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 Kaushal Sharma of Amritsar, India. 2. The Domain Name and Registrar
The disputed 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 December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. On January 5, 2018, the Center received an email communication from the Respondent. On January 11, 2018, the Center informed the Parties of the commencement of the panel appointment process.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 12, 2018. 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.
Also on January 12, 2018, the Center received a second email communication from the Respondent, which was copied to the Complainant. On January 15, 2018, the Center received an email communication from the Complainant that urged the Panel to disregard the Respondent’s email communication of January 12, 2018, as it was received after the Response due date.
The Panel has reviewed the email communications from the Respondent sent to the Center on January 5, 2018 and January 12, 2018, which were both very brief and essentially the same. Because neither email conformed to the Policy requirements concerning a proper Response, failing, among other things, to address meaningfully any statements or allegations contained in the Complaint or to invoke any pertinent circumstances suggested by the Policy to support ownership of the disputed domain name, the Panel, pursuant its authority under paragraph 10(d) of the Rules, will not consider those emails as evidence in rendering its decision.
However, even if the Panel had considered the two emails as evidence, they would not have changed the outcome of this proceeding. 4. Factual Background
The Complainant is an established United Kingdom company that owns and operates in that country several restaurants whose design is based upon cafes found in India. The Complainant has registered its DISHOOM service mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Registration No. 2468689; registered on March 7, 2008), European Union Intellectual Property Office (“EUIPO”) (Registration No. 7404239; registered on June 10, 2009), United States Patent and Trademark Office (“USPTO”) (Registration No. 79085962; registered on May 31, 2011) and in other jurisdictions, including India.
The Respondent, a resident of India, registered and owns the disputed domain name . That registration was created on October 21, 2017. The disputed domain name resolves to a website that displays restaurant/bar services that are similar to those offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant is a United Kingdom company that was launched in 2010 and owns/operates six Indian-style cafes, five in London and one in Edinburgh. The Complainant’s business has grown rapidly and received many awards.
In connection with its business, the Complainant has registered its DISHOOM trademark with the UKIPO, EUIPO and USPTO, and in India, the Respondent’s domicile. Moreover, the Complainant conducts activities through its domain name .
The disputed domain name, , is confusingly similar to the Complainant’s DISHOOM mark. The name contains the mark in its entirety. The addition of the descriptive term “lounge” does not reduce the confusing similarity. On the contrary, because that additional term might be indicative of the services offered under the Complainant’s mark, the similarity is enhanced and the confusion increased.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use the DISHOOM mark or to include it within a domain name. Moreover, the Respondent’s attachment of a website to the disputed domain name which is similar in design to the Complainant’s website and suggests restaurant/bar services like those offered by the Complainant, fails to constitute a “bona fide offering of goods or services”. Also, because such use is obviously commercial in nature, it is not “a legitimate noncommercial or fair use” of the disputed domain name. Finally, the Respondent is not commonly known as the disputed domain name.
The Respondent failed to respond to both a cease-and-desist letter and an email sent by the Complainant regarding the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Since the Respondent is using the name to present services similar to those offered by the Complainant, the Respondent is aware of the Complainant and seeks to trade off the goodwill associated with the Complainant’s mark. As such, the Respondent’s intent is to gain commercially from confusion between the name and the mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Furthermore, the Respondent intends to disrupt the Complainant’s business by diverting Internet traffic from the Complainant’s website to the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Per Policy paragraphs 4(a)(i)-(iii), the Panel may find for the Complainant and order the transfer of the disputed domain name, , provided that the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted pertinent and unchallenged evidence to the Panel that the Complainant has registered its DISHOOM service mark with the UKIPO, EUIPO and USPTO, among other trademark authorities around the world. This evidence is sufficient for the Panel to conclude that the Complainant owns the necessary rights in that mark for the purposes of Policy paragraph 4(a)(i). See, Pet Plan Ltd v. Esteban Rodriguez,WIPO Case No. D2016-2142 (“Complainant has provided evidence of ownership of rights in the trademark PETPLAN...through registration at the UKIPO, EUIPO, USPTO and CIPO...Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has rights in the word trademark PETPLAN...”); Titanium Metals Corporation v. Atak Teknoloji Ltd. Sti.,WIPO Case No. D2010-1482 (“The Complainant registered its trademark TIMET with the [UK]IPO, OHIM and UPTSO...as evidenced in Annex 8 to the Complaint. The Panel therefore accepts that the Complainant is the owner of and has exclusive rights in the trademark TIMET.”).
Within the disputed domain name, , the Respondent has added “lounge” and “.com” to the Complainant’s DISHOOM mark. While nullifying the contention that the name and mark are identical, this maneuver fails to avoid a finding that the name is confusingly similar to that mark, in the Panel’s view. Moreover, the inclusion of a suffix such as “.com” is mandatory with respect to domain names and thus not relevant in determining whether a disputed domain name is identical or confusingly similar to an established mark. Therefore, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s service mark. See, Virgin Enterprises Limited v. Syed Hussain,WIPO Case No. D2012-2395 (where was found to be confusingly similar to the VIRGIN MONEY trademark); Apple Inc. v. Contact Privacy Inc. / Grand Slam Co.,WIPO Case No. D2012-0844 (finding “” to be confusingly similar to the IPOD mark).
The Panel finds that the Complainant has satisfied the first element required under the Policy. B. Rights or Legitimate Interests
The Panel has found that the disputed domain name is confusingly similar to the Complainant’s valid service mark. Additionally, the Complainant has asserted that it has no affiliation with the Respondent and has not licensed or authorized the Respondent to use that mark for any purpose. As a result, the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It is now incumbent upon the Respondent to rebut this prima facie case with clear evidence that it does possess such rights or interests. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1, stating, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”; OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (“...the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing.”).
Failing to file a Response, the Respondent has presented no evidence to the Panel. Therefore, the Panel is left to examine the remainder of the record in this case, including the Complaint, whose reasonable contentions will be accepted as true by the Panel, to determine whether there is any rationale available to deny the Complainant’s prima facie case. See, Associazione Radio Maria v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2009-0263 (“Because no Response has been received, the Complainant’s direct factual assertions are undisputed and accepted as true.”); Randstad General Partner (U.S.), LLC v. Domains For Sale For You,WIPO Case No. D2000-0051.
In conducting its examination, the Panel will use the three criteria enumerated in Policy paragraph 4(c) as a guide to the Respondent’s possible rights and interests in the disputed domain name. The Panel accepts as true the Complainant’s contention that the disputed domain name resolves to a website that appears to offer restaurant/bar services that mirror those offered by the Complainant. In agreement with countless prior UDRP decisions, the Panel concludes that such usage does not constitute a “bona fide offering of goods or services” per Policy paragraph 4(c)(i). See, The Winetasting Network v. 1-800wineshop,WIPO Case No. D2005-0731 (“...to use the disputed domain name, which fully incorporates [the complainant’s] mark, to offer competing goods and services...albeit for commercial purposes, is not bona fide within the meaning of paragraph 4(c)(i) of the Policy.”); 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 noncommercial or fair use pursuant to Policy.”). Moreover, the Panel detects no reason to believe that the Respondent, Kaushal Sharma, has been commonly known as , so Policy paragraph 4(c)(ii) is also inapplicable to this case. Finally, since the Panel has agreed with the Complainant’s contention that the Respondent is using the disputed domain name in conjunction with a website that seeks to market services for profit, Policy paragraph 4(c)(iii), which refers to “legitimate noncommercial or fair use” of a disputed domain name, fails to come into play. Therefore, as none of the criteria in paragraph 4(c) apply, the Panel must conclude that the Complainant’s prima facie case stands.
The Panel finds that the Complainant has satisfied the second element required under the Policy. C. Registered and Used in Bad Faith
Policy paragraph 4(b)(iv) lists a circumstance that, if found to obtain by the Panel, compels a finding of bad faith registration and use of a disputed domain name, as follows:
“by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In this regard, the Respondent’s addition of the dictionary term “lounge” to the Complainant’s DISHOOM mark in the disputed domain name is likely to cause particular confusion because it relates directly to the restaurant or cafe services that are offered by the Complainant under its DISHOOM service mark. As noted above, the Panel has accepted the Complainant’s contention that the Respondent is employing the disputed domain name to host a website that offers restaurant/bar services to Internet users. Moreover, the Panel accepts the Complainant’s observation that the Respondent’s website is similar in design to the Complainant’s business website, including the listing of prices for various items. Therefore, the Panel concludes that the Respondent intends to derive commercial gain based upon likely Internet user confusion between the disputed domain name and the Complainant’s service mark (since they are confusingly similar) as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. As a result, the Panel determines that the Respondent registered and is using the disputed domain name in bad faith under Policy paragraph 4(b)(iv). See, Cigna Intellectual Property, Inc. v. Yun Sung Lee,WIPO Case No. D2003-1042 (“By advertising products which might be generally associated with the Complainant’s mark, it appears that the Respondent is attempting for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant’s mark.”); Benchmark Staffing, Inc. v. Benchmark Jobs, LLC,WIPO Case No. D2001-0663 (“...Respondent is using the disputed domain name that is confusingly similar to Complainant’s mark and website name to direct Internet users to a website offering competing services...This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.”).
The Panel finds that the Complainant has satisfied the third element required under the Policy. 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 the Complainant.
Dennis A. Foster
Sole Panelist
Date: January 26, 2018
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