The Complainants are Mahindra & Mahindra Limited of Mumbai, India ("Complainant 1"), CIE Automotive, S.A. of Spain ("Complainant 2"), and Mahindra CIE Automotive Ltd of Mumbai, India ("Complainant 3", together the "Complainants"), represented by Khaitan & Co., India.
The Respondent is Khalil Semhat of Tripoli, Libya (the "Respondent"). 2. The Domain Name and Registrar
The disputed Domain Name (the "Domain Name") is registered with F (the "Registrar"). 3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2014. The original Complaint identified WhoIs Privacy Services Pty Ltd ("WhoIs") as the Respondent. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On April 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing the identity of the registrant of the Domain Name (i.e. the Respondent) and his contact information, which differed from the named respondent in the original complaint. The Center sent an email communication to the Complainants on April 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the complaint. The Complainants filed an amended Complaint on April 21, 2014 (the "Complaint"), naming only Khalil Semhat as the Respondent.
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 April 22, 2014. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on May 16, 2014.
The Center appointed D. Brian King as the sole panelist in this matter on May 27, 2014. The Panel finds that it was properly constituted. The Sole Panelist 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 (a) Trademarks
The Complaint is based on the trademarks MAHINDRA and CIE and is brought by three related Complainants.
Complainant 1 is the flagship company of the Mahindra Group of Companies, founded in 1948. Since its inception in 1948, Complainant 1 has carried on business under the corporate and trading name of "Mahindra and Mahindra Ltd" and has been popularly known as "Mahindra and Mahindra" or "Mahindra." Complainant 1 is the registered owner of a number of trademarks embodying the word Mahindra, including "MAHINDRA AND MAHINDRA" and "MAHINDRA" (Annexure 5 to the Complaint): from as early as 1977 in India, Australia, Japan and the United States.
Complainant 2 was established in 2002 and concentrates its resources in producing automotive components, roofing systems and biofuels. Complainant 2 carries on business activities under the trademarks of CIE and CIEAUTOMOTIVE. Complainant 2 is the registered owner of the CIE and CIEAUTOMOTIVE trademarks in various countries around the world (Annexure 10 to the Complaint): from as early as 2002 in Argentina, Brazil, Canada, Guatemala, India, Korea, Kosovo, Mexico, USA, Algeria, Bulgaria, China, Croatia, Cuba, Egypt, Slovakia, Russia, Hungry, Montenegro, Poland, Czech Republic, Romania, Serbia, Singapore, Switzerland, Turkey, Ukraine, Bosnia and Herzegovina, Japan, Korea, Turkey, China and Spain.
Complainants 1 and 2 entered into a business arrangement whereby Mahindra Forgings Limited (one of the companies within the Mahindra group of companies) was renamed Mahindra CIE Automotive Ltd (Complainant 3). This business alliance was made public in the news and media (Annexure 13 to the Complaint). Complainants 1 and 2 entered into brand license agreements on June 15, 2013 authorizing Complainant 3 to use the "Mahindra" trademarks and the "CIE" trademarks as part of its corporate name, domain name, and for marketing purposes.
The Complainant's trademarks are used in connection with the automotive industry. (b) Domain Name
The Domain Name was registered by the Respondent on June 17, 2013. Notably, this coincided with the announcement of the partnership between Complainants 1 and 2 for the creation of Complainant 3.
Around December 2013, the Complainants learned of the Domain Name. Thereafter, the Complainants endeavored to learn the identity of the registrant to no avail. The Respondent's identity as the registrant of the Domain Name was initially masked in the WhoIs database through the use of a privacy service. Information was finally provided about the Respondent by the Registrar in April 2014, after the Complainants first submitted their Complaint in the present dispute against the Registrant listed in the WhoIs. As outlined above, the Complainants then amended the present claim, and named the disclosed Registrant of the Domain Name as the Respondent.
A screenshot dated March 26, 2014 of the webpage underlying the Domain Name (which was included in the case file) appears to advertise the sale of domain names. What appears to be a second screenshot dated April 22, 2014 (also included in the case file) shows an empty blue screen, with a banner containing the words "Mahin Dracie" and the email address "admin@". The Panel has no details regarding when the change was made, but notes that it visited the webpage during its deliberations, and found that the web page appeared to be unchanged since the April 22, 2014 screenshot. The result of a search of the Domain Name conducted on March 26, 2014 on the WhoIs website indicates that the site was "For Sale" (Annexure 1 to the Complaint). 5. Parties' Contentions A. Complainants
The grounds set out in the Complaint can be summarized as follows.
The Complainants claim that the Domain Name is identical and/or deceptively similar to the trademarks MAHINDRA and CIE. The Complainants claim that they have statutory and common law rights over their respective trademarks. Complainant 1 also highlights its previous domain name disputes, in which it has been successful in similar claims relating to the infringement of its trademarks. Finally, the Complainants contend that the Respondent has dishonestly copied the registered trademarks of the Complainants in order to give an impression that it is related to the Complainants or that the Domain Name is an official website of the Complainants.
The Complainants claim that the Respondent has no rights or legitimate interests whatsoever in the Domain Name. The Complainants submit that the Respondent is not offering goods or services under the Domain Name. The Complainants claim that because there has not been any authorization or permission by any of the Complainants for use or registration of the Domain Name, no actual or contemplated bona fide or legitimate use could be claimed by the Respondent. The Complainants state that the Respondent is not using the Domain Name and thus has no interest whatsoever in the Domain Name, other than making unlawful commercial gains. Thus, argue the Complainants, the Respondent is not making any legitimate non-commercial or fair use of the Domain Name and has no rights or legitimate interests in the Domain Name.
The Complainants also contend that the Domain Name was registered and is being used in bad faith. The Complainants state that the Respondent intends to mislead the public or dilute the value of the Complainants' trademarks. The Complainants submit that the Respondent has obtained registration of the Domain Name for the purpose of selling it, making unlawful gains, and blocking use of the Domain Name. The Complainants say that this is evidenced by the Respondent's failure to use the site and its use of privacy services to protect its identity. The Complainants claim that further evidence of the Respondent's bad faith can be inferred from the timing of the registration of the Domain Name, which coincided with the announcement of a partnership between Complainants 1 and 2 to create Complainant 3. Finally, the Complainants claim that the fact that the Domain Name had advertised the sale of domain names evidences the Respondent's underlying motive in registering the Domain Name—to thereafter sell it to the Complainants.
The Complainants request that the Panel transfer the disputed Domain Name to Complainant 3. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainants must prove the following three elements in order to be successful in their action:
- a) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
- b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- (c) The Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the Domain Name is confusingly similar to trademarks in which the Complainants have rights. The reasoning is as follows.
At the outset, the Panel finds that the Complainants have provided sufficient evidence that Complainant 1 has rights in numerous trademarks using the mark MAHINDRA (Annexure 5 to the Complaint) and that Complainant 2 has rights in numerous trademarks using the mark CIE (Annexure 10 to the Complaint). Evidence has not been adduced, however, that Complainant 3 has registered or common law trademarks in the joining together of those two marks.
The Panel finds that the mark Mahindra is distinctive enough in nature that the joining together of "Mahindra" with most other words or letters in a domain name would likely be "confusingly similar" to a MAHINDR" trademark. The mark CIE alone is less distinctive and can, in theory, be an abbreviation for a number of different organizations; a case relating to the use of "CIE" alone would require a more robust assessment of the facts.
The Complainants contend that the Domain Name is comprised of the joining together of the two individual, distinctive trademarks – MAHINDRA and CIE – belonging to Complainants 1 and 2, respectively. Critical to the Panel's finding is that Complainants 1 and 2 created what the Complainants have described as a "global alliance" in June 2013, and this alliance was made public. The business arrangement made between Complainants 1 and 2 came to be named Mahindra CIE Automotive Ltd (Complainant 3 in the present dispute). The Complainants have included evidence in Annexure 13 to their Complaint that Complainant 3 has been referred to by third parties as "Mahindra CIE".
The Complainants cited in support of their case a previous decision of an administrative panel constituted under the Policy: Mahindra Reva Electric Vehicles Private Limited and Mahindra & Mahindra Limited v Mike Shane,WIPO Case No. D2010-2182. The panel in that case was also considering a domain name that purportedly infringed upon two separate trademarks. The panel cited other cases relating to the use of two trademarks together and then stated: "The present case can be distinguished from these earlier decisions only in that both of the applicable trademarks are owned by each of the Complainants, rather than one trademark being owned by a third party. If anything, this only enhances the confusing similarity, given the additional expected association held by Internet users between these two trademarks." The present Panel agrees with that reasoning.
While the Panel noted earlier that "CIE" might be comparatively less distinctive on its own, in light of the Panel's findings in relation to the association between Complainants 1 and 2 and the creation of Complainant 3, the use of "CIE" following "Mahindra" makes the Domain Name "confusingly similar" to the marks in which Complainants 1 and 2 have rights. The Panel finds that the Complainants have satisfied the requirements of the first element of the test under paragraph 4 of the Policy. B. Rights or Legitimate Interests
The Complainants have argued that the Respondent has no rights or legitimate interests in the Domain Name. In particular, the Complainants note that there is no genuine offering of goods or services on the website underlying the Domain Name. The Panel finds the Complainants' argument to be persuasive. At present, the Domain Name resolves to nothing more than a blank blue screen with the words "Mahin Dracie" and an email address; the website does not appear to be put to any active use. The Panel further finds that the Respondent has not been authorized or permitted by the Complainants to use their trademarks in the Domain Name.
Many UDRP panels constituted under the Policy and the Rules have found that Complainants only need to establish a prima facie case in relation to rights or legitimate Interests under paragraph 4 of the Policy (See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Those UDRP panels found that the burden then shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name.
The present Panel agrees that the Complainants need only make a prima facie case and finds that they have successfully done so based on the facts and arguments described above. The Respondent has not participated in these proceedings, and has therefore not availed itself of the opportunity to adduce evidence of its rights or legitimate interests in the Domain Name. The Panel finds that the Complainants have satisfied the requirements of the second element of the test under Paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element of the test under Paragraph 4(a) of the Policy requires proof that the Domain Name has been registered and is being used in bad faith. The Panel finds that the Complainants have satisfied that burden.
The timing of the Respondent's registration of the Domain Name indicates that it was made in bad faith, within the meaning of the Policy. The Domain Name was registered on June 17, 2013 (Annexure 1 to the Complaint), which is contemporaneous with the announcement made by Complainants 1 and 2 of the formation of their joint venture, Complainant 3. Given the timing of the registration, the Panel finds that it is highly unlikely that the Domain Name was registered for any bona fide purposes.
Nor has it been used in good faith. Rather, the fact that the Domain Name is not being put to any apparent active use suggests that the Respondent's primary purpose for registration was in hopes that it could monetize the Domain Name by selling it in the future. That a search of the Domain Name on WhoIs on March 26, 2014 indicated that the Domain Name was for sale is consistent with the view that the Respondent's sole purpose in the registration was to sell the Domain Name at a premium (which is evidence of bad faith under Paragraph 4(b)(i) of the Policy).
By not participating in the proceedings, the Respondent has not availed itself of the opportunity to explain the timing of the registration or its motives generally. The Respondent's failure to participate leads the Panel to infer that the Respondent has nothing useful to say in that regard. 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 Complainant 3.
D. Brian King
Sole Panelist
Date: June 10, 2014
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