The Complainant is Mahindra & Mahindra Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Guangdong Trading and Investment Ltd. of Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2016. On March 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2016.
The Center appointed David A.R. Williams QC as the sole panelist in this matter on April 4, 2016. 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 a company incorporated in India. It manufactures a range of products, including tractors, harvester combines, diesel forklifts and other products. After an amalgamation with Punjab Tractors Limited on January 16, 2009, the Complainant became the proprietor of multiple trademark registrations for SWARAJ. The Complainant and/or its predecessor, Punjab Tractors Limited have continuously used the SWARAJ trademark in respect of its product line in India and abroad since approximately 1970.
On September 23, 2014 the Respondent registered the disputed domain name which incorporates the Complainant’s trademark, SWARAJ. The disputed domain name resolves to a parking page that contains advertisements and links to other websites which offer similar or identical goods to the Complainant’s and an offer to purchase the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are summarized at section [11] of the Complaint as follows:
(a) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant submits that it is the flagship company of the Mahindra Group of companies which manufactures tractors and “has a leading presence” in India. The Complainant has multiple registrations for its trademark, SWARAJ (Reg. No. 454029 (May 13, 1986); Reg. No. 454030 (May 13, 1986); Reg. No. 454031 (May 13, 1986); Reg. No. 463264 (November 18, 1986); and Reg. No. 331735 (December 19, 1977)), which it uses in respect of the manufacture, advertisement and sale of its products via the Internet throughout India. The Complainant alleges that the disputed domain name is identical or confusingly similar to its trademark because it incorporates the Complainant’s trademark, SWARAJ, and the word “tractor” which is an identical product for which the Complainant uses its trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Respondent has no legitimate rights or interest in the disputed domain name for the following reasons. First, the Respondent has not demonstrated a use of the disputed domain name that is “a bona fide offering of goods or services”. Rather, the disputed domain name “resolves to a parking page which provides links to third party websites which offer goods and services” similar to those of the Complainant. Second, the disputed domain name is advertised for sale. Third, the Respondent is “not commonly known by the disputed domain name”, and is only using the disputed domain name to “misappropriate the reputation” of the Complainant associated with the SWARAJ trademark. Finally, the Complainant has not granted a license or consented to the Respondent using the SWARAJ trademark in any manner.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the failure of the Respondent to show a “demonstrable use” of SWARAJ prior to the Complainant’s use of it, “clearly establishes the mala fide intent on the part of the Respondent”. The Complainant further alleges that the Respondent registered the disputed domain name for the sole purpose of “squatting” it and benefiting from the Complainant’s goodwill. Finally, the Complainant alleges that as the current landing page provides links to websites which offer similar products and services to those of the Complainant, the Respondent must be aware of the Complainant’s business activities in respect of the SWARAJ trademark, and that is sufficient to amount to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
(i) 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;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two elements. First, the Complainant must have rights to the relevant trademark or service mark; and second, the disputed domain name must be “identical or confusingly similar” to the trademark or service mark in which the Complainant has rights.
In relation to the first element, the Complainant has multiple current registrations for the trademark SWARAJ in India: Reg. No. 454029 (May 13, 1986); Reg. No. 454030 (May 13, 1986); Reg. No. 454031 (May 13, 1986); Reg. No. 463264 (November 18, 1986); and Reg. No. 331735 (December 19, 1977). The Panel is satisfied that the Complainant has rights to the trademark SWARAJ.
Turning to the second element, the disputed domain name incorporates the Complainant’s trademark with the addition of the word “tractor” to create . Therefore, the Complainant’s trademark and the disputed domain name are not identical for the purposes of the Policy.
Nevertheless, the disputed domain name and the Complainant’s trademark are “confusingly similar”. In Gateway, Inc. v. Bellgr, Inc.,WIPO Case No. D2000-0129, the panel articulated the test for “confusing similarity” as including “similarity of a nature that would be likely to cause those familiar with the trademark to assume that there is a connection of some sort between the trademark owner and the domain name”. “Confusing similarity” will often result where the domain name reproduces a principal component of the complainant’s trademark (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Revlon Consumer Products Corporation v. Laurent D. Morel,WIPO Case No. D2002-0215). The disputed domain name incorporates the Complainant’s trademark in its entirety. Simply adding the descriptive word, “tractor”, to the trademark does not distinguish the disputed domain name from the trademark. This is sufficient to produce a strong likelihood of confusion. Those who are familiar with the Complainant’s trademark might assume that there is an affiliation between the Respondent and the Complainant (see Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493).
The Panel finds that the disputed domain name is confusingly similar to the SWARAJ trademark. The first criterion has been met. B. Rights or Legitimate Interests
Without more, the registration of a domain name does not give rise to rights or legitimate interests in a domain name (see Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902). Paragraph 4(c)(i) of the Policy indicates that rights or legitimate interests may be found where there is a bona fide offering of goods or services, while paragraph 4(c)(iii) of the Policy states that a respondent will have rights or legitimate interests if it uses the trademark noncommercially or fairly without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267, the respondent parked the domain name until it could be sold. Advertisements were generated by a parking company. The panel concluded that the use of the domain name was not a bona fide offering of goods and services under paragraph 4(c)(i), or a noncommercial and fair use under paragraph 4(c)(iii) of the Policy. The present case is similar in that the disputed domain name resolves to a parking page containing advertisements and links to other websites, some of which are not of the Complainant’s or are competitors to the Complainant. This supports the Complainant’s allegation that the Respondent is not using the disputed domain name for the bona fide offering of goods or services. The Complainant also alleges that the Respondent is not authorized to use or register the disputed domain name. If the Respondent fails to submit a response, the Panel can accept the Complainant’s reasonable allegations as true (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; paragraph 14(b) of the Rules). The Respondent has not challenged the Complainant’s assertions. As a result, the Complainant has shown an unrebutted prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. In this respect, the Panel finds the second criterion is met. C. Registered and Used in Bad Faith
There are two elements to paragraph 4(a)(iii) of the Policy. First, the registration of the disputed domain name must have been undertaken in bad faith and, second, the Respondent must have continued to use the disputed domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy delineates situations where the registration and use of a domain name will involve bad faith. It has been recognized that these are not the only circumstances that will amount to bad faith (Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island,WIPO Case No. D2004-0711). Nevertheless, for the present purposes, paragraphs 4(b)(i) and (iv) of the Policy are relevant.
Paragraph 4(b)(i) states:
[…] you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name
Paragraph 4(b)(iv) states:
[…] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The first consideration is whether the Respondent registered the disputed domain name in bad faith. The Complainant alleges that the fact that the disputed domain name is listed for sale is clear proof that the Respondent registered it in bad faith. Although, an offer to sell will not “automatically mandate a finding of bad faith” (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr,WIPO Case No. D2000-1525), the fact that the Respondent does not have any rights or legitimate interests in the disputed domain name supports the view that it may have been registered in bad faith.
Moreover, where a disputed domain name incorporates a well-known trademark, and the Respondent was reasonably aware of the trademark, that may amount to bad faith (Marie Claire Album v. Marie-Claire Apparel, inc., WIPO Case No. D2003-0767; adidas-Salomon AG v. Domain Locations,WIPO Case No. D2003-0489). The Complainant is one of the largest tractor manufacturers in the world. The Panel notes that the disputed domain name is being used to advertise the same product, that is, tractors. Therefore, the Respondent must reasonably have been aware of the Complainant’s trademark and business activities prior to registration. The Panel is satisfied that the Respondent registered the disputed domain name in bad faith.
The second consideration is whether the Respondent has continued to use the disputed domain name in bad faith. The Respondent does not have a connection with the Complainant’s products or services and the Complainant states that it did not grant a license to the Respondent to use SWARAJ. Since the website associated with the disputed domain name operates to provide links to other websites which offer similar or identical goods, the Respondent’s conduct has the potential to attract Internet users to another “on-line location” by creating a likelihood of confusion between the Complainant’s trademark and the disputed domain name for the purposes of paragraph 4(b)(iv) of the Policy. In such circumstances, “opportunistic bad faith” arises (see Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Ebay Inc. v. Wangming,WIPO Case No. D2006-1107).
Finally, in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, the panel noted that if the respondent fails to provide a justification for its use of the trademark, the panel “may reasonably infer that the Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark”. The Respondent has not offered an explanation as to why the disputed domain name was chosen. Also there is no apparent legitimate reason for the use of the disputed domain name. As a result, the inference may be drawn that the Respondent has used the disputed domain name for the purpose of capitalizing on the reputation of the Complainant. 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.
David A. R. Williams QC
Sole Panelist
Date: April 18, 2016
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