerning its business history, asserted trademark rights, and acquisition and use of domain names. It is more likely, given the available record, that the Respondent adopted domain names and business names to suggest an affiliation with the Complainant after the Complainant entered the Indian market, starting in 2015 and culminating in 2017 with sublicensing its trademarks and opening franchised restaurants. The Panel agrees with the conclusions of the panel in Elbaik Ion this head:
“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.”
The Panel concludes that the Respondent has failed to produce sufficient evidence of rights or legitimate interests in the Domain Name, and the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 Panel infers from the facts mentioned in the preceding section that the Respondent was aware of the Complainant and its marks when registering the Domain Name and sought to trade on the Complainant’s reputation by misleading Internet users, both customers and potential franchisees, as to source or affiliation. Notably, the Complainant has operated since 2001 from a website differing by one letter from the Domain Name, at “www.albaik.com”. The menu, logo, and color scheme of the Respondent’s website are evocative of the Complainant’s, and “The Taste of Middle East” slogan is suggestive of the Complainant’s middle eastern approach to a fast-food chicken menu. (The slogan reappears in the browser tag: “AL-BAIK.COM – The Taste of Middle East”.) The Respondent’s website associated with the Domain Name lacks the disclaimer of affiliation found on the Respondent’s main website, despite the statement to the contrary in the Response. (Based on archived screenshots, the disclaimer was a recent addition to the Respondent’s main website in any event.) The brochure for potential franchisees that the Complainant found on the Respondent’s website with references to the Complainant’s website address and an email address constructed as “albaik.com@[generic email domain]” appear to be deliberately designed to enhance a misapprehension that the Respondent’s website is associated with the Complainant.
As in Elbaik I, the Panel finds that this Domain Name was registered and used in bad faith, in an effort to misdirect Internet users for commercial gain. The Panel concludes that the Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <albaiks.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: December 16, 2021