The Complainant is M/S Adyar Ananda Bhavan Sweets & Snacks of Chennai, India, represented by Altacit Global, India.
The Respondent is Anitha Gounder of Queens, New York, United States of America (“United States” or “US”), represented by Scully, Scott, Murphy & Presser, P.C, United States.
The disputed domain name <adyaranandabhavanny.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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.
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 August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. The Center received an email communication from the Respondent on August 8, 2017. On August 23, 2017, the Center received an email communication from the Respondent requesting a four calendar day extension for response. On the same day, the Center granted the four calendar day extension for response. The Response was filed with the Center on September 1, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 13, 2017. 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.
On October 6, 2017 the Panel issued a Procedural Order, which provided as follows:
“The Panel has reviewed the Complaint and the Response.
The Panel orders each party to provide an additional submission by October 13, 2017, not exceeding 1500 words in length, explaining:
(a) what (if anything) they contend the words Adyar Ananda Bhavan mean;
(b) the Complainant’s submission should also explain if it can how or why the words Adyar Ananda Bhavan were chosen as part of its business name;
(c) the Respondent’s submission should explain how or why the words Adyar Ananda Bhavan were chosen as the name of her company and restaurant and should annex a statement, made under oath, by the Respondent, as to whether or not she knew of the Complainant and/or its business prior to registering the disputed domain name. If she did know it should also explain the basis on which she considered it appropriate to use the words notwithstanding the Complainant was using the same words as part of its name; and
(d) either party may also if it wishes make submissions as to the timing of trademark applications/registrations by the parties, including in the United States Patent and Trademark Office, and as to the relevance of such registrations regarding this administrative proceeding particularly in respect of any applications/registrations filed/obtained after the date that the disputed domain name was obtained.”
Each Party filed further statements and evidence in response to this order. The Panel admits those statements.
The Complainant is an Indian company. It describes its business as being a chain of restaurants specializing in Indian cuisine headquartered in Chennai in the State of Tamil Nadu, India. It commenced its business in 1988 as a confectionery supplier and now has 75 branches all over India. Further details as to the Complainant’s business are discussed below.
The Complainant says it owns Indian registered trademark No 1225607 granted on August 21, 2005 which is a device mark and which is reproduced below. This trademark as exhibited at Exhibit 6 to the Complaint is shown as registered in the names of “KOTTA MUKKLA TIRUPATHI RAJA SRINIVASA RAJA KOTTA MUKKLA TIRUPATHI RAJA VENKATESAN, TRADING AS ADYAR ANANDA BHAVAN SWEETS & SNACKS”. The Complainant is described as a “partnership firm” in the Complaint and it may be (the Panel does not know) that this registration is in the name of the underlying partners. Given that the Respondent accepts this is the Complainant’s trademark (the Response states “Accordingly, it appears that Complainant has rights, for the purpose of bringing this action, on the basis of its Indian trademark registration for the logo mark AAB Adyar Ananda Bhavan SWEETS & SNACKS mark shown in Exhibit 6 to the Complaint …”) the Panel will proceed on the basis that this is the Complainant’s registered trademark. It is referred to in this decision as the “Indian Trademark”.
The Complainant also has pending applications for various other trademarks in many jurisdictions including the words “ADYAR ANANDA BHAVAN”. These were filed on various dates, with the earliest such date being November 21, 2015. These are discussed further below.
The Complainant owns various domain names involving the term “adyar ananda bhavan”, including for example <adyaranandabhavan.info>, <adyaranandabhavan.in>, and <adyaranandabhavan.org>.
The Respondent is the founder of a US company called Adyar Ananda Bhavan, Corp., a New York corporation, which was formed on June 14, 2013. The Respondent registered the Disputed Domain Name on October 2, 2013. The Respondent’s company operates an Indian restaurant in New York which trades as ADYAR ANANDA BHAVAN and the Disputed Domain Name is linked to a website promoting its business. No evidence has been provided as to the size of the business. The Respondent applied for a US trademark in respect of the words ADYAR ANANDA BHAVAN. That application was filed on May 28, 2015 and was published for opposition on December 13, 2016. No opposition was filed and the trademark issued as registration No 5,288,499 on September 19, 2017 (which was subsequent to the date the present Complaint was filed). The trademark records that the English translation of the words ADYAR ANANDA BHAVAN is “big happy place” which is of some significance for reasons discussed below.
The Complainant’s case is in summary as follows.
a) The Disputed Domain Name is similar to its Indian Trademark and to its other pending trademark applications. It is also similar to the term “ADYAR ANANDA BHAVAN” in which it has extensive goodwill and common law rights.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as it is being used to confuse consumers into believing the Respondent’s business is that of the Complainant or is authorised or approved by the Complainant. The Complainant says that its reputation is worldwide and the Respondent is seeking to attract customers who are part of what it describes as the “Indian Diaspora” and who believe the Respondent’s restaurant is connected to the Complainant.
The Complainant goes on to make a number of further arguments. To the extent relevant these are addressed in the discussion below.
The Respondent’s has filed a lengthy and detailed Response and a Supplemental Response. Her case is as follows.
She admits the Complainant has Rights in the Indian Trademark but denies that the Disputed Domain Name is confusingly similar to that trademark. She denies the Complainant has any other rights and criticizes the Complainant’s evidence in this regard.
She says that she has established a legitimate interest in the Disputed Domain Name by virtue of having established a bona fide business before receiving any notice of the present dispute. She says in a sworn statement she had no knowledge of the Complainant and its business when she chose the name of her restaurant. She does however say she was aware of a previous US entity, which by then had been dissolved, which had essentially the same name as the Complainant. This is discussed below.
She denies acting in bad faith. The detailed arguments she advances on this issue are to the extent relevant discussed further below.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Indian Trademark is reproduced above.
It seems quite clear to the Panel that although this is a device mark the dominant feature of the Indian Trademark is the words ADYAR ANANDA BHAVAN. How is this trademark to be compared to the Disputed Domain Name? WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) addresses this issue as follows:
“1.10 How are trademark registrations with design elements or disclaimed text treated in assessing identity or confusing similarity?
Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element.”
In the present case the Panel adopts this approach and holds that the words ADYAR ANANDA BHAVAN are the dominant textual element of the Indian Trademark. In those circumstances it seems to the Panel beyond any reasonable argument that the Disputed Domain Name is confusingly similar to the Indian Trademark. The Respondent’s arguments to the contrary appear to be based on the fact that the Indian Trademark also contains a separate element involving the letters AAB, and also the words “Sweets and Snacks”. The Panel does not follow this reasoning – the words ADYAR ANANDA BHAVAN are clearly the most prominent feature of the Indian Trademark, and the letters AAB are in any case simply an acronym for those words and the words “sweets and snacks” are descriptive elements. The Panel rejects the Respondent’s arguments in this regard.
The Panel considers the Disputed Domain Name to be confusingly similar to the Indian Trademark given that it takes the dominant textual element of that trademark and then adds the letters “NY”, a common geographical abbreviation for New York. It is established that the addition of a descriptive term (such as here “ny”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
In the light of the above finding the Panel has not found it necessary to consider the subsequent pending trademark applications that the Complainant has for the words ADYAR ANANDA BHAVAN all of which were applied for after the Respondent registered the Disputed Domain Name. The Panel does however also find that the Complainant had established common law rights in the words ADYAR ANANDA BHAVAN as its trading name in India. Evidence has been provided of a substantial business.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Indian Trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
The Respondent says that she has rights and legitimate interest in the Disputed Domain Name as the following provisions of the Policy apply:
- Before any notice to the Respondent of the dispute, the Respondent was using the Disputed Domain Name in connection with a bona fide offering of services (paragraph 4(c)(i) of the Policy).
- The Respondent has been commonly known by the Disputed Domain Name (paragraph 4(c)(ii) of the Policy).
The Panel will first consider whether paragraph 4(c)(i) applies. The Panel has not found resolving this issue to be straightforward. There is no doubt that the Respondent has been operating her restaurant business under the name ADYAR ANANDA BHAVAN for several years before receiving the present complaint. Clearly then paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? In the present case as a matter of initial impression it seemed to the Panel unlikely that the combination of three Indian words would be independently chosen by the Respondent. However evaluating this issue depends on understanding what these words mean. Curiously in the Complaint and Response as originally filed neither party felt it necessary to provide the Panel with this information. As set out above, the Panel issued a Procedural Order directed at this issue. It transpires that the parties are broadly in agreement as to the meaning of ANANDA BHAVAN. The Complainant says it means “happy house” in Tamil and the Respondent says it means “happy house” or “happy place”. The parties do not seem to be in agreement as to the meaning of ADYAR. The Complainant says that the term “Adyar” is the name of a river and a particular neighbourhood adjoining that river in Tamil Nadu, India. The Respondent says “Adyar” derives from the Tamil word “adai” and means “big” or “congested” or “gathering” and hence the name of her restaurant means “big happy house”. In evaluating these contentions the Panel notes that the factual existence of the Adyar River can be readily established. The Respondent’s contention is not supported by any evidence (e.g. dictionary entries or the like) and the Panel has no means of assessing whether it is correct or not. The Panel does however note that the Respondent’s US trademark (above) records that the English translation of the words ADYAR ANANDA BHAVAN is “big happy place” which tends to corroborate what the Respondent now says.
It does not seem to the Panel that these words, as translated, are generic or descriptive and so it still seemed to the Panel unlikely that the Respondent would have independently derived the name she chose, although not perhaps impossible (the Complaint itself says that it was “highly unlikely” that the Respondent was unaware of the Complainant). At the least it seems to the Panel the coincidence between the Respondent’s chosen business name and that of the Complainant raises at least an inference that the Respondent chose her name with knowledge of the Complainant or its business. Does the Respondent rebut that inference? In addressing this issue the Panel proceeds on the following basis.
The Complainant has established it has a substantial reputation in India. It has not established by credible evidence that it has any reputation anywhere else. The Complaint does contain a reference to a branch in New Jersey – this is set out in a single sentence which reads “Hence, its new branch at New Jersey, USA, was met with much approval and has steadily gained popularity”. No further details of this branch are provided nor is there any other evidence about it. The Panel discounts this reference, particularly given the reference to it being a “new” branch which presumably post-dates the Respondent’s establishment of her business and as such it does not seem relevant.
Whilst the Complaint contains a number of conclusory statements to the effect that the Complainant’s reputation is worldwide all the evidence that the Complainant has provided as to its fame and reputation are directed at its business in India. There is no other evidence that establishes the Complainant has any reputation outside India.
There is no evidence (apart from the Disputed Domain Name itself) that the Respondent is seeking to confuse customers into thinking her business is connected with that of the Complainant. The website linked to the Disputed Domain Name is a simple website comprising a few pages providing no more than a menu and location details. Nothing on it suggests that the Respondent is deliberately targeting the Complainant or its reputation.
The Respondent says in a sworn statement that “when I, along with my business partners and associates, first decided to name the restaurant we were opening, we considered many other names with the word "bhavan" contained therein, including Vasantha Bhavan, Balaji Bhavan and Aryia Bhavan, before ultimately landing on the final name, which was Adyar Ananda Bhavan”. The Panel notes that no corroboration of this account has been provided from any of the business partners or associates mentioned. The Respondent then goes on to say “The name of restaurant was selected to reflect the hopeful nature of the restaurant in that it is supposed to be a happy or joyful place, referencing the wording "ANANDA BHAVAN", and that the restaurant is located in the "congested" or "clogged" location of New York City, as suggested by the word ADYAR. The Panel notes this account of why the term “Adyar” was chosen seems to be somewhat different to the translation provided on the Respondent’s US trademark which simply refers to “big happy place”.
The Respondent then says the following: “subsequent to selecting the name, I learned that there was an entity named Adyar Anada Bhavan Sweets & Snacks Inc. that was filed with the Secretary of State of New York on June 12, 2007, and dissolved on July 27, 2011. In light of the fact that this entity was dissolved when the availability search was conducted in 2013, I elected to form the corporation, Adyar Ananda Bhavan, Corp., and subsequently filed the disputed domain name capturing the selected corporate/restaurant name while adding the "ny" suffix to reference the place where Respondent's restaurant was, and is, located”. The Respondent exhibits the relevant extract from New York records showing the corporate details she describes.
This seems very odd. This corporate entity was presumably something to do with the Complainant but no details about it have been provided by the Complainant. What was it, what did it do (if anything) and why was it dissolved? The Panel does not know. As a matter of evidence going to the Respondent’s knowledge it seems to the Panel to cut two ways. On the one hand it establishes that a previous user of substantially the same name had existed but was now dissolved and that fact could reasonably lead the Respondent to conclude that she was free to proceed with her choice of name. On the other hand the Panel would have thought it likely that the Respondent would have been surprised at the unlikely coincidence of a previous corporation which had exactly the same three words in its name and that would at least have prompted her to make further enquiries, if only in the form of typing that name into a search engine. Had she done so it seems likely to the Panel she would have discovered the Complainant and its business. Of course having done so she might have concluded its business was entirely based in India and of no relevance to her chosen name. That is not however her case as she goes on to say in her sworn statement: “I had no awareness of Complainant or its business in India at the time I selected the disputed domain name, and only knew of the expired business name, Adyar Anada Bhavan Sweets & Snacks Inc., located in the New York secretary of state records”.
The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corroborative or third party evidence. Is this such a case? The Panel has not found it easy to reach a conclusion on this issue. The Respondent’s evidence does seem surprising, but so too is the emergence, in the Respondent’s supplemental response, of the unexplained previous existence of a New York corporation with in effect the same name as the Complainant’s name, which was dissolved before the Respondent chose her business name. On balance it seems to the Panel that the Respondent being aware of this entity, and the fact that it no longer existed, may be sufficient to have allowed her to conclude that she was free to adopt the name for her own use. If that was so then her actions were, in the opinion of the Panel, bona fide within the meaning of paragraph 4(c)(i) of the Policy. That being the case the Panel does not feel it is necessary to conclude on whether or not the Respondent has rebutted the inference she knew of the Complainant or its business when choosing her business name.
Ultimately these are matters that are much more suitably resolved in a court of law, where procedures such as disclosure, oral testimony and cross-examination are likely to be available. So far as the Policy is concerned the Panel has concluded that it would not be safe to consider this is a case which is so clear-cut that the Respondent’s sworn evidence can be rejected.
The Panel is reinforced in this view by virtue of the fact that the Respondent has now obtained her own registered trademark for the words ADYAR ANAND BHAVAN. The Respondent says with some force that this itself establishes a right or legitimate interest, and that a finding to the contrary by the Panel would in effect be to deprive the Respondent of the benefit of her trademark. The Respondent says that is matter which should properly be dealt with by the US Courts, not under the Policy. The Panel agrees. See in particular - Hansgrohe AG. v. Kaiping Aosgrohe Hardware Factory / Wang Libin WIPO Case No. D2010-0954 where the Panel stated:
“The Panel notes that in effect the Complainant is requesting the Panel to rule that a registered right owner has no legitimate interest in its registered mark under the Policy. It is commonly agreed that "UDRP panels are not equipped to resolve complex disputes – such disputes are better dealt with by the courts" (Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608). The Panel concurs and finds that this present matter is better suited to the appropriate court.”
The Panel also considers this may be so even if the Respondent did in fact have knowledge of the Complainant, if she had genuinely reached the conclusion that the relevant name was available for use in the US, given the fact that the earlier US entity with the same name as the Complainant had been dissolved. In this regard see BECA Inc. v. CanAm Health Source, Inc. WIPO Case No. D2004-0298 which contains a useful and detailed analysis of the relevant principles. In particular the Panel stated:
“7.26 From these decisions, it is perhaps possible to draw the following guidance:
(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”
7.27 This Panel would add one further observation. Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi generic in nature. These factors may also be relevant to the question of whether an application for a trademark registration should be treated as being sought merely to bolster a domain name registration.
7.28 Neither in Euro 2000 or Madonna was the relevant trademark applied for prior to the date of the domain name, but if a panel were convinced that a trademark was sought merely to bolster a subsequent domain name registration this Panel sees no reason why this should make any difference. Of course, it may be difficult for the complainant to prove that this was the purpose of the registration, but this is an issue of evidence rather than principle.
7.29 However, it is one thing to disregard a trademark registration when that registration is a device to bolster a registration. It is quite another to disregard a trademark registration where it is claimed that this registration is for some other reason not bona fide and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trademark registries.”
It seems to the present Panel this is a case where a determination that the Respondent lacked a legitimate interest is one which would in substance impinge upon the competence of the US Courts, given the Respondent’s US trademark. In reaching the conclusion the Panel also has in mind that the Complainant did not seek to oppose the Respondent’s US trademark application. In this regard it is not clear to the Panel exactly when the Complainant became aware of the Respondent and her business (it simply says in the Complaint this was “recently”) but as the trademark did not proceed to registration until after the present Complaint was filed it seems that this is, at least arguably, something the Complainant could have found out about and taken action on after becoming aware of the Respondent and her business.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has not discharged its burden of establishing that the Respondent lacked rights or a legitimate interest in the Disputed Domain Name.
Given the Panel’s conclusion on paragraph 4(c)(i) of the Policy it is not necessary to also consider whether paragraph 4(c)(ii) of the Policy applies.
Given the Panel’s conclusion on rights and legitimate interest (above) it is not necessary to consider whether or not the Disputed Domain Name was registered and has been used in bad faith.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: October 26, 2017