Mahindra & Mahindra Limited v. Domain Admin
Claim Number: FA1205001442601
Complainant is Mahindra & Mahindra Limited (“Complainant”), represented by Anand Nair of Khaitan & Co., Advocates, Solicitors, Notaries, Patent & Trademark Attorneys, India. Respondent is Domain Admin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mahindra.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2012; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2012.
On May 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mahindra.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 16, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mahindra.us> domain name is confusingly similar to Complainant’s MAHINDRA mark.
2. Respondent does not have any rights or legitimate interests in the < mahindra.us> domain name.
3. Respondent registered or used the <mahindra.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,255,311 registered June 22, 1999) and with the Office of the Controller-General of Patents, Designs and Trademarks in India (“CGPDTM”) (e.g., Reg. No. 322911B registered February 10, 1977) for its MAHINDRA mark. See Annex I.
2. Complainant uses its MAHINDRA mark in its business as a multi-utility vehicle manufacturer and farm equipment manufacturer in India and is the second largest tractor manufacturer in the world.
3. Complainant’s company began operating in 1948 and uses its corporate name “Mahindra and Mahindra Ltd,” (popularly known as “Mahindra” by members of the trade) in its manufacturing and equipment sales business.
4. MAHINDRA is a well-known mark, and Complainant spends a substantial sum of money on brand promotion.
5. Complainant has registered numerous domain names using its MAHINDRA mark.
6. Respondent registered the <mahindra.us> domain name on September 8, 2010. Respondent is not an authorized dealer of Complainant’s goods or services, and Respondent registered the disputed domain name without authorization from Complainant.
7. The <mahindra.us> domain name is identical or confusingly similar to the MAHINDRA mark. The disputed domain name resolves to a website that displays an “error” message, which demonstrates that the domain name is not being used for a bona fide purpose.
8. Respondent has no rights or legitimate interests in the disputed domain name.
9. Respondent registered and uses the disputed domain name with the intention of misleading Internet traffic and to dilute the reputation and value of the mark.
10. Respondent has made no active use of the domain name since the time of its registration.
11. Respondent was well aware of Complainant’s rights in the MAHINDRA mark at the time it registered the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims to own trademark rights in its MAHINDRA mark through its trademark registrations with the USPTO (Reg. No. 2,255,311 registered June 22, 1999) and the CGPDTM (e.g., Reg. No. 322911B registered February 10, 1977). The UDRP panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), found that, by registering a mark with several trademark authorities internationally, including the USPTO, a complainant establishes rights in its mark. The UDRP panel in Vanguard Trademark Holdings USA LLC v. Mumbai Domains, FA 1338232 (Nat. Arb. Forum Sept. 15, 2010), held that the complainant’s registrations of its mark with the USPTO and the CGPDTM established rights in its mark under UDRP ¶ 4(a)(i). The Panel finds that Complainant’s trademark registrations of its MAHINDRA mark with both the USPTO and the CGPDTM satisfies Policy ¶ 4(a)(i) by demonstrating rights in the mark.
Complainant argues that the <mahindra.us> domain name is identical or confusingly similar to its MAHINDRA mark. Complainant claims that the disputed domain name fully incorporates the MAHINDRA mark in which Complainant has rights. The Panel observes that the disputed domain name includes the country-code top-level domain (“ccTLD”) “.us.” In Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005), the UDRP panel stated that adding “.us” to a mark does not differentiate a domain name from a mark and found the domain name to be identical. The Panel determines that the disputed domain name is identical to the MAHINDRA mark because the mark is used in its entirety, with the only addition being the ccTLD “.us.”
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Respondent did not submit any evidence to demonstrate that it owns any service marks or trademarks that reflect the <mahindra.us> domain name. The Panel concludes that, pursuant to Policy ¶ 4(c)(i), Respondent does not have rights or legitimate interests in the disputed domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent did not have Complainant’s consent to register a domain name using the MAHINDRA mark, is not a business partner or distributor, and has no rights or legitimate interests in the disputed domain name. Complainant claims that there is “no iota of evidence and/or impression that the Respondent is/was ever known by” the MAHINDRA mark and submits evidence that the WHOIS information for the <mahindra.us> domain name identifies “Domain Admin” as the registrant. See Annex 6. The Panel determines the WHOIS information does not provide support for a finding that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to [UDRP] ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant asserts that the <mahindra.us> domain name is not put to use in a bona fide manner and submits evidence that the domain name resolves to a website that displays an “error” message, which Complainant claims has existed since the domain name’s creation on September 8, 2010. See Annex 7. Complainant claims that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because of the lack of constructive use of the resolving website. The Panel concludes that, based on the screen shot of the <mahindra.us> domain name, Respondent is not making a bona fide offering of goods or services of the domain name under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
Complainant argues pursuant to Policy ¶ 4(a)(ii) that Respondent has not made an active use of the <mahindra.us> domain name and submits evidence that the domain name resolves to a page with nothing but an error message displayed. The Panel determines that, by failing to make an active use of a domain name after more than one and a half years of holding the domain name registration, Respondent registered and uses the <mahindra.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Complainant claims that Respondent was aware of Complainant’s rights in the MAHINDRA mark because Complainant is internationally recognized. Further, Complainant alleges that its business operations and trademark registrations are sufficient to make Respondent aware of Complainant’s rights in the mark, but Complainant argues that Respondent nonetheless “dishonestly and slavishly” registered the <mahindra.us> domain name and blocked the domain name from Complainant’s access. Previous UDRP panels have stated that a respondent’s constructive knowledge of a mark does not appropriately satisfy a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel finds that Respondent’s registration of a domain name identical to Complainant’s MAHINDRA mark is evidence of Respondent’s actual knowledge of Complainant’s rights in the mark and consequently finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mahindra.us> domain name be TRANSFERRED.
John J. Upchurch, Panelist
Dated: June 20, 2012
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