Panda Restaurant Group, Inc. v Muhammad ali khan

WIPO Case No. D2025-1293

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Panda Restaurant Group, Inc. v. Muhammad ali khan

Case No. D2025-1293

1. The Parties

The Complainant is Panda Restaurant Group, Inc., United States of America (“United States”), represented by Marq Vision Inc., United States.

The Respondent is Muhammad ali khan, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <pandaexpresmenu.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2025. On March 31, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 31, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown / Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 1, 2025, 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 amendment to the Complaint on April 1, 2025.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on April 29, 2025

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The Center appointed Ganna Prokhorova as the sole panelist in this matter on May 2, 2025. 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 operates an Asian-style fast food restaurant chain. The Complainant has rights in the trademark PANDA EXPRESS through multiple trademark registrations around the world, including the following:

- European Union Trademark Registration No. 000214445 for PANDA EXPRESS mark registered on September 26, 2002, for goods and services in classes 29 and 42 of International Classif ication of Goods and Services (“ICGS”);

- European Union Trademark Registration No. 018129034 for the PANDA EXPRESS f igurative mark registered on March 31, 2020, for goods and services in classes 25, 29, 30, 32, 35, and 43 classes ICGS;

- the United States Trademark Registration No. 4919042 for the PANDA EXPRESS CHINESE

KITCHEN f igurative mark registered on March 15, 2016, for goods 29 and 30 classes ICGS.

The disputed domain name was registered on November 22, 2024. According to the evidence provided by the Complainant, it resolved to a website used for commercial gain, of fering restaurant services under the Complainant’s PANDA EXPRESS trademark and displaying the Complainant’s f igurative trademark in the same manner as on the Complainant’s official site. As of the time of this Decision, the disputed domain name directs to an inactive 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 contends that

1) the disputed domain name is confusingly similar to the Complainant’s trademark, as it incorporates the

trademark almost in its entirety, omitting only a single letter “s”, followed by the commonly used English word
“menu” and the generic Top-Level Domain (“gTLD”) “.com”;

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not acquired trademark or service mark rights. There is no relationship or af f iliation between the Complainant and the Respondent which might give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s PANDA EXPRESS marks. The Respondent is not engaged in a bona fide offering of goods or services but has used the disputed domain name in connection with a website that misleads consumers into believing that the Respondent is the Complainant and continues to hold the disputed domain name in bad faith;

3) the disputed domain name has been registered and is being used in bad faith. Given the renowned and distinctive nature of the PANDA EXPRESS trademarks and descriptions on the Complainant’s of f icial website, the Respondent must have been aware of the Complainant and its trademarks. The Complainant’s trademark is being used by the Respondent to create a false impression of af f iliation with the of f icial Complainant’s website which displays the Complainant’s PANDA EXPRESS figurative logo trademark at the top-left corner of the homepage. This misleading use of the Complainant’s trademark fosters consumer

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confusion and undermines the credibility of the Complainant’s brand. By displaying the Complainant’s logo and incorporating a substantial part of its trademark into the domain name, the Respondent misleads consumers into believing that the inaccurate and incomplete nutritional information is of f icial and reliable. The Respondent is exploiting the Complainant’s trademark to drive traf f ic to the disputed domain name, ultimately prof iting f rom the association with the Complainant’s brand.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. In UDRP cases, the standard of proof is the balance of probabilities.

To succeed in a UDRP complaint, the Complainant has to demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisf ied, namely:

(i) the disputed domain name is identical 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f ) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.

However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual

allegations in the Complaint as true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition, (“WIPO Overview 3.0”), section 4.3.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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 3.0, section 1.7.

Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has shown rights in respect of the PANDA EXPRESS mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

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The trademark PANDA EXPRESS is reproduced in its entirety in the disputed domain name, omitting only a space and a single letter “s”. Although the addition of other terms, here “menu” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Accordingly, the disputed domain name is confusingly similar to the

Complainant’s PANDA EXPRESS trademark. WIPO Overview 3.0, section 1.7.

The gTLD “.com” in the disputed domain name should be viewed as a standard registration requirement and disregarded. WIPO Overview 3.0, section 1.11.1.

The Panel therefore f inds that the f irst 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 of ten 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 domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

The Complainant has made out a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name, notably by demonstrating rights in the PANDA EXPRESS trademark, which precede the Respondent’s registration of the disputed domain name by years.

The Respondent is neither licensed nor affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any indication of use or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services.

Similarly, there is no evidence of legitimate noncommercial or fair use of the disputed domain name. The Panel notes that the composition of the disputed domain name may mislead Internet users into believing that the website is operated or endorsed by the Complainant, which is further reinforced by its use. Specif ically, the disputed domain name incorporates the Complainant’s PANDA EXPRESS trademark omitting only a a single letter “s” along with the term “menu”, which is descriptive of the Complainant’s goods and services, and appears to be used to of fer identical or at least highly similar goods and services.

In particular, the use of the Complainant’s figurative trademark further reinforces the impression of af f iliation and supports an inference that the Respondent sought to take unfair advantage of the likelihood of confusion between the disputed domain name and the Complainant.

Accordingly, the available evidence demonstrates neither actual use nor preparations to use the disputed domain name in connection with a bona fide offering of goods or services. At the same time, the Panel notes the evidentiary concerns discussed under the third element and considers them in the overall assessment of the Respondent’s conduct.

The Panel f inds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found, shall be evidence of such bad faith. See WIPO Overview 3.0, section 3.2.1.

The applicable standard of proof in UDRP proceedings is the balance of probabilities (also referred to as the preponderance of the evidence). The Panel is prepared to draw reasonable inferences based on the particular facts and circumstances of the case. See WIPO Overview 3.0, section 4.2.

In the present case, the Panel notes that the Complainant has provided evidence showing that the PANDA EXPRESS trademark. Given the longstanding registration of the Complainant’s trademark and the use to which the disputed domain name has been put, it is highly unlikely that the Respondent was unaware of the Complainant and its PANDA EXPRESS trademark when registering the disputed domain name.

Furthermore, the disputed domain name closely resembles the Complainant’s own domain name <pandaexpress.com> and might be perceived as an of f icial website of the Complainant, especially as it follows a commonly used format (trademark + generic term “menu”) and uses the “.com” gTLD. This intentional construction suggests an ef fort to mislead Internet users and to take unfair advantage of the Complainant’s brand. The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

Under paragraph 4(b)(iv) of the Policy, bad faith can also be established where a respondent uses the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, af f iliation, or endorsement of the website.

Annex 9, which includes a comparison of the official Complainant’s website and the alleged Respondent’s site, contains the domain name <pandaexpresmenu.com>, the reference apparently added af ter the screenshot had been taken. The Panel will nonetheless proceed with its analysis of bad faith use, mindful of this evidentiary concern.

The website to which the disputed domain name resolved prominently displayed the Complainant’s PANDA EXPRESS figurative logo at the top left corner of the homepage and a copyright notice “2025 Panda Express Menu”. In such case, the use of the Complainant’s logo and confusingly similar disputed domain name strongly suggests an intent to mislead consumers into believing that the website is officially affiliated with the Complainant, which constitutes bad faith.

To summarize, the totality of the evidence demonstrates a deliberate attempt by the Respondent to create an impression of affiliation with the Complainant and to confuse Internet users. The disputed domain name incorporates the Complainant’s well-known PANDA EXPRESS trademark (omitting only the f inal “s”). The unauthorized use of the Complainant’s mark on the website the disputed domain name resolved to supports a f inding of bad faith.

The Panel notes that the current passive holding of the disputed domain name would not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3.

In addition, the Respondent has failed to submit any response. The combination of the Respondent’s silence, its registration of a domain name incorporating the Complainant’s mark, and its prior apparent bad faith use of the domain name are all consistent with prior UDRP decisions f inding bad faith.

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

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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 <pandaexpresmenu.com> be transferred to the Complainant.

/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: May 12, 2025