The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is RV ABC Consulting Inc., Roy Smith of Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 17, 2010, eNom 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 September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.
The Center appointed James Bridgeman as the sole panelist in this matter on October 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
The Complainant, based in India is part of the Mahindra group of companies and is the owner of numerous trademark registrations for the MAHINDRA trademark and has furnished copies of the certificates for the following registrations:
- Indian registered trademark MAHINDRA, registration number 322911B dated February 10, 1977, registered in class 12;
- Indian registered trademark MAHINDRA, registration number 728303, dated December 26, 1996, registered in class 16;
- Indian registered trademark MAHINDRA number 728307, dated December 26, 1996, registered in class 16;
- Indian registered trademark MAHINDRA (device), number 1460954 dated June 16, 2006, registered in class 35;
- Indian registered trademark MAHINDRA & MAHINDRA (device), number 1459605 dated June 14, 2006, registered in class 35;
- Indian registered trademark MAHINDRA & MAHINDRA, number 800565 dated April 30, 1998, registered in class 16;
- Indian registered trademark MAHINDRA number 728304 dated December 26, 1996 in class 7
- Indian registered trademark MAHINDRA & MAHIND number 800559 dated April 30, 1998, registered in class 16;
- Australian registered trademark MAHINDRA number 995041dated March 26, 2004, registered in class 12;
- Japanese registered trademark MAHINDRA number 4433617 filed December 28, 1999, registered in class 12;
- O.A.P. I. registered trademark MAHINDRA number 39797 dated August 28, 1998 registered in class 12;
- CTM number 000492066 filed on March 18, 1997 registered in classes 6,9,11, 12 and 17;
- USA registered trademark MAHINDRA, number 2255311 dated June 22, 1999 in class 12.
The Complainant is also the owner of numerous Internet gTLD and ccTLD domain name registrations incorporating the name “Mahindra” including ; ; ; and .
In the absence of a Response there is no information available about the Respondent except for the details on the Registrar’s WhoIs.
According to the WhoIs information, the disputed domain name was registered on April 12, 2006. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has carried on business since January 13, 1948 under its corporate name and trading style “Mahindra and Mahindra Limited” and is more commonly referred to in trade and by the general public as “Mahindra” or “M&M”.
The Complainant submits that it is part of an international group of companies with a net worth of US$ 6.3 billion as of March 31, 2009 and claims to be a market leader in multi utility vehicles in India and the second largest manufacturers of tractors in the world.
The Complainant claims to have a significant international business with manufacturing plants in the People’s Republic of China, the United States of America and Australia. The Complainant has subsidiaries based in the United States of America, Italy and South Africa. The Complainant submits that it has entered into partnerships with international companies such as Renault SA, France and International Truck and Engine Corporation, USA.
The Complainant submits that it plays an important role in the economy of India, and, having a strong technology base, has diversified into other areas of commercial activity such as manufacturing of motor vehicles, automotive components, financial services, trade and logistics, information technology and infrastructure development.
The Complainant has made significant investment in the advertisement of the products and services it provides under the MAHINDRA mark.
The Complainant states that its group is ranked by Forbes as among the top 200 World’s Most Reputable Companies and has received many honours and acknowledgements for the standards it employs.
In support of its submissions, the Complainant has furnished evidence of its ownership, registration, promotion and use of the MAHINDRA trademarks in annexes to the Complaint.
In support of its Complaint, the Complainant relies on its above referenced trademark registrations and its goodwill in the use of the name and mark MAHINDRA since its inception on January 13, 1948 and submits that the disputed domain name is visually, phonetically and structurally identical and/or confusingly similar to the trademark MAHINDRA in which the Complainant has statutory and common law rights.
The Complainant submits that the word “Mahindra” is the dominant element in the disputed domain name and the addition of the generic word “dealer” does not eliminate the similarity between the Complainant’s MAHINDRA mark and the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not known by the disputed domain name or the MAHINDRA trademark and points out that there is not one iota of reference to the Complainant’s MAHINDRA trademark in the Respondent’s name: RV ABC Consulting Inc., Roy Smith.
Referring to the reference to the word “dealer” in the disputed domain name , the Complainant submits that it has appointed numerous authorised dealers for its products across the world and points out that the Respondent is not one of them.
The Complainant submits that on learning of the disputed domain name registration, the Complainant’s authorised agent sent a cease and desist letter to the Respondent dated June 5, 2010 demanding that the Respondent cease and desist from using the Complainant’s trademarks and/or deceptively similar marks in any manner. As of the date on which the Complaint was filed the Complainant had not received any response from the Respondent. The Complainant submits that this is indicative of a dishonest and bad faith intention on the part of the Respondent.
In the circumstances the Complainant submits that the Respondent is not making any legitimate use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and alleges that by registering and parking the disputed domain name the Respondent is intentionally attempting to attract for financial gain, Internet users to the Respondent’s website, by creating a deliberate confusion and/or deception with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant further alleges that by parking the disputed domain name the Respondent has blocked the Complainant from using the disputed domain name. The Complainant complains that by allowing the domain name to resolve to a parking page hosted by the Respondent’s Registrar, with advertisements and links to third party sites, the Registrant is allowing the Registrar to benefit from the goodwill of the Complainant.
The Complainant further argues that by parking the disputed domain name the Respondent is disrupting the legitimate use of the MAHINDRA trademark by the Complainant and its authorised dealers.
The Complainant submits that the passive holding of the disputed domain name in circumstances where the Respondent is well aware of the widespread reputation and goodwill of the Complainant in the MAHINDRA trademark amounts to registration and use in bad faith.
The Complainant submits that in the circumstances it is impossible to conceive of any possible use of the domain name that would not be illegitimate, contrary to the laws of passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under trademark law. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has furnished evidence of its rights in the MAHINDRA trademark and service mark through its above-listed trademark registrations and at common law through its long and substantial use of the mark in India and other jurisdictions in connection with its vehicle manufacturing business and other businesses into which it has diversified.
This Panel finds that the disputed domain name is confusingly similar to the trademark MAHINDRA in which the Complainant has rights and the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in the domain name the burden of rebuttal shifts to the respondent, in the absence of which the Panel is entitled to rely on the Complainant’s prima facie case that the Respondent lacks such rights or interest.
In casu the Complainant has made out such a prima facie case: the Complainant has rights in the name and mark MAHINDRA; the Complainant has a substantial goodwill and reputation in numerous countries throughout the world through its numerous businesses and associations; the disputed domain name is a combination of the Complainant’s MAHINDRA trademark and the word “dealer” implying a supplier-dealer relationship with the owner of the MAHINDRA trademark; the Complainant has many authorized dealers throughout the world but the Respondent is not one of them; the Respondent is not actively using the disputed domain name and has caused it to resolve to a parked page.
In the absence of a Response the Respondent has failed to discharge the burden of rebuttal Complainant’s prima facie case and so the Complainant is entitled to succeed in establishing the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Given the confusing similarity of the disputed domain name and the Complainant’s MAHINDRA trademark; the intentional reference to the idea that the disputed domain name is in some way associated with a dealership; the fact that the Complainant has an established international reputation that extends beyond India to many jurisdictions including the United States of America where the Respondent is situated; the fact that the disputed domain name was registered in the year 2006 many years after the Complainant accrued its rights in the MAHINDRA mark; the fact that the Respondent has failed to respond in any way to either the Complainant’s cease and desist letter or to this Complaint and the fact that the Respondent is passively holding the disputed domain name, this Panel is satisfied on the balance of probabilities the Respondent registered the disputed domain name in order to take predatory advantage of the Complainant’s goodwill and reputation.
On the balance of probabilities the Panel finds that the Complainant’s MAHINDRA mark and its associated reputation and goodwill was known to the registrant when the disputed domain name was selected and registered in order to take predatory advantage of the Complainant’s reputation.
Furthermore this Panel finds that, while the Respondent itself does not have an active website at the address of the disputed domain name, on the balance of probabilities, the Respondent is knowingly allowing the domain name, over which it has control, to resolve to a web site on which there are links and advertisements which are causing confusion among Internet users and taking a predatory benefit from Internet traffic that associates the domain name with the Complainant’s business. The Respondent is therefore allowing the disputed domain name to be used in bad faith.
The Complainant has therefore established the third and final element of the test in paragraph 4(a) of the Policy and is entitled to the reliefs sought in the Complaint. 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.
James Bridgeman
Sole Panelist
Dated: November 12, 2010
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