Minor Food Group (Singapore) Pte. Ltd. v Hammad Younas

WIPO Case No. D2024-4847

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Minor Food Group (Singapore) Pte. Ltd. v. Hammad Younas

Case No. D2024-4847

1. The Parties

The Complainant is Minor Food Group (Singapore) Pte. Ltd., Singapore, represented by Ravindran

Associates LLP, Singapore.

The Respondent is Hammad Younas, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <sanookkitchen.org> (the “Disputed Domain Name”) is registered with Web

Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 28, 2024.
2024. On November 25, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the Disputed

Domain Name which differed from the named Respondent (UNKNOWN) and contact information in the

The Center verified that the Complaint together with the amendment to 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 November 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2024.

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The Center appointed Nicholas Weston as the sole panelist in this matter on December 26, 2024. 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 a company incorporated in Singapore on March 25, 2000 that operates a casual dining restaurant chain with 20 brands and more than 132 outlets in Singapore, Malaysia, Viet Nam, Thailand, Maldives, Brunei Darussalam, Japan, and Myanmar. The Complainant cites its registrations for the trademark SANOOK KITCHEN and variations of it in several jurisdictions, including, for example, Singapore trademark no. 40201816085S for the device mark SANOOK KITCHEN registered on August 14, 2018 and Australian trade mark No. 2022763 for the device mark SANOOK KITCHEN registered on July 12, 2019. The device mark is comprised of three elements: the dominant words SANOOK KITCHEN, a small sized design element with three circles arranged in a triangle, and the words “cooking authentic thai food” in a small sized font.

The Complainant owns the domain name <sanookkitchen.com.sg>, which hosts its main website.

The Disputed Domain Name was registered on August 24, 2023 and is used to host an unauthorized version of the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Notably, the Complainant cites its trademark registrations in a number of jurisdictions for the device mark
SANOOK KITCHEN, as prima facie evidence of ownership.

The Complainant submits that its rights in the mark SANOOK KITCHEN predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name is comprised of the dominant part of the SANOOK KITCHEN trademark and that the addition of the generic Top-Level Domain (“gTLD”) “.org” is not sufficient to avoid the confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because “[t]he Complainant has not authorized the Respondent to use the dominant
and distinctive component of the Complainant’s Mark either in whole or in part, in any manner whatsoever,
including as a domain name” and infers that none of the circumstances set out in paragraph 4(c) of the
Policy apply.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to evidence that points to knowledge of the Complainant and its trademarks, and, it submits that “the [Disputed] Domain [N]ame is used for a website where the Respondent prominently uses the Complainant’s Mark and the website layout closely mimics that of the Complainant’s official site website essentially impersonating the Complainant.”

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)        that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

and
(iii)	that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Panel finds that the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SANOOK KITCHEN.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the SANOOK KITCHEN trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the dominant textual component of the Complainant’s trademark SANOOK KITCHEN; (b) followed by the gTLD “.org”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “sanookkitchen”.

The Panel finds the mark is recognizable within the Disputed Domain Name. To the extent that design elements would be incapable of representation in a domain name, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. In this case the design elements are not the dominant portion of the relevant mark and are not more prominent than the dominant textual element. WIPO Overview 3.0, section 1.10. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such

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relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

The Panel notes that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks and that there is no relationship between the Complainant and the Respondent, let alone any accurate or prominent disclosure of that relationship, or absence of such, on its website. The use of the

Complainant’s trademark on the Respondent’s website suggests that the Respondent is actually aware of the Complainant’s trademark, and that the Respondent is attempting to take advantage of the mark SANOOK KITCHEN to make available its competing food services. The Panel finds that the Respondent’s activities do not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

Panels have held that the use of a domain name for illegitimate activity, such as phishing, impersonation,
passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the Complainant’s distinctive trademark, the Panel is satisfied that the Respondent deliberately targeted the Complainant’s trademark SANOOK KITCHEN when it registered the Disputed Domain Name.

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s trademark. WIPO Overview 3.0, section 3.1.4.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name was used to host a
website that mimics the visual elements and content of the Complainant’s legitimate website, displaying the
Complainant’s actual trademark and reviews left for the Complainant.

Panels have held that the use of a domain name for illegitimate activity, here, alleged impersonation or passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.

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The Panel finds that the Complainant has established the third element of the Policy.

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 Name <sanookkitchen.org> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: January 3, 2025