The Complainant is Dishoom Limited, United Kingdom, represented by Dechert, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / S Jon Grant, United States of America (“United States”) 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2020, 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 November 13, 2020. 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 November 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 4, 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 The Complainant is an English company which operates restaurants in 5 locations across London. The Complainant owns the following trademark registrations, among others: Trademark Registration Number Registration Date Classes Jurisdiction DISHOOM 007404239 June 10, 2009 29, 30, 35, 43 European Union DISHOOM 2468689 March 7, 2008 18, 25, 29, 30, 31, 32, 33, 43 United Kingdom DISHOOM 5440637 April 10, 2018 43 United States The disputed domain name The Complainant argues the following: That in 2010 it launched a unique restaurant and bar concept based upon the traditional Bombay cafés in India. That it operates restaurants in London, Edinburgh, Manchester, and Birmingham. That it has been remarkably successful, and that it’s recognized by the public and the food and restaurant industry alike, having received numerous awards, and having been frequently referred to in global media. The disputed domain names are identical or confusingly similar to the Complainant’s trademarks. That the disputed domain names are confusingly similar to the Complainant´s trademark DISHOOM, as they incorporate said trademark in its entirety. That the distinctive component of the disputed domain names corresponds to the Complainant’s trademark. That it is standard practice to disregard the generic Top-Level Domain, including new generic Top-Level Domains (“gTLDs”). That the terms “delivery” and “menu” are indicatives of the services for which the Complainant has developed goodwill and reputation under its trademark DISHOOM. That the term “delivery” describes the Complainant’s recently launched delivery service. The Respondent has no rights or legitimate interests in the disputed domain names. That the Complainant has not licensed, permitted, or authorized the Respondent to use its trademark, or to apply for domain names incorporating said trademark. That the Respondent registered the disputed domain names approximately three weeks after the Complainant launched its food delivery service as result of the COVID-19 lockdown in the United Kingdom. That the Complainant has extensively advertised its new delivery service. That due to the reputation of the Complainant, the Respondent knew of the Complainant at the time when the disputed domain names were registered. That the disputed domain name That the disputed domain name That the disputed domain names appear to redirect to various third-party web sites that either contain PPC links or that appear to be associated to phishing or malware, for profit. That the disputed domain names are not being used in connection with either a good faith offering of goods or services, or the operation of a business. That the Respondent chose the disputed domain names because he knew that the trademark DISHOOM was well-known and associated with the Complainant. That the use of the trademark DISHOOM in the disputed domain names would create an association with the Complainant’s business. The disputed domain names were registered and are being used in bad faith. That the Respondent registered the disputed domain names to unfairly benefit from the Complaint’s trademark rights. That using the disputed domain names to promote similar or identical services to the services offered by the Complainant is evidence that the Respondent registered the disputed domain names with knowledge of the Complainant and its trademark DISHOOM. That the Respondent’s primary intent, therefore, was to trade off the value of the Complainant’s use of said trademark. That the Respondent has registered the disputed domain names primarily for the purpose of disrupting the Complainant’s business. That the Respondent’s use of the trademark DISHOOM in the disputed domain names, which is to automatically redirect online users to third-party web sites, for commercial gain, is an indication of bad faith use. That the Respondent operated the disputed domain names intentionally to attract internet users to his web sites or other online locations by creating a likelihood of confusion with the trademark DISHOOM as to the source, sponsorship, affiliation or endorsement of said web sites. That due to the international reputation of the Complainant’s trademark, it is inevitable that Internet users will be confused when presented with the disputed domain names. That the mere registration of the disputed domain names by the Respondent and not by the Complainant is diluting the uniqueness of the trademark DISHOOM. That the disputed domain names have not been used for any legitimate purpose. That the disputed domain names are confusingly similar to the Complainant’s trademark, and that such confusion will inevitably result in the diversion of internet traffic from the Complainant’s site to the Respondent’s sites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain names are 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 with respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel can decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark DISHOOM in various jurisdictions, including the United States, where the Respondent has declared to have his place of residence. The disputed domain names are confusingly similar to the Complainant’s trademark DISHOOM, as they incorporate said trademark in its entirety. The addition of the gTLD “.delivery” to the disputed domain name The terms that conform the abovementioned gTLDs, i.e. “delivery” and “menu” do not prevent a finding of the disputed domain names being identical to the Complainant’s trademark DISHOOM under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Rakuten Kobo Inc. v. World Public Library,WIPO Case No. D2016-1708; Tonino Lamborghini s.p.a. Mr. Tonino Lamborghini v. Samvel R Yusufiants,WIPO Case No. D2017-1112). Thus, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is 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 Complainant made a prima facie case asserting that the Respondent lacks rights or legitimate interests in the disputed domain names. Furthermore, the Complainant has established that it has not licensed, permitted, or authorized the Respondent to use the trademark DISHOOM, or to apply for domain names incorporating it. None of these affirmations were challenged by the Respondent. Moreover, there is no evidence comprised in the case showing that the Respondent has been commonly known by the disputed domain names, nor that he has any association with the Complainant’s trademark DISHOOM (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent’s election of the disputed domain names, which are identical to the Complainant’s trademark DISHOOM, in combination with the gTLDs “.delivery” and “.menu” suggests that the Respondent has targeted the Complainant, its trademark and its business. Therefore, the Respondent’s conduct cannot be considered to conform a legitimate noncommercial or fair use of the disputed domain names as the composition of the disputed domain names carries a risk of implied affiliation (see Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,WIPO Case No. D2020-1344; Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; see also Abbott Laboratories v. Hola Domains / Hola Dominios Limitada,WIPO Case No. D2017-2463; Mecenat Aktiebolag v. C/O Alpnames Limited / Edouard,WIPO Case No. D2018-1366; and section 2.5.1 of the WIPO Overview 3.0). Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Complainant has established its rights over the DISHOOM trademark internationally, including the United States where the Respondent has declared to have his domicile. Moreover, the dates of registration of the Complainant’s trademark significantly precede the date of registration of both disputed domain names. The Complainant has argued that its trademark DISHOOM is recognized by the public and the food and restaurant industry, and has submitted evidence that supports this claim. Based on this evidence, it is reasonable to determine that the Complainant’s trademark is well positioned in its market, and among consumers. Therefore, and considering that the Respondent chose to combine the trademark DISHOOM with gTLDs such as “.delivery” and “.menu”, which clearly make reference to the Complainant’s services, this Panel is of the opinion that the Respondent knew about the Complainant, its trademark DISHOOM and its business when he registered the disputed domain names. Therefore, this Panel finds that the Respondent registered the disputed domain names in bad faith to take advantage of the Complainant’s trademark (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980). The Complainant has also affirmed and proven that the Respondent has used the disputed domain name Therefore, the third element of the Policy has been met. 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 names Kiyoshi Tsuru
Sole Panelist
Date: January 22, 2021
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