WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dishoom Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Gabriella Garlo
Case No. D2021-2625
1. The Parties
Complainant is Dishoom Limited, United Kingdom (“UK”), represented by Dechert, UK.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <dishoom.gifts> 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 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 Complainant on August 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 19, 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on September 29, 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
Launched in 2010, Complainant operates a unique restaurant and bar concept based upon the traditional Bombay cafés in India. Complainant provides its restaurant services and sells related goods under the trademark DISHOOM (the “DISHOOM Mark”) at five locations across London, as well as locations in Edinburgh, Manchester and Birmingham in the UK.
Since its launch, the reputation of Complainant’s restaurant business has grown rapidly. Complainant has provided evidence that it has been recognized with numerous awards, has been listed in the Good Food Guide every year from 2012 to 2019 as well as in the Michelin Guide every year from 2012 to 2020. Public reviewers voted Complainant the best restaurant in the UK in the Yelp Top 100 Eateries list in 2015 and 2016. Complainant’s turnover for the year ending December 31, 2019, was over £52 million.
Complainant is the owner of trademark registrations in numerous jurisdictions around the world containing the DISHOOM Mark, including Brazil, where Respondent is located, covering a range of food, and beverage products as well as restaurant services, such as UK Trademark Registration No. UK00002468689, DISHOOM, for a range of goods and services in International Classes 18, 25, 29, 30, 31, 32, 33 and 43, registered on March 7, 2008; United States Trademark Registration No. 5440637 for DISHOOM, for a range of services in International Class 43, including restaurant, bar and catering services, registered effective as of September 11, 2014, based on International Registration No. 1233023; Brazil Trademark Registration No. 908397607, DISHOOM, for a range of services in International Class 43, including restaurant, bar and catering services, registered on March 1, 2017; and European Union Trademark Registration No. 7404239, DISHOOM, for a range of goods and services in International Classes 29, 30, 35 and 43, registered on June 18, 2009.
In addition, Complainant has continuously used its domain name <dishoom.com> from which it operates its official DISHOOM website at ”www.dishoom.com” to provide information and promote the activities of its DISHOOM restaurants (the “Official DISHOOM Website”). In 2020, Complainant launched an online store using the domain name <store.dishoom.com>, which was widely reported in the media. The online store included a ‘Gifts’ section and advertised that the products offered at the online store could be purchased “for oneself or a friend” (i.e. as a gift).
The disputed domain name was created on February 9, 2021 and as of the time the Complaint was filed resolved to a parked site hosting a directory of pay-per-click (“PPC”) commercial links to restaurant and food takeaway and delivery services competitive with Complainant’s goods and services identified under its DISHOOM Mark registrations.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed 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 Complainant has rights;
(ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of valid and subsisting trademark registrations for the DISHOOM Mark. As such, Complainant has the trademark rights required under the Policy. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
With Complainant’s rights in the DISHOOM Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain [“TLD”] “.gifts” which is functionally necessary for the domain name to be registered) is identical or confusingly similar to Complainant’s DISHOOM Mark. See Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146 (.TLD irrelevant for confusing similarity determination); WIPO Overview 3.0, section 1.11 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
Respondent incorporates Complainant’s DISHOOM Mark in its entirety as the only second-level term for comparison in the disputed domain name <dishoom.gifts>, with no change in the Mark’s appearance or pronunciation. The DISHOOM Mark would clearly be perceived by consumers as the predominant component of the disputed domain name, and the descriptive term appended as the TLD that follows, is irrelevant for purposes of determining confusing similarity under the Policy. The disputed domain name, therefore, is “obviously identical” to Complainant’s registered DISHOOM Mark. See Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823.
Complainant contends that confusing similarity is present here or enhanced because Înternet users would consider the gTLD “.gifts” to be suggestive of products advertised on Complainant's website under the DISHOOM Mark that may be purchased as gifts. The Panel finds Complainant’s evidence submitted in support of this argument limited and unpersuasive, not specifically drawing attention to an event such as an announcement of a product launch with significant media attention about the store’s grand opening featuring gifts, specific gift products or gift services soon to be the subject of a trademark application, and a respondent’s registration of the disputed domain name within a strikingly short period of time after the announcement. Of the many goods and services for which the DISHOOM Mark is registered around the world, including Brazil, where Respondent is located, none reference gifts, gift products or gift services. Prior UDRP panels have found such facts persuasive in the specific case where a domain name is filed to capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, usually as a factor in relation to the second and third elements of the Policy. See, e.g., WIPO Overview 3.0, section 3.8.2. While the Panel could reasonably infer selection of the “.gifts” TLD by Respondent may relate to the fact that the store’s products could be used as gifts, the Panel finds such inference unnecessary here considering the more compelling direct evidence of a disputed domain name identical to Complainant’s DISHOOM Mark in which Complainant has well established, registered trademark rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation, association, sponsorship, or connection with Complainant. Complainant also asserts that Complainant has not licensed or otherwise permitted or authorized Respondent to use the DISHOOM Mark in any manner, including the registration of the disputed domain name. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004‑0272.
Second, nothing in the record shows that Respondent is commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf”, the Registrar disclosed the underlying registrant, “Gabriella Garlo” of Brazil, who has been added to the amended Complaint as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. These facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).
A respondent not commonly known by the disputed domain name supports a finding of a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
Finally, when accessed by Complainant on April 8, 2021, the disputed domain name hosted a website consisting of a directory of pay-per-click (“PPC”) links to restaurant and food takeaway and delivery services, being identical or at the very least highly similar to the goods and services covered by Complainant’s DISHOOM Mark as evinced in the web page printouts in the Annex to the Complaint. Complainant contends Respondent generates monetary revenue through such PPC links at its directory site.
Prior UDRP panels have held that use of a domain name to post PPC links would not of itself confer rights or legitimate interests, especially where such links result in a connection to goods or services competitive with those of Complainant. See Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao WIPO Case No. D2016-2302.
Internet users will foremost recognize the DISHOOM Mark, which comprises the disputed domain name. Thereby, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview 3.0, section 2.5.1; see also Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (“Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy”).
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that because Respondent has created a domain name that is identical, therefore confusingly similar to Complainant’s DISHOOM Mark, as well as the domain name Complainant uses to operate its Official DISHOOM Website <dishoom.com>, it is implausible to believe that Respondent was not aware of Complainant’s mark when it registered its confusingly similar disputed domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4; see also, Allianz SE v. Well Domains are either owned by us or Client Managed, WIPO Case No. D2008-0535.
The disputed domain name was registered 11 years after Complainant was founded and started trading under the DISHOOM Mark. Prior UDRP panels have held that in the absence of any legitimate interests in the disputed domain name, such registration of the disputed domain name by Respondent cannot have been in good faith. See, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001‑0087; see also, Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.
The Panel also notes here additional factors under WIPO Overview 3.0, section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent has registered the disputed domain name featuring the DISHOOM Mark in its entirety; (ii) Complainant’s Official Website for Complainant’s restaurant services being accessed at “www.dishoom.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s DISHOOM Mark when it picked the disputed domain name; and (iii) the lack of Respondent’s rights or legitimate interests in the disputed domain name, registered to engage in per se illegitimate activity, hosting a directory website with PPC links to businesses sell competing restaurant services for Respondent’s commercial gain. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Additionally, as noted above and as shown in Annex evidence attached to the Complaint, Complainant sent a demand letter to Respondent on April 30, 2021, but Respondent never replied. Prior UDRP panels have held such failure to respond to a demand letter is additional evidence of bad faith. See e.g., Encyclopedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242
Bad faith use is also clear from Respondent’s illegitimate conduct as discussed in detail in section 6.B. above, providing content to encourage purchases of services provided by Complainant’s competitors under the disputed domain name, redirecting users to Respondent’s site suggesting an affiliation with Complainant by using its DISHOOM Mark for Respondent’s commercial gain. Respondent, therefore, has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. See, WIPO Overview 3.0, sections 3.1.4 and 3.4; see also, Accenture Global Services Limited v. Yankee, Yankees, WIPO Case No. D2018-0217; and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under 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 <dishoom.gifts> be transferred to Complainant.
Scott R. Austin
Date: October 13, 2021