The Complainant is Mahindra & Mahindra Limited, of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is Kabeer Chaudhary of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2011. On November 8, 2011, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2011, Ascio Technologies 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 November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Mr. Maninder Singh as the sole panelist in this matter on December 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 stated to be a part of the Mahindra Group of Companies which is amongst the top 10 industrial houses of India whose net worth is stated to be USD 6.3 billion. The Complainant is stated to be carrying on its 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 is the market leader in multi-utility vehicles in India and is in fact the 2nd largest manufacturer of Tractors in the world. The Complainant, since its inception, claims to have been dealing in goods under its trading style “Mahindra And Mahindra Ltd.” and is stated to be known and referred to amongst the members of the trade and general public as “Mahindra” or “M & M”. The Complainant has been bestowed with various awards in India and abroad. The Complainant claims to be the owner of numerous trademark registrations in various classes, in India and the world, for the trademark and trade name MAHINDRA (Annex.6). The Complainant is also stated to be the owner of numerous Internet gTLD and ccTLD domain name registrations incorporating the trademark MAHINDRA including ; ; ; and .
The Respondent has chosen not to submit any response to the contentions raised in the Complaint. In the absence of a Response there is no information available about the Respondent, except the details on the Registrar’s publicly available WhoIs. According to the WhoIs information and the Registrar verification, the disputed domain name was registered in the name of Respondent on August 11, 2009. 5. Parties’ Contentions A. Complainant
The Complainant-Group Company in its Complaint has, inter alia, raised the following contentions:
The Complainant claims to have been carrying on its 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”. It also claims to have been a part of an international group of companies with a net worth of USD 6.3 billion as of March 31, 2009 and claims to be a market leader in multi-utility vehicles in India and stated to be the second largest manufacturer of tractors in the world.
The Complainant further claims to have entered into partnerships with international companies like Renault SA, France, and International Truck & Engine Corporation, United States of America (“USA” or “US”) and its global subsidiaries include Mahindra Europe Srl. Based in Italy, Mahindra USA Inc. and Mahindra South Africa.
The Complainant is also stated to have one manufacturing plant in China, three Assembly plants in the US and one at Brisbane, Australia, a significant international business with manufacturing plants in China, the USA and Australia.
The Complainant claims to have its leading presence in key sectors of the Indian economy and is diversified into carrying on the business of various lifestyle and related products, financial services, trade and logistics, information technology, infrastructure development etc.
The Complainant claims that its group has been ranked by Forbes as one of the Top 200 World’s Most Reputable Indian Companies and has also been honored with “Japan Quality Medal” for its Farm Equipment and also with Bombay Chamber Good Corporate Citizen Award for 2006-07.
The Complainant contends that since its inception on January 13, 1948, it has been carrying on its business of manufacturing and dealing in goods under its corporate name / trading style “Mahindra And Mahindra Ltd.” and is claimed to be referred to amongst the members of the trade and the general public as “Mahindra” or “M & M”.
The Complainant claims to have been the registered proprietor of the trade mark / name MAHINDRA in several classes in India and the world since its inception in 1948 and is also claimed to be the proprietor of various domain names having the mark MAHINDRA with tlds “.us”, “.au”, “.biz”, “.in”, “.org” & “.net”. Complainant claims that due to application of high, stringent and non-compromising standards of quality by it, the goods and services bearing their mark MAHINDRA are popular, highly in demand and known for their superior quality and reliability, not only in India but also in several countries of the world.
The Complainant also claims that because of the extensive goodwill and reputation in the domain name and mark MAHINDRA in India and abroad the goods and services, the goods and services bearing the trade mark / name “MAHINDRA” have come to be associated by the members of trade and general public exclusively with the Complainant only. The Complainant has referred to and relied upon the pronouncements of the Supreme Court of India in the cases of –
Mahendra & Mahendra Paper Mills Limited Vs. Mahindra & Mahindra Ltd. – (2002) 2 SCC 147; and
Mahendra & Mahendra Seeds Pvt. Lt. Vs. Mahindra & Mahindra Limited – 2003 (26) PTC 434 (Guj.) Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
In order to show that the disputed domain name is identical and/or deceptively similar to the disputed domain name/mark, the Complainant contends that it enjoys statutory and common law proprietary rights over the marks MAHINDRA, MAHINDRA AND MAHINDRA, M&M and all its variants and public at large in various countries identify and relate the said marks exclusively to the Complainant and no one else. The Complainant contends that its trade mark/name MAHINDRA with its variants enjoy tremendous global reputation and popularity. The Complainant contents that with a view to protect the goodwill associated with its mark MAHINDRA and its variants, it has obtained trade mark and domain names registered in India as well as in various countries.
The Complainant contends that it has launched its private equity arm by the name of Mahindra Partners and the same also made big news in financial circles, private equity and venture capital market amongst financial experts and public at large. The disputed domain name is clearly identical and/or deceptively similar to the registered trade mark and the name of private equity arm of the Complainant and it fully incorporates the distinctive mark MAHINDRA PARTNERS of the Complainant. The term “mahindra” which forms the prefix of the second level domain is also the registered trademark of the Complainant.
The Complainant contends that it has numerous dealers, business partners and affiliates across the globe. The Complainant specifically authorizes such entities for being its business partner / associate for undertaking sales and distribution activities in relation to the goods / services of the Complainant.
The Complainant alleges that the Respondent has deliberately used the term “mahindrapartners” as its domain name being fully aware about the widespread reputation, reach and popularity associated with the Complainant’s trademark. The Complainant further alleges that the dishonest use of its trademark / name by the Respondent gives an impression to the public at large that the same deals with private equity arm of the Complainant and/or are business partners and affiliate authorized dealers of the Complainant and that the Respondent is associated with the Complainant. The Complainant contends that the disputed domain name is virtually, phonetically and structurally identical and/or confusingly similar to the Complainant’s trademark and trade name MAHINDRA. Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:
The Complainant contends that the Respondent has no rights or legitimate interests whatsoever in the disputed domain name and more particularly those giving rise to the circumstances prevailing in paragraph 4(c) of the Policy. There is no bona fide offering of goods or services under the disputed domain name by the Respondent. The Complainant further contends that the Respondent has never been known or even referred to by the disputed domain name. In fact, it has been contended by the Complainant in paragraph (xiii) thereof that the website under the disputed domain name states that “This website is for lease or sale” and “Please contact the owner for any queries”. Hence the Respondent does not have any legitimate interest or right over the disputed domain name .
The Complainant contends that upon learning about the registration of an identical and/or deceptively similar domain name by the Respondent, the Complainant issued a cease and desist letter dated May 17, 2010 to the Respondent requesting it to forthwith cease and desist from using the Complainant's trademarks / names and/or deceptively similar marks in any manner and for any purposes whatsoever. However, the Respondent has neither given any response to the Complainant nor has it initiated any step in compliance with Complainant's cease and desist letter. The Complainant alleges that if the Respondent had any legal interest or right in the disputed domain name, it would have conveyed its proprietary claim over the domain name and/or responded to the cease and desist letter of the Complainant.
The Complainant contends that the disputed domain name was created by the Respondent on August 11, 2009, i.e. around the date when the Complainant had launched its private equity arm by the name of “Mahindra Partners”. The Complainant further contends that the launch of “Mahindra Partners” by the Complainant made big news in financial circles, private equity and venture capital market, amongst financial experts and public at large. However, the Respondent ventured to get registered the disputed domain name in order to monetize and make monetary benefits through the same. The Complainant alleges that the Respondent is not and cannot be said to be making any legitimate noncommercial or fair use of the disputed domain name and it has no right or legitimate interest in the disputed domain name. Contentions regarding bad faith registration and use of the disputed domain name by Respondent:
As noticed above, it has been contended by the Complainant that the website under the disputed domain name states that “This website is for lease or sale” and “Please contact the owner for any queries”. The Complainant further contends that the Respondent registered the disputed domain name with a view to attract the Internet users to the Respondent's website by creating a deliberate and intentional confusion and/or deception to the Internet users with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Complainant alleges that the registration of the disputed domain name by the Respondent is disrupting the Complainant's legitimate use of its trade mark and trade name and preventing the Complainant and/or its authorised business partners/affiliates/dealers from rightfully obtaining its registration. Such conduct of the Respondent clearly violates the legal rights and interest of the Complainant over the mark MAHINDRA.
The Complainant further alleges that the passive holding of the disputed domain name by the Respondent clearly amounts to acting in bad faith as the Respondent is well aware of the widespread goodwill, reputation and popularity of the mark MAHINDRA.
The Complainant contends that the Respondent has created the disputed domain name when the Complainant launched its private equity arm by the name of “Mahindra Partners” in order to ride over the goodwill and reputation associated with the Complainant’s mark and thereby earn illegal monetary benefits out of it.
The Complainant contends that pursuant to issuance of cease and desist letter by the Complainant, the homepage under the disputed domain name was taken down by Respondent thereby giving an impression that the Respondent was in the process of discontinuing the use of disputed domain name, however, it got renewed the registration of the disputed domain name up to August 11, 2012. The Complainant alleges that this clearly establishes the bad faith of the Respondent to passively hold on to the domain name in order to make illegal benefits from the disputed domain name.
The Complainant states that the use of disputed domain name would always be associated with and identified to the private equity arm of the Complainant, “Mahindra Partners”. The Respondent is not making a legitimate or fair use of the disputed domain name which is identical and/or confusingly similar to the well known trade mark and trade name MAHINDRA of the Complainant. The Complainant alleges that the registration and usage of the disputed domain name by the Respondent is unfair and in bad faith with a view to mislead the members of the trade and / or the general public and / or to dilute, vitiate, impair, erode, water down and weaken the very inherent distinctiveness, uniqueness, individuality, singularity, strength, character, reputation and the proprietary value as otherwise subsisting in the Complainants trade marks and trade names.
The Respondent is using the disputed domain name with deliberate and mala fide intentions to attract the customers of the Complainant, market participants and public at large as the said domain name is identical or confusingly similar to a trademark of the Complainant. The action of the Respondent is creating a likelihood of confusion with the Complainant's mark as to the source, connection, sponsorship, affiliation and endorsement of the Respondent's website. B. Respondent
The Respondent did not submit any reply to the Complainant’s contentions in the complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has furnished evidence of its rights in the MAHINDRA trademark and service mark through its above-referred trademark registrations and at common law rights accrued to it through its long and substantial use of the mark not only in India but certain other parts of the world.
The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trade mark and domain names using the words “Mahindra”, “Mahindra and Mahindra”, “M&M” and all its variants since inception. The Panel observes that the Complainant has spent tangible sums of money for advertisement, publicity and other marketing initiatives for the trademark MAHINDRA in India and abroad. There does not appear to be any doubt that the Complainant is the owner of general mark with MAHINDRA as the distinctive element, as conceived, coined and developed by it and is widely used by it for decades. Indeed, it is a well known mark / name which is distinctive and identified with its owner for various goods and services. The Panel has no doubt that the Complainant has rights in the mark MAHINDRA and the registration and use of the mark name in question by suffixing the generic word “partners” to it has been done by the Respondent for creating a likelihood of confusion as to the source, connection, sponsorship, affiliation and endorsement of the Respondent's website. The disputed domain name with the addition of “partners” is not sufficiently different from the Complainant’s mark and the domain name of the Respondent would remain confusingly similar to the trademark MAHINDRA of the Complainant.
The Panel finds it useful to refer, in this regard, to certain UDRP decisions of WIPO and national courts. In the case of Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), it had been held that "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.").
Similarly, in the case of Oki Data Ameriacs., Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 it had been held that - “The fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.
The Panel has no doubt that the use of the word “partners” as suffix in any other mark or name - in order to attempt to distract from a relation to the Complainant - would neither be bona fide nor would it be permissible. The Panel, therefore, concludes that the domain name registered by the Respondent by suffixing the word “partners” to MAHINDRA, is confusingly similar to the well known trade/service mark and the domain names of the Complainant 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
The Panel has no doubt that the disputed domain name incorporates the well known and famous trademark and domain names of the Complainant by suffixing generic word “partners” to it. The Respondent has chosen not to submit any reply to contradict the case of the Complainant or give cogent response and/or documents to prove and show that Respondent has registered the disputed domain name as it has legitimate interests or rights in it. The Panel observes that the Complainant has made out a prima facie case proving its rights in the trademark MAHINDRA; the goodwill and reputation enjoyed by the Complainant for the mark/name in various countries. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash in on and ride over the name, goodwill and reputation of the Complainant. The Respondent is apparently attempting to extract commercial benefits for itself at the cost of the Complainant by adopting and having registered a confusingly similar domain name. The Panel has little difficulty in accepting that the Respondent has nothing to prove its bona fide use of the disputed domain name as it has failed to submit any response to the contentions made by the Complainant.
The Panel has, therefore, little doubt in its mind that the Respondent has no legitimate interests or rights in the disputed domain name and the Complainant has succeed in establishing the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel observes that it is the contention of the Complainant that the disputed domain name has been registered by the Respondent after having full knowledge through the wide media coverage/reporting of the launch of private equity arm by the Complainant with the name of “Mahindra Partners” and is being used in bad faith by the Respondent.
Since the Respondent has not submitted any response to the contentions raised by the Complainant in its Complaint, the Panel has no inhibition in accepting the contention of the Complainant that having fully aware of the commercial value and significance of its domain name, the Respondent has attempted to grab the domain name adding the s the word “partners” to it in order to take commercial advantage of it by riding over the substantial goodwill and reputation of the Complainant in the domain name.
The Panel is also of the view that the trademark of the Complainant MAHINDRA is well known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name of Respondent believing that there is connection, nexus, affiliation or association between the Complainant and the Respondent thereby extracting revenues to Respondent and further having the effect of disrupting the business of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by the Respondent and the Complainant has succeeded in establishing the third element of test in paragraph 4(a) of the Policy and is entitled to the reliefs sought by it 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.
Maninder Singh
Sole Panelist
Dated: December 30, 2011
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