The Complainant is M/S Adyar Ananda Bhavan Sweets & Snacks of Chennai, India, represented by Altacit Global, India.
The Respondent is Usman Hameed of London, United Kingdom of Great Britain and Northern Ireland, represented by S.V. Pravin Rathinam, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amended Complaint on August 8, 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 August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Response was filed with the Center on August 28, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 11, 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.
On September 21, 2017, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules’), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1. The Complainant (in page 11 in particular) makes assertions including that the Complainant has spent ‘huge amounts on marketing their products and services under the said trade mark’ and there ‘have been extensive sales and sales promotion activities carried out by the Complainant’ but provides no documentary evidence to support these claims including
a. evidence of amounts spent on advertising
b. evidence of advertising featuring the ADYAR ANANDA BHAVAN Mark (AAB Mark)
c. details of the manner in which the Complainant has advertised its products; and
d. evidence of the reach of the reputation of the Complainant.
2. The Complainant refers to itself as a ‘USD 123 million concern’ but
a. provides no explanation as to whether this figure refers to sales, profits or market value; and
b. provides no documentary evidence to support this claim and/or how this figure is reached.
3. The Complainant asserts that it is very popular with the Indian diaspora worldwide, but does not provide any evidence to support this claim other than the existence of a single restaurant located in New Jersey, USA. In particular the Complainant provides no evidence of any reputation in or rights to the AAB Mark in either the United Kingdom, where the Respondent is located, or Dubai, where the Chennai Anandha Bhavan restaurant operates.
4. The Complaint does not address or confirm that the term ‘Ananda Bhavan’ is a term in Tamil and Sanskrit signifying ‘Happy House’
5. The Response does not clearly establish the relationship between the Respondent and the Chennai Anandha Bhavan restaurant. The Response asserts the Respondent, Usman Hameed is the sole proprietor of the trade mark/name ‘Chennai Ananda Bhavan’. It refers to the Respondent having a trade mark. However:
a. The Initial Trade Name Reservation Certificate attached to the Response does not appear on its face to grant the Respondent any trade mark rights, rather it appears to be of the nature of a company registration, though this is not explained. It appears to have an expiry date of September 29, 2016. The Owner’s Name is listed in Arabic and a verified translation of the document is not provided. If the Respondent is seeking to establish trade mark rights, it is necessary to submit proof of trade mark registration in his actual name (if necessary translated from Arabic), such as a certificate of registration.
b. The Response does not explain what rights arise from the Professional License. It is unclear to the Panel what this licenses the holder to do. The Professional License appears to have an expiry date of May 21, 2017. The Professional License appears to suggest that the Chennai Anandha Bhavan restaurant is owned by two Indian nationals, neither of whom is the Respondent and neither of whom appear to be the Owner listed in the Initial Trade Name Reservation Certificate. No explanation in the Response is provided of the relationship between the Respondent, Usman Hameed and the holders of the Professional License and the Chennai Anandha Bhavan restaurant more broadly.
6. Both the Initial Trade Name Reservation Certificate and Professional License refer to the restaurant as the Chennai Ananda Bhavan Restaurant. The Domain Name and the restaurant are referred to as the Chennai Anandha Bhavan restaurant. The Response does not explain why the Chennai Anandha Bhavan restaurant trades under a different name to the name in the registration documents, nor does it explain whether there is a difference between ‘Ananda Bhavan’ and ‘Anandha Bhavan’.
Therefore the Panel makes the following orders:
1. The Complainant has until September 28, 2017 to file and serve an amended Complaint addressing the matters raised in this Panel Order and any additional matters raised in the Response.
2. The Respondent has until October 5, 2017 to file and serve an amended Response addressing the matters raised in this Panel Order and any additional matters raised in the amended Complaint.
3. Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to [address]@ for forwarding
4. The Panel will deliver its decision on or before October 12, 2017.”
On September 28, 2017, the Complainant filed an amended Complaint (hereafter referred to as the “Complaint”). On October 6, 2017, the Respondent filed an amended Response (hereafter referred to as the “Response”) that the Panel has, in its discretion, accepted. 4. Factual Background
The Complainant is an Indian company that operates a chain of restaurants specializing in Indian cuisine under the name Adyar Ananda Bhavan. The Complainant is headquartered in Chennai, India, was established in 1988, now has over 125 restaurants across India which serve between 54 and 63 million customers per annum. The Complainant’s annual turnover is USD 123 million.
The Complainant holds a registered trade mark in India for a device mark consisting of the letters and words “AAB Adyar Ananda Bhavan Sweets & Snacks” (“Registered Mark”), which was registered on September 16, 2005. The Complainant has applied to register numerous trade marks that consist of the words “Adyar Ananda Bhavan” (the “AAB Mark”) in India (with an application date of November 21, 2015 and date of first use of April 6, 1988). It has also applied to register the AAB Mark in Malaysia and in the European Union, United States of America, Australia and Singapore. Outside India, it appears that the Complainant operates a restaurant under the Registered Mark in New Jersey, United States of America, and at one point (but apparently no longer), Kuwait.
The Respondent is an individual who handles the technology and online development for the partnership business “Chennai Ananda Bhavan” (the “CAB Partnership”) which operates an Indian restaurant under the name “Chennai Anandha Bhavan” in Dubai, United Arab Emirates. It appears that the Respondent is simply acting as the agent for the CAB Partnership. The Department of Economic Development of the Government of Dubai has issued the CAB Partnership with an Initial Trade Name Reservation Certificate and Professional License that appear on their face to allow the operation of a business trading under the name Chennai Ananda Bhavan Restaurant L.L.C. This occurred in March and June 2016 respectively and the Professional License has now been renewed, with an expiry date of May 21, 2018.
The Domain Name was registered on December 3, 2016 and is used for a website for the Chennai Anandha Bhavan restaurant (the “Respondent’s Website”). The Respondent’s Website advertises the menu and contact details of Chennai Anandha Bhavan in Dubai. It does not refer to the Complainant in any way.
The term “ananda bhavan” has a descriptive meaning in Tamil. The Respondent has referred to the meaning of “ananda bhavan” as being “happy house” while the Complainant has suggested “ananda” means extreme happiness and “bhavan” means a building used for a special purpose, such as meetings or concerts. The descriptive term can be transliterated into the Roman alphabet in a number of ways, including as “ananda bhavan” or “anandha bhavan”, and indeed it appears that the different terms are used interchangeably in the Response. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s AAB Mark and Registered Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the Registered Mark, having registered it in 2005. The Complainant is also the owner of the AAB Mark having applied to register the AAB Mark in India, Malaysia and the European Union, United States, Australia and Singapore. Furthermore the Complainant has an extensive reputation in the AAB Mark arising from the success of the Complainant’s business which has traded since 1988, has won many awards, is extensively promoted and has 125 outlets across India. The Domain Name is confusingly similar to the Registered Mark and AAB Mark because the element “anandhabhavan” is phonetically similar to “Ananda Bhavan” and the addition of the prefix “Chennai” merely refers to the city in South India where the Complainant’s business is headquartered. This prefix is purely descriptive and does not render the Domain Name distinct from the Complainant’s trademark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is using the Domain Name to advertise goods and services that correspond precisely to the Complainant’s goods and services in circumstances where the Complainant has built up a significant reputation in its AAB Mark, having traded under that name for 28 years. The Respondent is taking advantage of the popularity of the Complainant to mislead consumers into believing that the Domain Name is connected to the Complainant’s business. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. Considering the popularity of the Complainant and its brand and the use of the Domain Name for an Indian restaurant it is highly unlikely that the Respondent was unaware of the Complainant’s repute in the food industry at the time of registration. The Respondent is using the Domain Name to advertise the same services as that of the Complainant thereby attracting consumers to its website and business. This amounts to an attempt to create a likelihood of confusion among consumers as to the affiliation of the Respondent’s website with the Complainant’s well-known AAB Mark. Consumers visiting the Respondent’s Website will assume incorrectly that the Respondent’s business is affiliated with the Complainant’s Adyar Ananda Bhavan business. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent handles the tech and online development for the “CAB Partnership” run by two individuals, Mohaideen Gani and Yoosuf Mereen. The CAB Partnership is the sole proprietor of the trademark/name CHENNAI ANANDA BHAVAN which is registered with the Government of Dubai. The CAB Partnership operates a restaurant under that name located in Dubai specializing in South Indian vegetarian dishes. The Respondent’s Website simply promotes the Chennai Anandha Bhavan restaurant and caters to the citizens of Dubai only. The Respondent is using the Domain Name for a bona fide purpose, namely the promotion, on behalf of the CAB Partnership of the Chennai Anandha Bhavan restaurant and no confusion will occur since the restaurant only operates in Dubai, not in India where the Complainant is based.
The Complainant has no presence in Dubai or rights in Dubai. Furthermore the Complainant’s trade marks are quite different to CHENNAI ANANDA BHAVAN, the closest being ADYAR ANANDA BHAVAN. The term “Ananda Bhavan” is a term in Tamil/Sanskrit meaning “happy house”. The Complainant has no rights to “Ananda Bhavan” by itself as it is a generic term. Furthermore Ananda Bhavan also refers to a historic house museum in Allahabad India connected to the Nehru Family. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the Registered Mark, having registered the Registered Mark as a trademark in India. The Panel also finds that the Complainant has common law rights in the AAB Mark, having used the AAB Mark as a distinctive identifier for 125 restaurants across India and having traded under the AAB Mark since 1988.
The Domain Name consists of the geographical term “chennai” and the elements “anandha bhavan”. The Panel finds that the elements “anandha bhavan” are phonetically similar (and have an identical meaning) to the “ananda bhavan” elements in the AAB Mark and Registered Mark, indeed they appear to simply be different transliterations of the same words in Tamil/Sanskrit. The remaining difference between the AAB Mark and the Domain Name (excluding the .com element), being the replacement of “adyar” with the geographical term “chennai” does not prevent a finding of confusing similarity. The Panel finds the Domain Name is confusingly similar to the Complainant’s AAB Mark and Registered Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent circumstances which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
In the present case, the evidence in the Response satisfies the Panel that the Respondent is acting as an agent for the CAB Partnership which is using the Domain Name for a website promoting a restaurant trading in Dubai under a corresponding name. The Chennai Anandha Bhavan Restaurant appears to be licensed to trade under that name (or a closely corresponding trade name) by the Government of Dubai. Prima facie, the Chennai Anandha Bhavan Restaurant does not appear to infringe any trademark rights held by the Complainant, since it only trades in the United Arab Emirates and the Complainant has no trademark rights in that jurisdiction. There is nothing on the Respondent’s Website to suggest that the Chennai Anandha Bhavan Restaurant is attempting to pass itself off as being connected with the Complainant (for example by using the Complainant’s logos or making reference to the Complainant), nor does it appear that the Respondent’s Website targets consumers in India (the Chennai Anandha Bhavan Restaurant is in the United Arab Emirates and does not offer any services in India).
The essence of the Complainant’s submissions is that the Respondent (or the CAB Partnership) has chosen to operate a South Indian vegetarian restaurant (and hence register and use a corresponding domain name) under a business name that could mislead consumers familiar with the Complainant’s chain of restaurants trading under the Adyar Ananda Bhavan name. The Panel notes that the Complainant has provided no evidence (as opposed to assertions) of its reputation in the United Arab Emirates (indeed its sole evidence of reputation in the Middle East is a single restaurant, now closed, that once operated in Kuwait), and notes that “ananda/anandha bhavan” is a generic term. While the Panel accepts the Complainant’s submissions that it is very unlikely that an entity seeking to operate a South Indian restaurant under a name containing “ananda/anandha bhavan” would be unfamiliar with the Complainant (a Google search would ensure that is not the case), the Complainant is asking the Panel to make significant inferences about the conduct and state of mind of the Respondent that are entirely unsupported by any evidence other than the fact that the Complainant and the Respondent are entities that operate similar businesses in different jurisdictions under somewhat similar names.
In circumstances where the Respondent is connected to an entity that:
(i) is operating a prima facie legitimate business;
(ii) under what appears to be a registered trading name that closely corresponds with the business name;
(iii) in a jurisdiction where the Complainant has no trade mark rights (or evidence of reputation); and
(iv) is using the Domain Name for a website to promote that business and not target the Complainant in any obvious way;
the Panel finds that the Complainant has not satisfied its burden to show that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
For the purposes of this proceeding, which is summary in nature, the evidence in the Response is sufficient to warrant this finding against the Complainant. However, the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.
The Policy is designed to deal with clear cases of cybersquatting. See Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace,WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). If the Complainant wishes to bring proceedings against the Respondent (or the CAB Partnership) for trade mark infringement, passing off, or question the assertions and evidence of the Respondent (or the CAB Partnership)’s conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction. C. Registered and Used in Bad Faith
Given the Panel’s finding under the second element of the Policy, the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: October 13, 2017
Full & Egal Universal Law Academy