WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zomato Media Private Limited v. Pritpal Singh, Galaxzi Pty Ltd

Case No. DAU2018-0031

1. The Parties

The Complainant is Zomato Media Private Limited of New Delhi, India, represented internally.

The Respondent is Pritpal Singh, Galaxzi Pty Ltd of Melbourne, Australia.

2. The Domain Name and Registrar

The disputed domain name <zomato.com.au> (“Domain Name”) is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2018. On October 22, 2018, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On October 23, 2018, GoDaddy.com, LLC 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 November 6, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2018.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 10, 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.

4. Factual Background

The Complainant is an Indian company that operates a website from “www.zomato.com” (“Complainant’s Website”) that allows users to interact and share photos, reviews and menus from restaurants and other food providers. The Complainant’s Website, first established in 2010, provides information on over one million restaurants in over 24 countries.

The Complainant has registered word mark ZOMATO (the “ZOMATO Mark”) in Australia since February 6, 2013 (trade mark number 1539399 for goods and services in classes 16, 35, and 43).

The Domain Name, <zomato.com.au>, was registered on April 8, 2013. It is presently inactive and there is no evidence that it has ever resolved to an active website.

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 ZOMATO 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 subsequently being used in bad faith.

The Complainant is the owner of the ZOMATO Mark, having registered this mark in numerous jurisdictions including Australia. The Domain Name is confusingly similar to the ZOMATO Mark as it wholly incorporates the ZOMATO Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has no licence or right to use the Domain Name and has never been granted any permission by the Complainant for the registration of the Domain Name. The Respondent is not making a bona fide offering of goods and services from the Domain Name or making a legitimate or noncommercial or fair use of the Domain Name; indeed the Respondent refuses to use the Domain Name.

The Domain Name was registered and is being used in bad faith. The ZOMATO Mark is well known in Australia and it is inconceivable that the Respondent was unaware of the mark when the Domain Name was registered. The Domain Name is being used by the Respondent to mislead customers when they visit its website, a website with no connection to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have a name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.

The Complainant is the owner of the ZOMATO Mark, having registrations for the ZOMATO Mark as a trademark, inter alia, in Australia. Disregarding the “.com.au” elements as a necessary part of a domain name, the Domain Name is identical to the ZOMATO 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, is to be taken to 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 subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ZOMATO Mark or a mark similar to the ZOMATO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Indeed there is no evidence of use of the Domain Name at all.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 registrations to another person, for valuable consideration in excess of its 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 name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; 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 name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on Respondent’s website or location.; or

(v) if any of the Respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.

The Panel notes that the Policy requires that a complainant show that a respondent registered or subsequently used the Domain Name in bad faith.

The Panel finds that the Respondent was aware of the Complainant and its reputation in the ZOMATO Mark at the time the Domain Name was registered. Under the Policy, the Domain Name is considered practically identical to the Complainant’s <zomato.com> domain name, in use since 2010. Given that “zomato” is not a descriptive or generic word, there is no obvious reason, nor has the Respondent chosen to provide one, for the registration of the Domain Name other than to take advantage of the Complainant’s reputation in its ZOMATO Mark. In the circumstances, the Respondent’s conduct in registering the Domain Name when it was surely aware of the Complainant’s rights, and lacked rights and legitimate interests of its own, amounts to registration in bad faith.

The fact that the Domain Name has not yet been linked to an active website does not prevent a finding that it has been used in bad faith. In circumstances where the Respondent registered a domain name that was essentially identical to the Complainant’s Website at “www.zomato.com” and in the absence of any alternative explanation for its conduct, the Panel finds that the Respondent registered the Domain Name and has continued to passively hold the Domain Name in order to prevent the Complainant, being the owner of the ZOMATO Mark, from reflecting its mark in a corresponding domain name. This amounts to registration and use of the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 <zomato.com.au> be transferred to the Complainant.¹

Nicholas Smith
Sole Panelist
Date: December 14, 2018

¹ The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trademark that corresponds to the Domain Name, being the ZOMATO Mark, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.