The Complainant No. 1 is Mahindra & Mahindra Limited of Mumbai, India, represented by Khaitan & Co., India.
The Complainant No. 2 is Mahindra Two Wheelers Limited of Mumbai, India, represented by Khaitan & Co., India.
The Respondent is , Privacy Protect of Shanghai, China / Milan Kovac of Bratislava, Slovakia. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2012, the Registrar 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 July 19, 2012 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 July 23, 2012. On July 19, 2012, the Center transmitted an email to the parties in both Slovak and English language regarding the language of proceedings. On July 23, 2012, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 July 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 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. 4. Factual Background
The Complainant No. 1 is a flagship company of the Mahindra Group of Companies. It is among the top ten industrial houses in India. It is a market leader in multi utility vehicles in India, and is in fact the second largest manufacturer of tractors in the world. The Mahindra Group has a leading presence in key sectors of the Indian economy and is diversified into carrying on the business of manufacturing automobiles and automotive components, retail business of various lifestyles and related products, financial services, trade and logistics, information technology, infrastructure development and after-market. With over 62 years of manufacturing experience the Mahindra Group has built a strong base in technology, engineering, marketing and distribution. The Mahindra Group has grown from a local outfit to a USD 15.4 billion corporation employing more than 112,000 people around the world, and has several facilities in India and overseas. Its products are available in every continent except Antarctica.
Since its inception on January 13, 1948, the Complainant No. 1 has carried on the business of manufacturing and dealing in goods under its corporate name and trading style viz. “Mahindra and Mahindra Ltd” and more popularly also known and referred to amongst the members of the trade or general public as “Mahindra and Mahindra”, “Mahindra”, “Mahindra (Infinity) Logo” and “M&M”.
The Complainant No. 1 is the owner of numerous trademark registrations (listed in Annex 4 to the Complaint).
The Complainant No. 1 is the owner of the following trademarks: MAHINDRA AND MAHINDRA LTD, MAHINDRA AND MAHINDRA, MAHINDRA, MAHINDRA (INFINITY) LOGO, M&M. The trademarks MAHINDRA and MAHINDRA & MAHINDRA are deemed as famous marks (see inter alia judgment of the Honorable Court of India in the case of Mahendra and Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited of 9 November 2001). The Complainant No. 1 is also the owner of domain names containing the term “mahindra” (full list of domain names including the Complainant’s trademark is in Annex 5 to the Complaint). The Complainant No. 1 is the owner of the following domain names: , , , , , , , , , and .
The Complainant No. 1 launched and incorporated the Complainant No. 2, an arm of Mahindra Group and subsidiary company of the Complainant No. 1 as a special purpose to deal in two wheelers, motorbikes and other items. For the benefit of the Complainant No. 2, known also as “Mahindra Two Wheelers”, the Complainant No. 1 also filed a trademark application for registration of “Mahindra 2 Wheelers” (Annex 11 of Complaint), and registered the domain names and , which have been actively used for business/trade information related purposes.
The Respondent registered the disputed domain name on November 2, 2009. Around May 23, 2012 the Complainant No. 1 learned that the disputed domain name was registered and used by the Respondent. 5. Parties’ Contentions A. Complainant
In the Complainants’ view the disputed domain name is identical or confusingly similar to trademarks in which the Complainants have statutory and common law proprietary rights, since it consists of the registered trademark MAHINDRA of the Complainant No. 1, as well as the mark of Complainant No. 2, being at the same time trademark MAHINDRA 2 WHEELERS registered by the Complainant No. 1. The lack of the letter “s” in the disputed domain name does not change that impression. The Complainants are confident that a typical Internet user, whenever it reaches the disputed domain name, would find that the domain name creates an affiliation with the Complainants. The confusing similarity includes an obvious association with the trademarks of the Complainants. With reference to the reputation of the trademarks of the Complainant No. 1 there is a considerable risk that the disputed domain name will be treated as one owned by the Complainants or at least to a company related thereto (“initial interest confusion”). Moreover, by using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainants’ trademark, which may result in dilution and other damage to the Complainants’ trademark. Moreover, the Complainants provide that the registration and use of the disputed domain name is a classic example of a “typosquatting” action, where the disputed domain name is a slight misspelling of a famous trademark. It is also likely, in the Complainants’ view, that the disputed domain name has been registered in order to divert Internet traffic, via an easily made typing error made by an Internet user.
Secondly, the Complainants allege that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants submit that the disputed domain name was registered without obtaining any prior consent or authorization from the Complainants. The Respondent is not a licensee of either of the Complainants. The Complainants demonstrate that there is nothing that could justify the Respondent’s use of the disputed domain name - there is no such trademark or trade name registration for the Respondent. The Complainants have also not found anything that would suggest that the Respondent has been using the disputed domain name in any other way that would give them any rights or legitimate interests in the name. In addition to the above, it is highly unlikely that the Respondent would not have known of the Complainants’ legal rights in the name MAHINDRA at the time of the registration, hence the Respondent’s interests cannot have been legitimate. Lastly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a disputed domain name based on the Complainants’ registered trademarks in order to generate traffic to a commercial website offering different consumer products.
Thirdly, the Complainant submitted that the disputed domain name was registered and is being used in bad faith. It appears from the WhoIs database that the Respondent created the disputed domain name on November 2, 2009, when the media coverage in relation to Complainants’ two wheeler business was at peak. Moreover, the Respondent used the reference to the mark MAHINDRA MOJO (brand name of the scooter produced by the Complainant No. 2) at its website run under the disputed domain name. The Complainants claim that this demonstrates that the Respondent, being aware thereof, must have registered the disputed domain name in bad faith. Moreover, the Respondent has not submitted any Response to the Complaint, nor has any other reaction from the side of the Respondent been received. This is sufficient to demonstrate the Respondent’s bad faith. Moreover, by using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainants to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name; and
(c) the disputed domain name has been registered and is being used by the Respondent in bad faith.
A complaint may only be granted if the above criteria are met simultaneously. A. Language of the Proceedings
The language of the Registration Agreement is Slovak. The Complainant has requested that English be adopted as the language of the proceedings. Having reviewed the circumstances including the following, the Panel determines that English be the language of the proceedings:
(a) The disputed domain name consists of English words;
(b) The website at the disputed domain name utilizes English in part;
(c) The Respondent has not commented on the language of the proceeding and has not objected the Complainants’ request that English be the language of the proceedings; and
(d) The Respondent has chosen not to participate in the proceedings by failing to file a Response, despite the Center indicating to the Parties that it would accept a Response filed in either English or Slovak. B. Identical or Confusingly Similar
The Complainants have proved to the Panel’s satisfaction that the disputed domain name is confusingly similar to the trademarks of the Complainants.
The confusing similarity of the disputed domain name to the Complainants’ trademarks and service marks is apparent from a simple visual comparison. Unquestionably, which is further confirmed by a number of UDRP administrative panel decisions, the Complainants’ trademarks are widely-known (see Mahindra & Mahindra Limited, Mahindra Retail Private Limited v. Standard Tactics LLC, WIPO Case No. D2009-1632; Mahindra & Mahindra Limited v. Advansoft World Wide, WIPO Case No. D2000-0247; Mahindra & Mahindra Limited v. Neoplanet Solutions, WIPO Case No. D2000-0248; Mahindra & Mahindra Limited v. Portfolio Brains LLC, WIPO Case No. D2009-0209; Mahindra & Mahindra Limited v. Zach Segal, WIPO Case No. D2009-0895; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Mahindra Reva Electric Vehicles Private Limited and Mahindra & Mahindra Limited v. Mike Shane, WIPO Case No. D2010-2182).
The disputed domain name clearly incorporates the distinctive trademark of the Complainant No. 1 MAHINDRA in which the Complainant No. 1 has statutory as well as common law rights with the addition of only the common words “two” and “wheeler”.
The above test is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainants have rights (see also Oki Data Americas Im v. ASD Inc,WIPO Case No. D2001-0903, wherein the UDRP panel found that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants’ marks and trademarks MAHINDRA as a consequence, the Complaint brought by the Complainants meets the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which has not been rebutted.
The Panel finds there is no bona fide offering of goods or services under the disputed domain name by the Respondent. Admittedly, the Respondent is not authorized nor permitted by any of the Complainants to adopt, use and register the disputed domain name, nor is the Respondent connected or related to either of the Complainants in any manner. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. As found in other UDRP Panel decisions, for example in Guerlain S.A. v. Peikan,WIPO Case No. D2000-0055, in the absence of any license or permission from the Complainants, under the circumstances, no actual or contemplated bona fide or legitimate use could be established by the Respondent.
Nonetheless, the Respondent was also given the opportunity to challenge the case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name.
The Panel therefore infers from the Respondent’s silence and the Complainants’ contentions, supported by a number of exhibits, that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name .
For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. D. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy a domain name is considered to be registered in bad faith, when, 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 Respondent’s web site or location or of a product or service on its web site or location.
Based on the record submitted by the Complainants, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Panel is confident, that, in this case, the Respondent’s intention was to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants marks and trademarks as an attractant. The Respondent’s registration of the disputed domain name was done with a view to illegitimately taking advantage thereof.
It appears from the WhoIs database that the Respondent created the disputed domain name on November 2, 2009, when the media coverage in relation to Complainants’ two wheeler business was at peak. Moreover the Respondent has also in his homepage operated under the disputed domain name referred to the name “Mahindra Mojo”, which in fact is utilized by the Complainant No. 2. This name is reserved for one of the scooter brands produced by the Complainant No. 2. In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of the Complainants’ trademarks and services at the time the Respondent registered the disputed domain name, or at least should have known and is using the disputed domain name in the manner described in paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent attempted to mask its details on WhoIs records by using privacy services provided by Whois Privacy Services Pty Ltd, which may further support the Panel’s finding of registration and use of the disputed domain name in bad faith.
Consequently, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled. 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 No. 2, Mahindra Two Wheelers Limited.
Piotr Nowaczyk
Sole Panelist
Dated: September 14, 2012
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