The Complainant is Royale Indian Rail Tours Limited of New Delhi, India, represented internally.
The Respondent is Proxy, Inc. / Indian Holiday Pvt. Ltd. of Scottsdale, Arizona, United States of America and New Delhi, India, respectively, the latter represented internally. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2011. On February 16, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Name. On February 16, 2011, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2011, providing the registrant and contact information disclosed by GoD, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 21, 2011.
The Center verified that the Complaint together with the amended 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 February 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2011. The Response was filed with the Center on March 15, 2011.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 23, 2011. 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 is a joint venture company between the Indian Railways Catering and Tourism Corporation and Cox and Kings Limited, which operates a luxury train called the "Maharaja's Express", the name of which was announced and made public at a trade show during March 11 to 15, 2009. The Domain Name was registered on March 17, 2009, and it has been used to market five other different luxury trains services not connected with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant is a joint venture company between the Indian Railways Catering and Tourism Corporation and Cox and Kings Limited and has operated a luxury train called the "Maharaja's Express", the name of which was announced and made public at a trade show during March 11 to 15, 2009. Sums of money in excess of USD 500, 000 have been spent on publicity and marketing in Europe, the United States, France, Canada and Australia. The Complainant has filed applications at the Indian Trade Marks Registry for registration of the logo containing the "Maharaja's Express" name as a trade mark. MAHARAJA'S EXPRESS is a trade mark of the Complainant in which it has exclusive rights.
The Respondent registered the Domain Name on March 17, 2009. It is a misspelled/hyphenated, confusingly similar version of the Complainant's mark and its domain name , which the Complainant registered before this date.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not have any trade mark rights in the Domain Name.
The Domain Name has been used to market five other different luxury tourist trains services in India not connected with the Complainant. This is misleading as these trains are competing luxury trains with the same or similar destinations as the Complainant's service. No permission has been given by the Complainant for this.
The Respondent is deliberately, by registering such a similar domain name, seeking to redirect customers looking for the Complainant's services and customers are likely to think the site offering these other services is associated with the Complainant. The Respondent is also intending to capitalise on typographical errors.
The Respondent has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the services marketed on the Respondent's web site.
The Respondent has also registered the Domain Name to disrupt the business of a competitor. B. Respondent
The submissions of the Respondent can be summarised as follows:
The Complainant has not used MAHARAJA’S EXPRESS with a hyphen as used in the Domain Name.
The Complainant has not provided any proof of its trade mark applications.
The evidence provided by the Complainant is not provided under affidavit or certified and is not sufficient to show its rights in the mark MAHARAJA'S EXPRESS.
The Respondent is a large corporate entity and has been engaged in offering tailor made travel to high end customers for close to twenty years. The Respondent is doing well and does not need to trade upon the alleged goodwill and reputation of the Complainant. It provides tickets for various luxury heritage trains.
The Respondent states on its site that "Maharaja's Express", dubbed as India's equivalent of the “Orient Express” of Europe, is a joint venture between Cox and Kings and Indian Railways Catering and Tourism Corporation. Any interested user who contacts the Respondent via the form provided on its website, located at the Domain Name, receives an acknowledgement from the "Indian Luxury Trains Team" making it obvious that the operator of the web site is a travel and tourism service provider of third party tickets and facilities. On its parent web site, the Respondent has a disclaimer and would be willing to place a disclaimer on the web site attached to the Domain Name. The Respondent is not trying to portray itself as the Complainant or its affiliate nor would a user think it was the same. There has been no instance of evidence of confusion submitted.
Tickets for the Maharaja's Express Train are expensive and the customers are highly literate, sophisticated and knowledgeable and would realize they have visited the site of a third party operator. A search on Google against Maharaja's Express brings up two top results relating to the Complainant. The third search result is another tour operator and the Respondent's website comes fourth.
With regard to the rollover bar on the Respondent's web site which displays links to five other luxury Indian trains, tickets for these trains are not offered within the web site at the Domain Name in question. Instead the user is taken to other completely independent sites, one for each service therefore there is no “bait and switch”. It is therefore clear that these different trains are run by separate entities and that the Respondent is an independent travel service provider. Due to the way the Internet works there is no likelihood of confusion.
The Respondent only offers tickets of the Complainant's train service within the web page located at the Domain Name. The site does not falsely suggest it is the trade mark owner or that the web site is the official site. The Respondent has not indulged in any deceptive communications with actual or prospective customers suggesting an identity or relationship contrary to that which actually exists.
The Complainant is free to use other variants of domain names containing its name.
The Policy should not be used to prevent bona fide offering of goods and services.
The Respondent has been provided with log in information and a password by the Complainant to access the invoices generated by the Respondent and other details with regard to the Maharaja's Express train.
The Respondent is thus authorised. The site does no more than offer to book tickets legitimately for and behalf of the Complainant. There is no tarnishment. The Complainant, in fact, gains from sale of tickets therefore there is no disruption of the Complainant's business.
The Domain Name has not been registered in bad faith.
The Respondent also made various submissions under Indian law, which in the view of the Panel, are not relevant to the Policy relating to the Indian Law on free competition and use of a trade mark for honest business purposes. 6. Discussion and Findings
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 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 Complainant has demonstrated that through use it has built up considerable trading goodwill and reputation in the unregistered mark MAHARAJA'S EXPRESS1. The Panel does not agree with the Respondent that the evidence provided by the Complainant is not satisfactory in this regard. It is clear from the evidence submitted by the Complainant that the Complainant's train service is widely known by the MAHARAJA's EXPRESS mark in India and elsewhere.
The Domain Name consists of the Complainant’s MAHARAJA'S EXPRESS mark and the addition of a hyphen, which does not serve to distinguish the Domain Name from the Complainant's trade mark, and the generic “.com” top level domain which is ignored for the purposes of the Policy. As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent contends that it is using the Domain Name in connection with a bona fide offering of goods and services and that it is a legitimate reseller. Even if this were true, this would not legitimize the use of the Complainant's trade mark in a domain name to sell the services of the Complainant's competitors. The Respondent’s web site connected to the Domain Name is offering third-party train services provided by the Complainant’s competitors via the rollover bar/buttons prominently placed at the top of the Respondent’s web site. As such the Panel finds that the Respondent has gone beyond legitimate use and that the Respondent has no rights or legitimate interests in the Domain Name for the purposes of the Policy. See Oki Data Americas, Ins. V. ASD, Inc.,WIPO Case No. D2001-0903. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The Panel does not agree with the Respondent’s contention that its web site is not confusing. The use of a domain name approximating exactly to the Complainant's trade mark with the mere addition of a hyphen suggests, in itself, that the site is connected with or authorised by the Complainant. The Panel finds that nothing on the web site disabuses the user of that impression. The reference to the Complainant on the main page of the web site attached to the Domain Name, in the opinion of the Panel, adds to the confusion and creates the impression that the site is the official site of the Complainant; and does not, as the Respondent contends, serve to make the true position clear. Accordingly, even without the issue of the rollover bar/links offering third party services users may be confused into thinking that the Respondent’s web site is the official site of the Complainant.
Further, the links on the buttons/rollover bar at the top of the Respondent’s web site, which is connected to the Domain Name may lead, if clicked upon, to web pages connected to different domain names, but, as all the web pages appear similar in appearance in terms of trade dress to the web site attached to the Domain Name, a consumer may not realise they have gone to another site, or even if they do, may infer, correctly, that all the services are being offered by one entity due to the similarity in the appearance of all the web pages. What is not clear, however, it that this entity offering the services is not the Complainant, but is in fact, the Respondent offering the services of third parties. As such the Panel finds that a “bait and switch” is likely to occur.
Accordingly the Panel believes the Domain Name and the web site attached to it is highly confusing even bearing in mind the claimed sophistication of the purchasers of these services.
Accordingly, it does appear that, for commercial gain and by means of use of the Complainant’s MAHARAJA’S EXPRESS mark in the Domain Name, the Respondent has intentionally attempted to attract and cause confusion amongst Internet users between the Complainants’ mark and the business and services of third parties including the Respondent’s own business and services offered on the site attached to the Domain Name.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith under Paragraph 4(b) of the Rules as set out above.
In the light of this finding the Panel does not need to consider further the other contentions of the Complainant that the Respondent is intending to capitalise on typographical errors or to disrupt the business of the Complainant. 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.
Dawn Osborne
Sole Panelist
Dated: April 7, 2011
1 For a discussion on unregistered trademark rights see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 1.7.
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