The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is Stanley Pace of Flower Mound, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 13, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On December 14, 2011, F transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 23, 2011.
The Center verified that 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 December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 3, 2012. 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.
Regarding the language of the proceeding, the Center ascertained from the concerned Registrar, F Pty Ltd., that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the registration agreement. 4. Factual Background
The Complainant is a market leader in multi-utility vehicles in India and is one of the largest manufacturer of tractors in the world.
The Complainant is part of the Mahindra Group of Companies which ranks among the top 10 industrial houses of India.
It has three Assembly plants in the USA, and significant international business with manufacturing plants in the USA, including with International Truck & Engine Corporation.
Since adopting its current name on January 13, 1948, it has been carrying on its business of manufacturing and dealing in goods under its corporate name / trading style “Mahindra & Mahindra Ltd.” and is commonly referred to as “Mahindra” or “M&M”.
Because of the extensive reputation of the mark MAHINDRA in India and abroad, the goods and services bearing the trade mark / name MAHINDRA have come to be associated exclusively with the Complainant, as stated by the Supreme Court of India in the case of Mahendra & Mahendra Paper Mills Limited Vs. Mahindra & Mahindra Ltd. – (2002) 2 SCC 147, and by the High court of the State of Gujarat in the case of Mahendra & Mahendra Seeds Pvt. Lt. Vs. Mahindra & Mahindra Limited – 2003 (26) PTC 434 (Guj.).
Due to application of high, stringent and non-compromising standards of quality by the Complainant, the goods and services bearing the 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 has been the registered proprietor of a large number of trade mark registrations of or including MAHINDRA in several classes in India and the world, including by way of example United States trademark registration number 2255311, MAHINDRA, dated June 22, 1999.
In addition, the Complainant has registered and is using the mark MAHINDRA as a domain name and is thus the proprietor of various domain names having the mark MAHINDRA with gTLDs and ccTLD “.us”, “.au”, “.biz”, “.in”, “.org” & “.net”.
The Complainant has made substantial investment in advertising and promoting the goods and services bearing its marks.
The disputed domain name was created on May 23, 2009. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the mark MAHINDRA in which the Complainant has rights, and is confusingly similar to that mark insofar as the disputed domain name contains that mark in its entirety.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has not used, or made any demonstrable preparations to use, the disputed domain name, which seems to be currently "listed for sale", in connection with a bona fide offering of goods or services. Furthermore, the Complainant contends that the Respondent is not and cannot be said to be making any legitimate noncommercial or fair use of the disputed domain name, and has no connection to the owner of the mark MAHINDRA and has received no authorization from the Complainant.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It alleges that by registering the disputed domain name the Respondent has intentionally blocked the Complainant from using the disputed domain name and that by allowing the disputed domain name to resolve to a parking page hosted by a free parking service provider, Sedo, which uses it to upload third party links, the Respondent has made illegal benefits from the disputed domain name. Moreover, by offering the disputed domain name for sale, the Respondent is attempting to monetize the disputed domain name. By 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 Respondent is disrupting the legitimate use of the mark MAHINDRA and is misleadingly diverting consumers. Lastly, the fact that the Respondent has sought to protect its details from being published by using privacy services further exemplifies its bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained from the Center’s publicly available database of decided cases that the Respondent was a named respondent in eight cases during the last three calendar years.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. 6.2 Requirements of Paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the mark MAHINDRA to the disputed domain name, it is evident that the latter wholly incorporates the mark, followed by the generic term “.com”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
In the case of Oki Data Americas, 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 finds that the disputed domain name is confusingly similar to the mark MAHINDRA, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as the Panel believes it has made in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name resolves in a free parking page with uploaded third party links, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no legitimate interests in the disputed domain name; (ii) has never made a fair use of the disputed domain name, in relation with a bona fide offering of goods and services, and has not made demonstrable preparations of such use; and (iii) has no connection to or authorization from the Complainant.
In the circumstances, the Panel is satisfied that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering a domain name similar to the Complainant’s mark.
It is well known that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
Furthermore, the uncontradicted assertion that the products of the Complainant (bearing its mark MAHINDRA) are "available in every continent except Antartica" is also evidence of bad faith on the part of the Respondent in registering a domain name confusingly similar to a mark used worldwide. See VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421.
At the time the disputed domain name was registered, the Complainant had widespread, extensive use and advertisement of its mark MAHINDRA for numerous years. The notoriety of the mark, coupled with its registration in the USA, where the Respondent is located, make it highly unlikely that the Respondent would not have known of the Complainant's rights in the mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. vs. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028.
The Panel also accepts that the Respondent’s website will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the uploading of third party links on the page to which the Respondent's website resolves. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
The Panel has found that there is a clear pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trade marks from reflecting such mark in a corresponding trade name, which is clearly evidenced by the eight UDRP case decisions that have found against the Respondent for similar instances of unjustified domain name registration (see Flow Companies, LLC v. Stanley Pace,WIPO Case No. D2010-0651; Kayak Software Corporation v. Stanley Pace and Micah Smurthwaite,WIPO Case No. D2010-1178; Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; Starkey Laboratories, Inc. v. Stanley Pace,WIPO Case No. D2010-0774; Viacom International Inc. v. Stanley Pace / M Smurth Waite,WIPO Case No. D2010-1149; Weil Cadillac-Hummer, Inc. v. Stanley Pace,WIPO Case No. D2010-1711; Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; and Weil Cadillac-Hummer, Inc. v. Stanley Pace,WIPO Case No. D2010-1711).
In addition, the Panel can discern no legitimate basis for the Respondent’s use of a privacy shield service and considers this fact under the present circumstances as also corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC,WIPO Case No. D2006-0696.
The Panel concludes in these circumstances that the Respondent’s registration, use and present holding of the disputed domain name indicate bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 7. Decision
For 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.
Louis-Bernard Buchman
Sole Panelist
Dated: February 19, 2012
Full & Egal Universal Law Academy