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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dishoom Limited v. Registration Private, Domains By Proxy, LLC / Ashish Parikh

Case No. DCO2017-0031

1. The Parties

The Complainant is Dishoom Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Dechert LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Ashish Parikh of Somerset, New Jersey, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <dishoom.co> (the "Disputed Domain Name") 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 September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 26, 2017, 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 October 3, 2017 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 October 6, 2017.

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 October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Response was filed with the Center on October 31, 2017.

The Center appointed John Swinson as the sole panelist in this matter on November 10, 2017. 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 Dishoom, a company which operates a chain of five restaurants in London and Edinburgh. The Complainant launched its restaurant business in 2010 and, according to the Complaint, has received numerous awards since then. It has been listed in the Good Food Guide every year from 2012 to 2018, and was listed in the Michelin Guide in 2014, 2015 and 2017.

The Complainant owns registered trade marks for DISHOOM in a number of jurisdictions, including United Kingdom registered trade mark number 2468689, registered on March 7, 2008 (the "Trade Mark").

The Respondent is Ashish Parikh. The Respondent submits that he is associated with a consultancy business named Dishoom Pte Ltd. This entity is registered in Singapore. According to the Respondent's LinkedIn profile, which was included in the Response, the Respondent is CEO of Dishoom Pte Ltd. The Respondent has previously worked at companies such as Google and McKinsey.

The Disputed Domain Name was registered on April 26, 2017. At the time of this Decision, the website at the Disputed Domain Name resolves to a Registrar parking page. According to the Respondent, before the Complaint was filed, the website at the Disputed Domain Name was a parking page containing the words "Coming Soon".

5. Parties' Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or confusingly similar

The Complainant owns the goodwill, reputation and registered rights in the Trade Mark internationally. The Trade Mark is distinctive of the Complainant. The Disputed Domain Name is identical to the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety, and adds the suffix ".co".

No rights or legitimate interests

The Complainant submits that the Respondent is unable to rely on any of the factors enumerated at paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the Disputed Domain Name.

The Complainant submits that, at the time of the Complaint, there was no active website associated with the Disputed Domain Name. On this basis, the Respondent has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. It is likely that the Respondent chose to register the Disputed Domain Name to trade off the Complainant's reputation in the Trade Mark. Such use is not bona fide.

Further, the Respondent is not making a legitimate or noncommercial fair use of the Disputed Domain Name, and the Complainant has not authorized or otherwise permitted the Respondent to use the Trade Mark or register the Disputed Domain Name. The Respondent's name does not include the Trade Mark and he is not commonly known by the Trade Mark.

On July 20, 2017 and August 15, 2017, the Complainant's solicitors sent a cease-and-desist letter to the email address for the privacy service previously listed as the registrant contact for the Disputed Domain Name. The Respondent did not respond to either letter.

Registered and used in bad faith

The Disputed Domain Name was registered in April, 2017, around seven years after the Complainant's business was founded and the Trade Mark was first used. Due to the Complainant's reputation, it is reasonable to infer that the Respondent knew of the Complainant at the time the Disputed Domain Name was registered.

The Respondent is passively holding the Disputed Domain Name. The Complainant submits that, in this case, that passive holding amounts to bad faith. The Trade Mark has a strong reputation and is widely known, and the Respondent has provided no evidence of any actual or contemplated good faith or legitimate use of the Disputed Domain Name.

Trade mark searches on the date the Disputed Domain Name was registered would have revealed the Complainant's Trade Mark rights, so the Respondent had constructive, if not actual, knowledge of the Trade Mark at the time the Disputed Domain Name was registered.

Further, the Respondent has taken steps to conceal his identity by registering the Disputed Domain Name using a proxy service.

B. Respondent

The Respondent makes the following submissions.

Identical or confusingly similar

The Respondent is an active business providing strategy and technical consulting services. It has no interest in the restaurant industry in which the Complainant operates.

The Complainant cannot claim universal rights over the word "dishoom" as this is a commonly used term in Asia. It is an everyday term in the Indian languages as the sound of gunshots, similar to "bang" or "pow" in English.

No rights or legitimate interests

The Respondent is an active business providing strategy and technical consulting services. The Respondent submits that he was engaging in a bona fide offering of services before he received any notice of the dispute. The Disputed Domain Name is not being passively held. The Respondent has identified two email addresses which are associated with the Disputed Domain Name.

Registered and used in bad faith

The Complainant has not provided any evidence that the Respondent registered the Disputed Domain Name in bad faith. The Disputed Domain Name was being actively used before the Respondent received notice of the dispute.

The Respondent is an active business providing strategy and technical consulting services. The Respondent's business does not overlap with the industry in which the Complainant operates.

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, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

The onus of proving these elements is on the Complainant

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name is identical to the Trade Mark. It incorporates the Trade Mark in its entirety and no further words are added.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized or otherwise permitted the Respondent to use the Trade Mark or register the Disputed Domain Name. According to the Complainant, there is no active website associated with the Disputed Domain Name, and the Respondent has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant infers that the Respondent knew of the Trade Mark at the time the Disputed Domain Name was registered, and registered the Disputed Domain Name to trade off the Complainant's reputation in the Trade Mark.

The Respondent submits that he has an active business providing strategy and technical consulting services, and that he was engaging in a bona fide offering of services before he received any notice of the dispute. According to the Response, the Respondent has two email addresses associated with the Disputed Domain Name which are actively used.

The issue for the Panel is that the Respondent has provided little evidence to support his submissions, and the evidence he has provided contains gaps. For example, according to the Respondent's LinkedIn profile, he has been CEO of Dishoom since August 2016. The Disputed Domain Name was registered on April 26, 2017. The only evidence he has provided which predates notice of the dispute (which was July 20, 2017), is a statement of work in the name "Dishoom Pte Ltd" dated June 2017. However, according to a public records search, the Singaporean entity "Dishoom Pte Ltd" was incorporated on July 27, 2017.

The Respondent has made no attempt to explain these dates. The Respondent did not provide the Panel with a copy of the certificate of registration for Dishoom Pte Ltd, nor did he provide any documents evidencing his association with that company.

As a result, the Respondent's rights or legitimate interests in the Disputed Domain Name are not clear. However, in light of the Panel's finding in relation to bad faith below, the Panel is not required to conclusively determine whether or not the Respondent has rights to or a legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant began operating its business in 2010. The Complainant submits that the Trade Mark has a substantial reputation and is widely known. The Disputed Domain Name was registered on April 26, 2017.

However, the Complainant has not provided any actual evidence which demonstrates to the Panel that the Respondent knew or should have known of the Trade Mark at the time he registered the Disputed Domain Name. The Complainant's restaurants are all located in the United Kingdom (and predominantly in London). The Panel is not satisfied that the Complainant has established that the Trade Mark has such a significant reputation outside of the United Kingdom so that the Respondent, who lives in the United States and operates a business in Singapore, and is not associated with the hospitality industry, ought to have known of the Trade Mark at the time he registered the Disputed Domain Name.

The Panelist enjoys eating in restaurants, but did not become aware of the Complainant's restaurant until he visited London in August 2017.

Of course, as a practical matter, the Panel can infer that the Respondent became aware of the Trade Mark, or at least of the fact that someone was operating a restaurant business using the name "Dishoom", at the time he registered the Disputed Domain Name, as it is likely he attempted to register <dishoom.com> before he registered <dishoom.co>. The domain name <dishoom.com> is registered to a privacy service, so the Respondent had no way of knowing that it is owned by the Complainant, but the website associated with <dishoom.com> appears to be the primary website for the Complainant's restaurant business.

However, the Respondent is correct in his submission that the Complainant does not have universal rights to the word "dishoom". The term "dishoom" is the onomatopoeic equivalent to "pow" or "bang" in Hindi. The Complainant has adopted a generic (although somewhat obscure) term as its Trade Mark. In these circumstances, where the Respondent appears to operate a consulting business, the Respondent is not operating within the hospitality industry, the Disputed Domain Name is a dictionary term, and there is no evidence to suggest that he is attempting to trade off the Complainant's reputation in the Trade Mark, the Panel finds that the Respondent's registration of the Disputed Domain Name was not in bad faith.

The Complainant does not succeed on the third element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: November 23, 2017

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