The Complainant is Dishoom Limited, United Kingdom, represented by Dechert LLP, United Kingdom.
The Respondent is WhoIs Guard, Inc., Panama / Gabriella Garlo, Brazil. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 8, 2021, 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 February 16, 2021, 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 February 19, 2021. 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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 29, 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 Launched in 2010 in the United Kingdom, the Complainant operates a restaurant and bar with a concept based on the traditional Bombay cafés in India. The Complainant presently has 5 locations across London, as well as locations in Edinburgh, Manchester and Birmingham. The Complainant has received numerous awards and has been listed in the Good Food Guide every year from 2012 to 2019 as well as in the Michelin Guide from 2012 to 2020. Moreover, the Complainant has been the subject of significant press coverage in the United Kingdom and worldwide. The Complainant owns numerous trademarks in jurisdictions worldwide, including in Brazil, where the Respondent purportedly resides. The following are several of the many registered trademarks: DISHOOM, European Union Trade Mark Registration No. 007404239, registered on June 10, 2009 in international classes 29, 30, 35 and 43; DISHOOM, United Kingdom Trade Mark Registration No. 2468689, registered on March 7, 2008 in international classes 18, 25, 29, 20, 21, 32, 33 and 43; DISHOOM, Brazilian Trade Mark Registration No. 908397607, registered on October 6, 2014 in international class 43; and DISHOOM, United States of America Registration No. 5,440,637, registered on April 10, 2018 in international class 43. The aforementioned trademarks will hereinafter collectively be referred to as the “DISHOOM Mark”. The Disputed Domain Names were both registered on December 21, 2020 and resolve to landing pages that contain third party pay-per-click sponsored links to restaurants and food delivery services. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Names are confusingly similar to the Complainant’s DISHOOM Mark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and, - the Disputed Domain Names were registered and are being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (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 in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks. It is uncontroverted that the Complainant has established rights in the DISHOOM Mark based on its years of use as well as its registered trademarks for the DISHOOM Mark in jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the DISHOOM Mark. The Disputed Domain Names Finally, the addition of a gTLD such as “.shop” or “.store” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See JD Sports Fashion (France) S.A.S. v. Contact Privacy Inc. Customer 0153747917 / Elodie Guetes, Chausport,WIPO Case No. D2019-0312, O2 Worldwide v. Domains By Proxy, LLC / Martin Ulbrich,WIPO Case No. D2020-0033, and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s DISHOOM Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Names or by any similar name. Moreover, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Finally, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Names to resolve to websites that contain pay-per-click links, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. Panels have found that use of a domain name to redirect a domain name to third-party websites for commercial gain does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See F. Hoffmann-La Roche AG v. Dean Gagnon,WIPO Case No. D2007-1009 (“The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services.”). Applying the principles under paragraph 4(c) of the Policy, panels have found that the use of a domain to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. In this instance, the Disputed Domain Names resolves to such parked pages, including links to restaurants and other similar services associated with those of the Complainant. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. Based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Names in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s DISHOOM Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. The Respondent’s registration and use of the Disputed Domain Names indicate that such registrations and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its DISHOOM Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain.”). Further, the Respondent attracts users for commercial gain by displaying third-party pay-per-click sponsored links. Use of confusingly similar domain names to display third party hyperlinks and collect click-through fees is evidence of bad faith under Policy paragraph 4(b)(iv). Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Therefore, the Panel finds that the Respondent registered and is using the Disputed Domain Names in bad faith to target the Complainant’s DISHOOM Mark for financial gain. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: April 11, 2021
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