Wagamama Limited v. Park Hae Dong, Hae Dong Limited
Case No. D2008-0301
1. The Parties
The Complainant is Wagamama Limited, London, United Kingdom of Great Britain and Northern Ireland , represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Park Hae Dong, Hae Dong Limited, Kyeong Buk, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <wgamama.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On March 5, 2008, CSL Computer Service Langenbach GmbH dba Joker.com 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”), 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 the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on April 22, 2008. 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. The Panel is satisfied that, based on the various methods employed to provide the Respondent with notice of the Complaint and the Respondent’s obligation under its registration agreement to maintain accurate and current contact information, the Center took all reasonable steps to notify the Respondent and that it has discharged its responsibility under paragraph 2(a) of the Rules.
4. Factual Background
The Complainant was incorporated on April 29, 1991 and first began trading as “Wagamama” in 1992 from premises in Bloomsbury, London. The Complainant has used the trade mark WAGAMAMA for over 15 years in connection with the operation of noodle restaurants and the sale of food generally. The Complainant maintains a large portfolio of trademarks registered in many countries.
The Complainant currently operates 56 noodle restaurants in the UK and a further 33 worldwide, including locations in the United States of America, Australia, Dubai, Egypt, New Zealand, Switzerland, Denmark, Belgium, Ireland, Cyprus, Turkey and Amsterdam. In past year the Complainant served approximately 6.4 million customers in the United Kingdom alone.
In 2006-2007 the Complainant spent approximately £1.2 million on marketing and promoting goods and services under the WAGAMAMA brand. The Complainant has won numerous awards, including “Zagat’s Most Popular London Restaurant 2007”.
The Complainant wrote to the Respondent on January 22, 2008, requesting that the Respondent transfer the domain name to the Complainant. No response was received.
The Respondent registered the dispute domain name on November 30, 2007.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the disputed domain name seeks to take advantage of Internet users who miss key when typing the Complainant’s domain name. It is the Complainant’s contention that the omission of the first “A” in the mark does not alter the Complainant’s trade mark in any significant way and that the disputed domain name is accordingly confusingly similar to the Complainant’s WAGAMAMA trade marks.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant asserts that due to its reputation built on 15 years of operation it is reasonable to assume that the Respondent must have known of the Complainant at the time it registered the disputed domain name.
The Complainant asserts that it has not licensed or otherwise permitted or authorised the Respondent to use its trade mark or to apply for a domain name incorporating any such mark. The Respondent’s name does not include WAGAMAMA. In addition, the website at the disputed domain name suggests that the Respondent is trading as “Express Herbals”, which name does not include the word “wagamama” or anything similar.
The Complainant contends that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Although there is a website at the disputed domain name which makes a commercial offering, the nature of the offering cannot legitimately be said to be bona fide. There is no obvious reason why the disputed domain name has been selected by the Respondent for the website, leading to the suggestion that it was selected to trade off the fame of the Complainant’s WAGAMAMA trade marks. In this regard the Complainant relies on the decision in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847 in which the Panel held that such a use was not bona fide. The Complainant considers that the Respondent cannot argue, under paragraph 4(c)(iii) of the Policy that it is making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish its trade marks. In fact, quite the opposite could be said – the disputed domain name is being used for commercial gain and in a manner that is highly likely to tarnish the Complainant’s trade mark.
The domain name was registered and is being used in bad faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith because the disputed domain name was registered some 15 years after the Complainant first started trading under the name “Wagamama” and the Complainant has substantial goodwill and reputation in its trade mark. According to the Complainant, in the absence of any legitimate interests in the disputed domain name, its registration by the Respondent, and its subsequent use of it, cannot have been in good faith.
Also, in line with paragraph 4(b)(iv) of the Policy, the Respondent is using the disputed domain name intentionally to attract for commercial gain internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location. Given that the Complainant is a well-known restaurant chain and that the Complainant has significant goodwill and reputation in the trade mark WAGAMAMA, it is inevitable that Internet users will be confused into believing that any website at the disputed domain name is registered to, operated or authorised by the Complainant.
Finally, the nature of the adult offering (herbal supplements which claim to enlarge the male genitalia) being made through the disputed domain name (in which the Respondent has no legitimate interests) is likely to cause tarnishment and dilution of the Complainant’s trade marks and be disruptive to the business of the Complainant as many Internet users will find it offensive.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of a portfolio of registered trade marks related to WAGAMAMA. The marks are registered in a number of countries including the United Kingdom, Europe and Republic of Korea (where the Respondent is located). The earliest mark was registered in the United Kingdom on June 25, 1992.
The Respondent’s disputed domain name differs from the Complainant’s mark by simply one letter. In the disputed domain name the first “a” is omitted. The Panel finds that the Respondent is obviously engaging in deliberately misspelling a known trademark - a practice commonly known as “typosquatting”. The practice has been condemned by many panels and found to be confusingly similar to the marks which they mimic.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the word “wgamama”. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Complainant has provided evidence that the Respondent’s website clearly demonstrates that it is promoting “express herbals” and makes no reference to “wgamama” or “Wagamama”. In other words, the only logical reason the disputed domain name has been selected by the Respondent for the website would appear to be to trade off the fame of the Complainant’s WAGAMAMA trade marks. A similar outcome was arrived at in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com” (supra). In that case the panel found that although the word “Madonna” has an ordinary dictionary meaning not associated with the complainant, nothing in the record supports a conclusion that respondent adopted and used the term “Madonna” in good faith based on its ordinary dictionary meaning. The panel found that the name was selected and used by respondent with the intent to attract for commercial gain Internet users to respondent’s website by trading on the fame of the complainant’s mark. The panel concluded that use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services.
Accepting that the Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade mark or to apply for a domain name incorporating any such mark, the evidence before the Panel is that the Respondent has used the domain name to derive a commercial benefit.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. A circumstance illustrated in part (iv) of that paragraph relevant to this case is where by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 website or location or of a product or service on the respondent’s website or location.
As suggested in the Complainant’s contentions above, bad faith registration and use exists because many Internet users seeking the Complainant’s site would find the Respondent’s website offensive and, therefore, likely to cause tarnishment and dilution of the Complainant’s trademarks. The nature of a website (whether pornographic or otherwise) was considered in Christian Dior Couture v. Paul Farley,
WIPO Case No. D2008-0008. The panel stated that if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark then the result would be bad faith use. As in that case, this Panel has no doubt that the Respondent’s website is of a kind that would tarnish the Complainant’s marks if it were confusingly linked to those marks.
From another perspective, it is the Panel’s view that common with other instances of typosquatting domain names, there is a deliberate intention in this case to ride on the back of the Complainant’s goodwill and trade mark to attract Internet users for commercial gain.
Finally, the Panel agrees with the Complainant that in the absence of any legitimate interests in the disputed domain name, its registration by the Respondent, and its subsequent use of it, cannot have been in good faith.
Based on the above, the Panel finds that the disputed domain name was registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wgamama.com> be transferred to the Complainant.
Ross Wilson Sole Panelist
Dated: May 6, 2008
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