WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mahindra & Mahindra Limited v. Portfolio Brains LLC Case No. D2009-0209 1. The Parties

The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.

The Respondent is Portfolio Brains LLC of Los Angeles, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with NameK. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on February 18, 2009 and in hardcopy on February 23, 2009. On February 18, 2009, the Center transmitted by email to NameK a request for registrar verification in connection with the disputed domain name. On February 19, 2009, NameK 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” 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 17, 2009. The Response was filed with the Center on March 3, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on March 18, 2009. 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 paragraph 7 of the Rules.

The Parties have communicated by email several times. After receipt of the Complaint the Respondent sent an email to the Complainant on February 18, 2009, offering the immediate transfer of the disputed domain name to the Complainant stating that it was the Respondent's “policy to expedite transfers whenever there appears to be any basis for a legitimate claim”. The email was resent on February 25, 2009 upon receipt of the Notification of the Complaint from the Center.

On February 26, 2009, the Center sent an email to the Complainant asking if the Complainant desired to suspend the proceedings in order to settle the dispute with the Respondent. On March 2, 2009, the Complainant replied by email to the Center and the Respondent requesting the administrative Panel to decide the case on the merits of the case.

As per the request of the Panel, due to exceptional circumstances, the decision due date was extended from April 1, 2009 to April 3, 2009. 4. Factual Background

The Complainant is part of the Mahindra Group, founded in 1948, and market leader in multi utility vehicles in India with a net worth of USD 6.7 billion and over 50,000 employees. The Mahindra Group is the second largest manufacturer of tractors in the world and has a leading presence in key sectors of the Indian economy. It is doing business in the fields of manufacturing automobiles and automotive components, retail business of various lifestyle and related products, financial services, trade and logistics, information technology, infrastructure development and after-market. The Complainant owns a subsidiary named Mahindra Logistics Ltd., which takes care of the Complainant's complex transportation needs and which, amongst other services, includes inbound and outbound logistics and inter-plant movement.

The Complainant is proprietor of numerous trademark registrations for MAHINDRA worldwide, inter alia trademark registration no. 322911B MAHINDRA in India in class 12, registered on July 31, 1981, Community trademark registration no. 000492066 MAHINDRA in classes 6, 9, 11, 12, 17, registered on August 31, 1999, and trademark registration no. 2255311 MAHINDRA in the United States in class 12, registered on December 21, 1999 (the “MAHINDRA Marks”). Furthermore, the Complainant is proprietor of various domain name registrations bearing the trademark MAHINDRA, inter alia .

The disputed domain name was first registered on March 12, 2007. It has not yet been used in connection with an active website.

The Respondent has previously been involved in three domain name cases where the transfer of a domain name to the respective complainant was ordered in each case (see American Airlines, Inc. v. Portfolio Brains, LLC, NAF Claim No. FA 1247273; Vacation Publications, Inc. v. Portfolio Brains, LLC, NAF Case No. FA 1139522; Ace Cash Express, Inc. v. Portfolio Brains, NAF Claim No. 1093846). 5. Parties' Contentions A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The domain name is identical and/or confusingly and deceptively similar to the MAHINDRA Marks in which the Complainant has rights.

(2) The Respondent has no rights or legitimate interests whatsoever in the disputed domain name as it neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is the Respondent known by the disputed domain name. Furthermore, the Complainant contends that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith primarily for the purposes of selling, renting or otherwise transferring it to the Complainant or to its competitor for valuable monetary consideration and/or in order to prevent the Complainant from registering the disputed domain name. According to the Complainants' research, the Respondent is the registered owner of more than 157,000 domain names. B. Respondent

The Respondent contends that it lacked any bad faith in the registration of the disputed domain name as it was not aware of the Complainant based in India.

The Respondent further states that it immediately offered a voluntary transfer of the disputed domain name to the Complainant when it learnt of the present dispute.

In its Response, the Respondent again offers to transfer the disputed domain name, however without admitting fault or liability and without responding substantively to the allegations raised by the Complainant.

The Respondent requests that the transfer be ordered without findings of fact or conclusions as to paragraph 4(a) of the Policy other than the transfer of the domain name. The Respondent relies on previous UDRP decisions where Panels ruled that where a complaint was filed and where the respondent consented to the transfer of the domain name, it was inappropriate to issue any decision other than simply ordering the transfer of the domain name. 6. Discussion and Findings

The first point to be dealt with is the Respondent's request that the Panel issue a decision “without findings of fact or conclusions as to Policy 4(a) other than the Domain Names be transferred”.

The Panel notes that earlier panels have already discussed the question of whether a panel shall automatically find for a transfer where a respondent agrees to such transfer. Previous decisions include different ways to handle such a situation, including

- transfer of the domain name with a reasoned decision on bad faith (e.g. President and Fellows of Harvard College v. Texas International Property Associates NA NA, WIPO Case No. D2008-0597);

- transfer of the domain name “deeming” that paragraph 4(s) of the Policy had been proved (e.g., Solvay Advanced Polymers, LLC and Solvay S.A. v. Plastic Distributors,WIPO Case No. D2008-0516);

- transfer of the domain name with a fully reasoned finding that the elements of paragraph 4(a) of the Policy have been proved (e.g., LAERDAL MEDICAL CORPORATION v. V. Lee,WIPO Case No. D2007-1672; Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909; Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc,WIPO Case No. D2008-1162);

- transfer of the domain name without consideration of paragraph 4(a) of the Policy (e.g., Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; Infonxx.Inc v. Lou Kerner, WildS,WIPO Case No