Complainant is Nando’s International Holdings Limited of Mriehel, Malta, represented by Bouwers Inc., South Africa.
Respondent is Privacy Protect of Nobby Beach, Queensland, Australia / prasad - Nagavara Prasad of Hyderabad, Andhra Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2013, 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 September 2, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 5, 2013, corrected on September 6, 2013.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2013.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 4, 2013. 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.
One other procedural issue that needs to be noted concerns the expiration date of the disputed domain name. In its reply of August 29, 2013, the Registrar noted that:
“A Registrar Lock has been applied to "" and will continue to be maintained, until the Expiry of the domain name Sep 22, 2013. Post which either the Complainant or the respondent can renew the domain name to keep the domain name under Registrar LOCK so that the administrative procedure can continue as required under the UDRP.”
This is consistent with paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy.
The Center confirmed this action with the Registrar on September 2, 2013, and the Registrar replied affirmatively on September 3, 2013. The Center notified Complainant on September 3, 2013, that renewal was required to keep the disputed domain name active so that the administrative procedure could continue as required under the UDRP. On September 5, 2013, Complainant informed the Center and Registrar that it intended to renew the registration for , and did so September 18, 2013. The registration now will expire on September 22, 2014, so the disputed domain name will stay under Registrar Lock and this proceeding can continue. 4. Factual Background
Complainant owns and operates a restaurant chain, which since 1987 has grown to over 1,000 restaurants in over 30 countries, including Qatar. Complainant also distributes sauces, marinades and snacks in its stores and through major retailers. Complainant’s restaurants operate, and its products are sold, under Complainant’s NANDO’S mark, which is registered in over 120 countries, including Qatar. Complainant owns various domain names that incorporate its NANDO’S mark, such as , through which Complainant markets its products and services.
Complainant’s brand has received acclaim in well-known publications. In 2010, Advertising Age named Complainant’s brand as one of the world’s “top 30 hottest brands”. That same year, the Sunday Times named Complainant as the best big company to work for in the United Kingdom. Its advertisements have also received attention from major media outlets, and exposure on social media sites.
Complainant registered its NANDO’S mark in Qatar in May 2000. It has operated two restaurants under the NANDO’S mark in Qatar since 2001.
The disputed domain name was registered by Respondent on September 22, 2012. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in its NANDO’S mark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s NANDO’S mark in its entirety, and that the only differences between Complainant’s mark and the disputed domain name are the lack of an apostrophe and the addition of the geographic designation “Qatar”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest Respondent of the disputed domain name, a Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant’s NANDO’S mark. It contains Complainant’s NANDO’S mark in its entirety. Of minor significance is that the domain name does not contain an apostrophe between the “O” and “S”; domain names may not contain apostrophes. Consequently, the only true difference between Complainant’s mark and the disputed domain name is the addition of the word “qatar”, which clearly refers to the country “Qatar”, in which Complainant owns a registered mark and has operated two restaurants since 2001. Numerous previous UDRP decisions have held that the addition of a geographical indication is likely to be interpreted by Internet users as describing geographical origin of the complainant’s products or services and that the Complainant is operating or doing business in such area. See, kabushiki Kaisha Toshiba dba Toshiba Corporation v WUFACAI, WIPO Case No. D2006-0768; LEGO Juris A/S v Budi Irshandi/Cha Licious,WIPO Case No. D2012-2343 (for “uk”); Fashions Limited v Australia Karen Millen, Linde Meredith, WIPO Case No. D2012-2376 (for “au”).
Accordingly, the Panel finds that Complainant has rights in the NANDO’S mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in its NANDO’S mark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the NANDO’S mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Thus, the burden of production shifts to Respondent to demonstrate any rights or legitimate interests it may have in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s NANDO’S mark, restaurants and products when Respondent registered the disputed domain name. As set forth above, the NANDO’S restaurants and products are protected by various trademark registrations, including registration certificates issued by Qatar. Complainant has operated its NANDO’S restaurants since 1987, and has over 1,000 restaurants in over 30 countries, including Qatar. Complainant’s restaurants and products are marketed through Complainant’s domain names, and through print and social media. All of this occurred before Respondent registered the disputed domain name in 2012. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Respondent used the disputed domain name and Complainant’s NANDO’S mark to advertise its own restaurant, which serves similar dishes. Even more egregious, however, is the fact that Respondent claimed on the website at the disputed domain name (under “About Us”) that it is part of Complainant’s restaurant group, founded in 1987, and operates in thirty countries on five continents. The specific language appears to have been copied from a Wikipedia page dedicated to Complainant. It is clear that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, thus using Complainant’s mark in bad faith. The content of Respondent’s website appeared designed to reinforce the Internet user’s impressions that the disputed domain name and the website belong to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642. 7. Decision
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 be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: October 18, 2013
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