WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mahindra & Mahindra Limited, Mahindra Retail Private Limited v. Standard Tactics LLC Case No. D2009-1632 1. The Parties
The Complainants are Mahindra & Mahindra Limited and Mahindra Retail Private Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is Standard Tactics LLC of Santa Fe, New Mexico, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2009. On December 3 and December 4, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2009, GoD, Inc. 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 December 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 8, 2010. 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 following facts are taken from information provided by the Complainants.
The Complainants are Indian companies associated within the prominent Mahindra Group, which has been established for over 60 years. The first Complainant, Mahindra & Mahindra Limited, manufactures or sells a wide range of goods including farming equipment such as tractors. The second Complainant, Mahindra Retail Private Limited, trades in goods including mother and child products under the name M&M ME MAHINDRA RETAIL.
The first Complainant is the holder of a number of registered trademarks embodying the word MAHINDRA, including:
Trademark No. 322911B Class 12 India
Trademark No. 728305 Class 16 India
Trademark No. 728307 Class 16 India
Trademark No. 1460954 Class 35 India
Trademark No. 1459605 Class 35 India
Trademark No. 800565 Class 16 India
Trademark No. 728304 Class 7 India
Trademark No. 800559 Class 16 India
Trademark No. 995041 Class 12 Australia
Trademark No. 4433617 Class 12 Japan
Trademark No. 39797 Class 12 OAPI (African Intellectual Property Organization)
Trademark No. 000492066 Classes 6, 9, 11, 12, 17 OHIM (Europe)
Trademark No. 2255311 Class 12 USA
The first Complainant also owns ten domain names comprising the word “Mahindra” standing alone except for standard directory suffixes, and nine domain names comprising the words “Mahindraretail” or “Mahindra-retail” standing alone except for standard directory suffixes.
Nothing is known about the Respondent except for the identification details provided in the registration document for the disputed domain name. 5. Parties' Contentions A. Complainants
The Complainants contend that they have rights or legitimate interests in the trademark MAHINDRA and submit copies of registration documents in the name of the first Complainant relating to the trademarks listed in section 4 above.
The Complainants further contend that the disputed domain name is confusingly similar to the trademark MAHINDRA. They say that Internet users would think the disputed domain name was associated with the Complainants, which it is not.
The Complainants say that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, in the terms of paragraph 4(c) of the Policy, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name but intends to make a commercial gain by trading on the Complainants' trademark.
The Complainants contend that the claims made above also constitute bad faith registration of the disputed domain name. They say that the disputed domain name has been registered for the primary purpose of selling it to either the Complainants or a competitor, or to prevent the Complainants from registering it themselves.
The Complainants request the transfer of the disputed domain name to the first Complainant (Mahindra & Mahindra Limited). B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainants have made the relevant assertions as above. It is noted that the Complainants appear to have filed certain related proceedings in the Bombay High Court under Suit No. 2991 of 2008. It would appear from correspondence sent to the Center that the suit concerns an alleged previous owner of the disputed domain name who disclaims any current connection with this dispute and has obtained interim injunctive relief in Bombay. Having regard to paragraph 18(a) of the Rules the Panel will proceed to a decision. A. Identical or Confusingly Similar
The Complainants must prove that they have rights in a trademark, and that the disputed domain name is confusingly similar to that trademark.
Ample evidence has been submitted to the effect that the first Complainant has rights in the trademark MAHINDRA. The disputed domain name is . Thus there is a clear basis upon which the disputed domain name, by featuring the name “Mahindra”, is likely to be confused with the Complainants' trademark. The disputed domain name also contains the ordinary descriptive word “retail”. It is well established in decisions under the Policy that the attachment of an ordinary descriptive word in association with a distinctive trademark is unlikely to diminish confusing similarity. In the present instance the confusing similarity is enhanced by the word “retail” because the Complainants are heavily engaged in retailing, and the second Complainant has adopted the same descriptive word in its name “Mahindra Retail Private Limited”. Accordingly the Panel finds for the Complainants in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants are required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainants have stated prima facie that the Respondent has no such rights or legitimate interests. In anticipation of any assertion by the Respondent of having any rights or legitimate interests in terms of paragraph 4(c) of the Policy, the Complainants assert that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and has registered it in bad faith.
The Respondent has had the opportunity to refute in the terms of paragraph 4(c) of the Policy, or otherwise, the prima facie case stated by the Complainants in the terms of paragraph 4(a)(ii) of the Policy. The Respondent has made no reply and there is nothing in the evidence to suggest that it could establish any such rights or legitimate interests. The Panel finds for the Complainants in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants are required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.
An attempt by the Center to contact the Respondent on December 6, 2009 at the email address provided for the Administrative Contact was unsuccessful. Similar attempts on December 14, 2009, December 28, 2009, and January 4, 2010, were responded to with an identical “auto-reply” comprising a standard sales confirmation of no possible relevance to this dispute and including the sentence: “We will not respond to any additional emails”. An attempted delivery of documents by courier pack shipped by the Center on December 14, 2009 was notified to have been unsuccessful for the reason that the addressee had moved.
Thus it may reasonably be concluded that the Respondent has ignored the notice of the dispute. In the absence of any Response it is necessary to infer the Respondent's intentions. It is noted from registration information provided by DomainTools and submitted in evidence that the Respondent at the time (undated) owned about 117 domain names, and that the email address given for the Respondent's Administrative Contact was associated with about 538 domain names. Taking into account the lack of any stated or evident connection between the Complainants' trademark and the Respondent's stated identification, and the quantity of domain names associated with the Respondent or its Administrative Contact, it may be inferred on the balance of probabilities that the Respondent has registered the disputed domain name with intent to use it other than in the course of bona fide business.
The “auto-reply” emails referred to above, sent on three different dates, are revealing of the Respondent's business. The “auto-reply”, although irrelevant, is evidently a form letter for the purpose of acknowledging a purchase of a domain name from the Respondent by any client, in terminology showing this to be a business transaction, with phrases such as “... waiting for confirmation of this purchase ...”, “... this notification is provided to us within 7 to 10 business days ...”, and “... do not attempt to issue a Transfer of the domain, as this will cause a delay in the domain moving to your account”. It may reasonably be concluded on balance that the Respondent deals in domain names, and would be unlikely to do so other than for profit. The fact that the disputed domain name does not yet appear to have been put to any constructive use does not necessarily prevent a finding of bad faith use (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). There is sufficient evidence for the Panel to find bad faith registration and use of the disputed domain name in the terms of paragraph 4(b)(i) of the Policy.
Furthermore, the circumstances potentially indicative of bad faith listed in paragraph 4(b) of the Policy are illustrative and without limitation. Bad faith may be found otherwise. On the facts, the Respondent is in possession of a domain name featuring the well-known trademark of a group of companies claimed to be worth about USD 6.3 billion, to be one of India's top ten industrial houses, and to be the world's second-largest manufacturer of tractors. The Respondent has offered no explanation and has ignored the Complaint. The Panel is mindful of the finding of the learned panelist in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, in which he referred to the incorporation into a domain name of a trademark “... so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
The attempt by the Center to send details of the Complaint by courier to the address provided by the Respondent was met with a notification that the addressee had moved. Failure of the Respondent to keep the registrar informed on a continuing basis of a current, accurate and reliable postal address is in breach of section 3 of the GoDaddy Domain Name Registration Agreement, and is found to constitute further evidence of bad faith (Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111; Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632).
Having regard to all the circumstances of this dispute, the Panel finds bad faith registration and use of the disputed domain name to be proven specifically under paragraph 4(b)(i) of the Policy and generally within the meaning 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, Mahindra & Mahindra Limited.
Clive N. A. Trotman
Sole Panelist
Dated: January 22, 2010
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