The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with A (I) Pvt Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2012. On January 3, 2012, the Center transmitted by email to A (I) Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On January 5, 2012, A (I) Pvt 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 January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2012.
The Center appointed Alexandre Nappey as the sole panelist in this matter on February 14, 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. 4. Factual Background
The Complainant is an Indian company associated within the prominent Mahindra Group, which has been established for over 60 years. Mahindra & Mahindra Limited manufactures or sells a wide range of goods including farming equipment such as tractors.
The Complainant is the holder of a number of registered trademarks including MAHINDRA, among which are the following:
- Indian registered trademark MAHINDRA, registration no. 322911B dated February 10, 1977, registered in class 12;
- Indian registered trademark MAHINDRA, registration no. 728305, dated December 26, 1996, registered in class 16;
- Indian registered trademark MAHINDRA no. 728307, dated December 26, 1996, registered in class 16;
- Indian registered trademark MAHINDRA (device), no. 1460954 dated June 16, 2006, registered in class 35;
- Indian registered trademark MAHINDRA & MAHINDRA (device), no. 1459605 dated June 14, 2006, registered in class 35;
- Indian registered trademark MAHINDRA & MAHINDRA, no. 800565 dated April 30, 1998, registered in class 16;
- Indian registered trademark MAHINDRA no. 728304 dated December 26, 1996 in class 7;
- Australian registered trademark MAHINDRA no. 995041dated March 26, 2004, registered in class 12;
- Japanese registered trademark MAHINDRA no. 4433617 filed December 28, 1999, registered in class 12;
- O.A.P.I. registered trademark MAHINDRA no. 39797 dated August 28, 1998 registered in class 12;
- European Community trademark registration no. 000492066 registered on August 31, 1999 in classes 6, 9, 11, 12 and 17;
- United States registered trademark MAHINDRA, no. 2255311 dated June 22, 1999 in class 12.
The Complainant also owns numerous domain names including “Mahindra”, notably the following gTLDs:
- ,
- ,
- ,
And the following ccTLDs:
- ,
- ,
- .
It is also noticed that the Complainant holds trademark rights for MAHINDRA XYLO among which an Indian nominative trademark filed on July 24, 2008 and registered for products in classes 7, 12 and 16 can be found.
Furthermore, the Complainant holds rights in the domain name .
Nothing is known about the Respondent except for the identification details provided in the publicly available WhoIs for the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is identical or at least confusingly similar to a trademark in which the Complainant has rights because MAHINDRA XYLO is both a registered and unregistered trademark owned by the Complainant.
In support thereof, the Complainant has provided copies of trademark registration certificates for MAHINDRA XYLO in many jurisdictions, including India, Thailand, and South Africa.
The Complainant further states that disputed domain name “is clearly identical and/or deceptively similar to” each of the trademarks MAHINDRA XYLO and MAHINDRA.
Furthermore, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name because “there is no bona fide offering of goods or services under the disputed domain name by the Respondent.”
The disputed domain name was registered and is being used in bad faith since the disputed domain name was registered “when the media coverage and speculation in connection to the launch of the car under the mark MAHINDRA XYLO was at peak .“. “The Respondent registered the Domain Name to dishonestly benefit and cash upon the media coverage and popularity which enjoined the trademark MAHINDRA XYLO”.
The Complainant further states that the registration and use of a well-known trademark, in the present case MAHINDRA XYLO, with deliberate and mala fide intention of occupying the disputed domain name and thereafter making commercial gain by misleading consumers shows bad faith of the Respondent.
Therefore the Complainant requests transfer of the disputed domain name. 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 to obtain an order that the disputed domain name be transferred:
(1) that the disputed 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 disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based upon the trademark registrations cited in the Complaint, it appears that the Complainant has trademark rights in the mark MAHINDRA XYLO.
As to whether the disputed domain name is identical or confusingly similar to this trademark, the relevant comparison to be made is with the second-level part of the disputed domain name only “mahindraxylo”, as it is well-established that the gTLD suffix (i.e., “.com”) should be disregarded for this purpose.
Then it appears that the disputed domain name is strictly reproducing the Complainant’s trademark MAHINDRA XYLO. Therefore the disputed domain name is identical to the prior trademark rights held by Complainant.
Accordingly, the Panel finds that Complainant has proven the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has stated prima facie that the Respondent has no such rights or legitimate interests. In anticipation of any assertion by the Respondent of having any rights or legitimate interests in terms of paragraph 4(c) of the Policy, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and has registered it in bad faith.
The Respondent had the opportunity to rebute the terms of paragraph 4(c) of the Policy, or otherwise, the prima facie case stated by the Complainant in the terms of paragraph 4(a)(ii) of the Policy. The Respondent has made no reply and there is nothing in the evidence to suggest that it could establish any such rights or legitimate interests.
The Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the fact that the disputed domain name and the Complainant’s MAHINDRA XYLO trademark, the fact that the Complainant has an established international reputation that extends beyond India to many jurisdictions the fact that the disputed domain name was registered in October 2008 years after the trademark MAHINDRA was registered and several months after the Complainant filed application for the MAHINDRA XYLO mark the fact that the domain name was registered at the time the media coverage and speculations in relation to the launch of the car under the mark MAHINDRA XYLO was at peak, as stated by Complainant and supported by the evidence submitted, the Panel is satisfied the Respondent registered the disputed domain name in order to take unfair advantage of the Complainant’s goodwill and reputation.
On the balance of probabilities the Panel finds that the Complainant’s MAHINDRA and MAHINDRA XYLO marks and their associated reputation and goodwill were known to the Respondent when the disputed domain name was selected and registered in order to take unfair advantage of the Complainant’s reputation.
Furthermore the Panel finds that the Respondent is knowingly allowing the disputed 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 an unfair benefit from Internet traffic that associates the domain name with the Complainant’s business. The Respondent is therefore using the disputed domain name to be used in bad faith.
The Complainant has therefore established the third element of the test in paragraph 4(a) of the Policy. 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 disputed domain name be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Dated: February 28, 2012
Full & Egal Universal Law Academy