WIPO Domain Name Decision D2009-0209 for mahindralogistics.com

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. D2008-0434);

- transfer of the domain name treating respondent's consent as a concession in relation to paragraph 4(a) of the Policy (e.g. Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster,WIPO Case No. D2007-1800);

- transfer of the disputed domain name without any finding other that it being inappropriate to issue any decision other than simply ordering the transfer of the domain name (e.g., The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132); and

- transfer of the disputed domain name without any findings because the consent of the parties is deemed to limit the Panel in its decision (e.g.,The Body Shop International plc v. Agri, Lacus & Caelum LLC, NAF Claim No. FA 679564).

All of these decisions were based on varying considerations and different facts, such as the Complainant's consent or dissent to the transfer and consent or dissent to a decision without findings on paragraph 4(a) of the Policy.

In this case, the Panel will issue a fully reasoned decision because of the following:

During the administrative proceedings under the Policy, the Parties still have the possibility to settle the dispute and to agree to transfer the disputed domain name at any time before the Panel is appointed. Upon request, the Center would suspend the proceedings in order to allow the transfer of the disputed domain name based on an agreement between the parties.

Once a Panel is appointed, the Panel is bound by the pertinent provisions laid down in the Policy and the Rules, inter alia paragraph 4(a) of the Policy and paragraphs 10, 15 and 17 of the Rules. Where a respondent offers the transfer of the disputed domain name and where the complainant does not explicitly agree to such transfer without any consideration with regard to paragraph 4(a) of the Policy, the panel may issue a fully reasoned decision based on the fact that the complainant requested such a decision in its complaint. The mere fact that both parties agree on the transfer as such does not include an agreement that the Panel does not have to issue a fully reasoned decision because, strictly speaking, the parties' requests do not coincide, as in the present case, where the Complainant requested the transfer based on the allegation that the requirements of paragraph 4(a) of the Policy are met with (which is to be considered by the Panel), and the Respondent requested a transfer without consideration by the Panel, regardless of whether the conditions of paragraph 4(a) of the Policy are fulfilled. In such a case, the panel cannot fully comply with both parties' requests; only if the parties settle on agreed conditions may the panel terminate the proceedings according to paragraph 17 of the Rules.

Therefore, in the view of this Panel, there are no possibilities to comply with the Respondent's request in the present case as the Complainant formally asked for a reasoned decision.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

“(i) the domain name is identical or confusingly similar to the Complainant's trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's distinctive MAHINDRA Marks in which the Complainant has rights.

The mere addition of the generic word “logistics” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

“(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

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

Even though of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will shift to the respondent.

The Complainant has asserted that the Respondent 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 known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.”

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.

As to bad faith registration, on balance, the Panel finds it more likely than not that the Respondent knew of third parties' rights in the disputed domain name at the moment of its registration or acquisition:

- The Complainant is a leading manufacturer of multi utility vehicles in the world and has been active in the field of manufacturing automobiles, automotive components and various other products for more than 60 years. Given the distinctiveness of the MAHINDRA Marks and the high profile of the Complainant and its marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant's rights in the MAHINDRA Marks.

- This finding is supported by the fact that the disputed domain name is identical to a division of the Complainants company named Mahindra Logistics, which was set up in 2000 and incorporated under the name Mahindra Logistics Limited on August 24, 2007.

- Finally, even if the Respondent did not specifically know of the Complainant or of its trademark rights when it registered the disputed domain name, the finding of bad faith registration would be confirmed under the specific circumstances of this case by the Respondent's so-called “wilful blindness”. As a professional domainer, the Respondent possibly acquired thousands of domain names through automated processes without any human involvement. Subsequent use of these domain names eventually leads to the fact that the Respondent benefits from the identity or confusing similarity of some of these so-acquired domain names with third parties' trademarks, thus enabling the Respondent to free-ride on the trademark owners' goodwill in their intellectual property rights and profiting from Internet users' confusion. It has previously been found that respondents cannot rely on the fact that they might have been unaware of a complainant's mark at the time of the registration of a domain name to shield their conduct by closing their eyes to whether domain names are identical with or confusingly similar to trademarks – even given that registration of domain names because of their attraction as dictionary words and not because of their value as trademarks is a business model permitted under the Policy, and given that there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties' rights. A sophisticated domainer who regularly registers domain names cannot be “wilfully blind” to whether a particular domain name may violate trademark rights (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI),WIPO Case No. D2008-1216), at least not in cases like the present where the Complainant as trademark owner is internationally known and its rights are revealed as hits on the first page of a Google search.

The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith registration, the Panel finds that the Respondent has acted in bad faith under paragraph 4(b)(ii) of the Policy as it was ordered to transfer domain names to the respective complainant in at least three earlier UDRP proceedings. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of 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 be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: April 3, 2009

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