WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mahindra & Mahindra Limited v. Zach Segal Case No. D2009-0895 1. The Parties
The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co, India.
The Respondent is Zach Segal of Naples, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2009. On July 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2009, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2009. The Response was filed with the Center on July 20, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 29, 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 the Rules, paragraph 7.
On July 6, 2009, following receipt of the Complaint from the Complainant, the Respondent emailed the Complainant indicating that the first time he was contacted by the Complainant he was asked to withdraw the content from the site, which he did. He indicated that he was now willing to relinquish control of the Domain Name in favour of the Complainant. The Complainant did not respond to that email.
On July 20, 2009, the Respondent reiterated by email to the Center and to the Complainant that he did not wish to contest the Complaint and said that there would be no need for a decision under the Policy. On July 22, 2009, the Complainant emailed the Center and the Respondent stating that notwithstanding the Respondent's willingness to transfer the Domain Name, it nonetheless wished this administrative proceeding to proceed to a decision under the Policy. 4. Factual Background
The Complainant is an Indian company, founded over 50 years ago, with its principal place of business in Mumbai. It is a member of the Mahindra Group of companies, which, while India-based, is an international conglomerate engaged in a wide range of commercial activity, ranging from vehicle manufacture to the provision of financial services.
The unchallenged evidence of the Complainant is that it is one of India's “top ten industrial houses” and commonly known simply as “Mahindra”.
The Complainant is the registered proprietor of a large number of trade mark registrations of or including the name “Mahindra”, some of which are cited in the Complaint, including, by way of example, United States Registration No. 2255311 dated June 22, 1999, MAHINDRA (typed drawing), in class 12 for “motor vehicles, namely tractors”.
The Complainant is also the proprietor of a large number of domain names of or including the name “Mahindra”, including by way of example the domain name, , which was registered on November 27, 1999 and to which the Group's main website is connected.
The Domain Name was registered on February 27, 2008.
The Complainant alleges and the Respondent does not deny that as at April 16, 2009 the Domain Name was connected to an “adult” services site. On that date the Complainant's United States subsidiary emailed the Respondent requesting that he remove the content of the site. The Respondent immediately removed the offending content from the site, which he blamed on spammers, and by his email of April 17, 2009 sought USD 500 for the Domain Name to cover his costs of owning the Domain Name and setting up the website.
Currently, the Domain Name is connected to a parking page hosted by Sedo and featuring advertising links to various sites, including sites offering goods and services in competition with those of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its MAHINDRA trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy and generally with intent to damage the distinctiveness and reputation of the Complainant's MAHINDRA trade mark. B. Respondent
The Respondent's response reads as follows:
“I, [the Respondent], hereby relinquish all rights and control of the domain name MahindraF. Please initiate the transfer of this domain name to the control & ownership of the complainant, Mahindra & Mahindra Limited or to whomever will become responsible for the domain name.
I have been unemployed for over one year and have no money. The transfer of this domain name should be sufficient. I would have terminated this domain name from my GoD control panel but it is under administrative lock – please unlock it and I will terminate it, or, please initiate a domain name transfer to Mahindra & Mahindra Limited. I have mailed this letter by courier to the WIPO Arbitration and Mediation Center, Khaitan & Co, and GoD INC at the addresses listed above. I do not have money to mail further responses by courier so if you require a response from me any further I hope my email [________@] will be sufficient.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant's registered trade mark, MAHINDRA, the dictionary word, “forum”, and the generic “.com” domain suffix, the last of which may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
The evidence filed in support of the Complaint demonstrates to the satisfaction of the Panel that in the Complainant's geographical and commercial spheres of activity its MAHINDRA trade mark is well known and highly distinctive. In the view of the Panel the addition of the word, “forum”, does nothing to dilute the impact of the mark MAHINDRA.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three examples of what shall constitute rights or legitimate interests for this purpose. Broadly, these examples cover use by a respondent of the domain name in issue in connection with a bona fide offering of goods and services, use of his own name (or a name by which he is commonly known) for the domain name in issue, and legitimate noncommercial or fair use of the domain name in issue.
The Complainant contends that on the basis of the unchallenged facts as set out in section 4 above, none of those examples is applicable to this case.
While, the examples set out in paragraph 4(c) of the Policy are not intended to constitute an exhaustive list, the Panel finds that the Complainant has made out a strong prima facie case under this head and, given the uses that the Respondent is alleged to have made of the Domain Name, the Panel cannot think of any basis upon which the Respondent can be said to have rights or legitimate interest in respect of the Domain Name. The Panel is aware that the Respondent in his email to the Complainant's United States subsidiary on April 16, 2009 blames spammers for the content of the site, but notes that the price of USD 500 that the Respondent was then seeking for transfer of the Domain Name included the costs of setting up the site. The Panel makes no findings on that point, but concludes that the Respondent has a case to answer.
In the absence of any substantive response from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
Having found that the Domain Name is confusingly similar to the Complainant's trade mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, it ought to be a short step to coming to the conclusion that the Domain Name was registered and is being used in bad faith. It is a step, nonetheless.
The Complainant contends that the Respondent registered the Domain Name for the purpose of commercial gain, whether by selling the Domain Name to the Complainant at a profit or by attracting Internet users on the back of the fame of the Complainant's trade mark to his website for commercial gain.
The Panel has examined the Respondent's uses of the Domain Name and agrees that those websites will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the content of those sites. The fact that it might not have been the Respondent who has derived the gain is not relevant for this purpose (Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
The fact that the Respondent offered to sell the Domain Name to the Complainant when the Complainant's United States subsidiary made email contact with the Respondent is a matter to be weighed in the scales, but is not conclusive of abusive intent at time of registration of the Domain Name. The fact that the Respondent selected the name “Mahindra” for the Domain Name without any obvious association with the name is another matter to be weighed in the scales and it is to be noted that if, as the Complainant has demonstrated, one enters “Mahindra Forum” into the Google search engine the vast majority of entries found relate to the Complainant, thereby evidencing the fame and distinctiveness of the Complainant's trade mark. Finally, the fact that the Respondent has not challenged any of the Complainant's allegations, while again not conclusive of bad faith intent, is another matter to be weighed in the scales.
On balance, and on the evidence before him, the Panel finds that the Domain Name was registered and is being used in bad faith. 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.
Tony Willoughby
Sole Panelist
Dated: August 12, 2009
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