The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is M and M Auto Industries Limited of Haryana, India represented by ZEUS Law Associates, India. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 16, 2010, the Center transmitted by email to the registrar UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On June 17, 2010, the registrar UK2 Group Ltd. 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent was informed that if its response was not received by that date, it would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Response was filed with the Center on July 10, 2010.
The Center appointed Vinod K. Agarwal, as the sole panelist in this matter on July 26, 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
The Complainant Mahindra & Mahindra Limited is a company incorporated according to the laws of India and is a part of the Mahindra & Mahindra group of companies. In India, this is one of the big business houses. The Complainant is the manufacturer of multi-utility vehicles.
The Complainant is also the second largest manufacturer of tractors in the world. The Complainant has one tractor manufacturing plant in China, three tractor assembly plants in the United States and one at Brisbane, Australia. Its subsidiaries include Mahindra Europe Srl. based in Italy, Mahindra USA Inc. and Mahindra South Africa. In India, the Complainant is carrying on the business of manufacturing automobiles and automotive components, financial services, trade and logistics, information technology development, etc. It employs about 50,000 people in India. Respondent’s activities
The Respondent was incorporated on May 10, 1985 in the name and form of Varun Auto and Allied Industries Private Limited. Subsequently, the shareholding of the Respondent was taken over by Mrs. Malti Syngle and Mr. Manoj Singhal (being mother and son). In 1991, the name of the Respondent Company was changed to “M and M Auto Industries Limited”.
The Respondent is the manufacturer of precision metallic coil springs having their application in aircraft, defence, automotive and other similar industries. The name of the Respondent has been derived from the first alphabetical letter of the names of Mrs. Malti Syngle and Mr. Manoj Singhal, who are the promoters of the Respondent.
The customers of the Respondent include Ministry of Defence, Government of India; Hero Honda Motors Limited; Suzuki Motor Corporation Limited; Gabriel India Limited; Indian Railways; UCAL Fuel Systems Limited; U Z Daewoo Auto Co., Uzbekistan; Siemens Ag. Germany; CNH France S.A.; etc. 5. Parties Contentions A. Complainant
The Complainant contends that each of the elements specified in paragraph 4 of the Policy are applicable to this dispute.
In relation to element (i) that is, the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights, the Complainant contends that it is known amongst its customers worldwide as MAHINDRA and “Mahindra & Mahindra” or “M & M” and all its variants. It is further contended that the Complainant is also the proprietor of various domain names (as mentioned in Annex 7 to the Complaint) bearing the trademark MAHINDRA, such as, , , , , , , , etc.
According to Annex 8 to the Complaint, the trademark MAHINDRA is also registered under various classes in various countries including India, Australia, Japan, United States, etc. Therefore, the disputed domain name is identical or confusingly similar to the trademark of the Complainant.
In relation to element at paragraph 4(ii) of the Policy that is, the Complainant says that the Respondent has no rights and legitimate interests in respect of the disputed domain name. In particular, in terms of paragraph 4(c) of the Policy, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent (as an individual, business or other organization) has not been commonly known by the name or mark MAHINDRA. Further that, the Respondent is not making a legitimate or fair use of the said domain name for obtaining goods or services. The Respondent registered the said domain name for the sole purpose of making a commercial gain by creating confusion and misleading in the general public and the customers/users of the Complainant’s domain name.
Regarding the element of paragraph 4(a) of the Policy, that is, the Respondent’s domain name has been registered or is being used in bad faith, the Complainant contends that the main object of registering the domain name by the Respondent is for the purposes of attracting Internet users for commercial gain and to earn profit and to mislead the general public and the customers/users of the Complainant’s domain name. The Complainant has stated that the use of the domain name that appropriates the well-known name or mark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. B. Respondent
In relation to element at paragraph 4(i) of the Policy, the contention of the Respondent has been that the Complainant is known by the name of “Mahindra” or “Mahindra & Mahindra”. The registered trademark of the Complainant is also MAHINDRA. It is wrong to say that the Respondent is known by the name of “M & M”. The Respondent is known by the name of “M and M Auto Industries Limited”. The Respondent has been using the name “M and M Auto Industries Limited” for the last 19 years, that is, since 1991.
Similarly, the Respondent’s domain name is . The Respondent is using the said domain name since 2001, that is, for the last more than 8 years. Moreover, most of the registered domain names of the Complainant use the word “mahindra” such as .
The two parties trading names as well as the two domain names are in no way similar or even deceptively similar to each other. The Respondent has been using the said domain name since 2001. During these last eight years there had been no complaint by any person, including the Complainant, and there has occurred no instance of confusion. Therefore, there is no conflict or confusion between the two trade names and the two domains names. As such, the Respondent falls within the protection offered by paragraph 4(c)(i) of the Policy.
In relation to element of paragraph 4(a) of the Policy that is, the Respondent has no rights and legitimate interests in respect of the domain name, the contention of the Respondent is that the Complainant manufactures end user consumer goods while the Respondent is an original equipment manufacturer (OE), and supplies goods not meant for the general public but for the industrial sector. Therefore, the Respondent and the Complainant do not operate in same or similar market.
The Respondent has filed an Application No. 1206681 before the Trade Mark Registry at New Delhi, India on June 16, 2003 for the registration of the trademark “M and M Auto Industries Limited”. The said Application was advertised in the Trade Mark Journal No. 1337 – 1 dated December 15, 2005 inviting objections to the registration of the said trademark. The Complainant has filed objections to the registration of the said mark on December 7, 2006, only a week before the time for filing objections was about to expire and after nine months from the date of advertisement. The matter is currently pending adjudication.
Therefore, the Respondent has rights and legitimate interests in respect of the domain name,
Regarding element of paragraph 4(a) of the Policy, that is, the Respondent’s domain name has been registered and is being used in bad faith, the Respondent contends that the Respondent has been peacefully and undisputedly using this domain name for the last 8 years. During this period of 8 years nobody has ever disputed the use of the said domain name by the Respondent. The Respondent offers goods and legitimate business support services through the use of the disputed domain name. The Respondent has not registered any other domain name.
Therefore, it is wrong to say that the disputed domain name has been registered in bad faith and is being used in bad faith.
The Complainant sent to the Respondent a cease-and-desist notice on December 1, 2009. The Respondent replied to the said notice on December 22, 2009 asserting its right to the disputed domain name. 6. Discussion and Findings
The Rules instruct this Panel as to the principles to be used in rendering its decision. It says that, “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Uniform Domain Name Dispute Resolution Policy, [the] Rules and any rules and principles of law that [the Panel] deems applicable.”
Accordingly, the Complainant must prove that:
(i) The Respondent’s domain name is identical or confusingly similar to trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no right or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith. A. Identical or confusingly similar
The Complainant must prove that it has rights in a trademark, and that the disputed domain name is confusingly similar to that trademark.
The disputed domain name is . The Respondent registered this domain name on April 23, 2002. The said domain name is a combination of four letters or words, that is, “m”, “and”, “m” and “springs”. The name of the Respondent is “M and M Auto Industries Limited”. The name of the Respondent has been derived from the first alphabetical letter of the names of Mrs. Malti Syngle and Mr. Manoj M.Singhal (being mother and son) who are the promoters and directors of the said M and M Auto Industries Limited. The Respondent is also manufacturing and marketing “springs” in various countries.
The Complainant is known by the name of “Mahindra” or “Mahindra & Mahindra”. The Panel finds, based on the present record, that the Complainant is not known as “M and M”. The Complainant has failed to prove that it uses the expression “M and M” to represent itself or in relation to any of the goods or services offered by it.
Further, as stated above, all the domain names of the Complainant as per Annex 7 to the Complaint are registered with the word “mahindra” or “MAHINDRA”. Similarly, as per Annex 8 of the Complaint the Complainant owns trademark rights for various registrations in various countries for MAHINDRA.
It is no doubt true that sometimes, the Complainant may use the expression “M & M” (and not by the name of “M and M”), but the Complainant has failed to produce any evidence to prove that it has registered any domain name or any trademark with the words “M & M” or “M and M”.
Therefore, the Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy. This Panel finds no similarity or confusing similarity between the domain name of the Respondent and the mark MAHINDRA of the Complainant. B. Rights or Legitimate Interests
According to the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use 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 consumers or to tarnish the trademark or service mark at issue.
The disputed domain name is . The Respondent is known by the name of “M and M”, the complete name being “M and M Auto Industries Limited”. The Respondent is also a leading manufacturer of springs. Therefore, the Respondent has been commonly known by the disputed domain name. The Respondent has been using the domain name to provide legitimate business support to its customers. In the year ending March 2009, the Respondent’s turn over was USD 9,660,000. Thus it is not a small organization.
The Respondent has filed a trademark application as far back as June 16, 2003 for the registration of the trademark “M and M Auto Industries Limited”. The said application was advertised in the Trade Mark Journal No. 1337 – 1 dated December 15, 2005. The Complainant has filed objections to the registration of the said mark on December 7, 2006, only a week before the time for filing objections was about to expire and after nine months from the date of advertisement. The matter is currently pending adjudication. These facts indicate that, regardless of the eventual outcome of said trademark opposition, the Respondent has rights and legitimate interest in the disputed domain name for the purposes of the Policy.
Hence, it is concluded that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists the following four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(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 bears the name or is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of 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 the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or 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.
In respect of this element, the Complainant is required to establish two elements, that is: the Respondent has registered the disputed domain name in bad faith and has been using the said domain name in bad faith.
The Respondent has been using this domain name for the last 8 years. In the Response it is stated that the Respondent has never offered to sell the said domain name. The marks of the Complainant are MAHINDRA and MAHINDRA & MAHINDRA, whereas the mark of the Respondent is M and M AUTO INDUSTRIES LIMITED. In the domain name part of the mark of the Respondent is reflected. Therefore, it is not correct to say that the Respondent has registered the domain name to prevent the Complainant from reflecting its mark in the domain name.
The Panel finds that the Complainant has not on balance met its burden of proving bad faith on the evidence available in the present record. The Respondent is seemingly using the disputed domain name to advertise its own product. The Respondent’s website provides several clues to visitors that the web site owner is not directly affiliated with the Complainant.
The foregoing circumstances lead to the conclusion that the domain name in dispute was not registered and is not being used by the Respondent in bad faith.
In support of its contentions, the Complainant has also relied on the following decision of various courts.
(a) Mahindra and Mahindra Paper Mills Limited v. Mahindra & Mahindra Ltd., 2001 INDLAW SC 19798 involving disputed domain name .
(b) Mahindra and Mahindra Seeds Pvt. Ltd., v. Mahindra & Mahindra Ltd., 2002 INDLAW GUJ. 148 involving disputed domain name
(c) Mahindra & Mahindra Limited, Mahindra Retail Private Limited v. Standard Tactics LLC.,WIPO Case No. D2009-1632 involving disputed domain name
(d) Mahindra & Mahindra Limited v. Advansoft World Wide,WIPO Case No. D2000-0247 involving disputed domain name and .
(e) Mahindra & Mahindra Limited v. Neoplanet Solutions,WIPO Case No. D2000-0248 – involving disputed domain name .
(f) Mahindra & Mahindra Limited v. Portfolio Brains LLC,WIPO Case No. D2009-0209 involving disputed domain name .
(g) Mahindra & Mahindra Limited v. Zach Segal,WIPO Case No. D2009-0895 involving disputed domain name .
A perusal of the disputed domain names involved in the aforesaid cases and mentioned above clearly show that they incoporate the mark MAHINDRA of the Complainant. The present disputed domain name is . In this domain name the mark MAHINDRA does not appear. 7. Decision
In the light of the above findings, the Panel’s decision is as set out below
Regarding paragraph 4(a)(i) of the Policy, the Panel’s conclusion is that the disputed domain name is not identical or confusingly similar to the Complainant’s mark MAHINDRA;
So far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name;
So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to establish that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Vinod K. Agarwal
Sole Panelist
Dated: August 9, 2010
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