Mahindra & Mahindra Limited v. Christian
Winfield
Claim Number: FA1005001325914
PARTIES
Complainant is Mahindra & Mahindra Limited (“Complainant”), represented by Jay A. Bondell, of Ladas & Parry LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mahindratr20.com>
and <mahindratr40.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
David P. Miranda, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 21, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <mahindratr20.com>
and <mahindratr40.com> domain
names are registered with GoDaddy.com, Inc. and that the Respondent is the
current registrant of the name.
GoDaddy.com, Inc. has verified that Respondent is bound by the
GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s Uniform
Domain Name Dispute Resolution Policy (the “Policy”).
On May 27, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of June 16,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@mahindratr20.com and
postmaster@mahindratr40.com. Also on May
27, 2010, the Written Notice of the Complaint, notifying Respondent of the
email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on June
15, 2010.
On June 21, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, as Panelist.
On July 1, 2010, the panel sought additional
submissions from the parties regarding the following:
1) the status of the pending USPTO applications for
MAHINDRA TR20 and MAHINDRA TR40
2) the legal and factual basis for transfer/or denial of
transfer in the absence of federal registrations for the above
3) whether a decision on this
arbitration should be held in abeyance pending the USPTO’s final action on the
applications.
The panel has received and considered Complainant’s and Respondent’s additional submissions
responsive to the above requests, and the other additional submissions of both
parties.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Mahindra & Mahindra Limited seeks the transfer of the
domain names <mahindratr20.com>
and <mahindratr40.com> (domain
names), from Respondent Domains
by Proxy, Inc. of
Complainant contends that Respondent is operating in bad faith because
it is diverting Internet users seeking Complainant,
is confusing Internet users, and is directing the domain names to competitors.
B. Respondent
Respondent does not dispute that the domains are identical to the
trademark of Complainant, but questions why Complainant has not completed the
formal requirements for registration of the 2 pending applications at the
USPTO. Respondent contends that it has rights and legitimate interests to
the domains because they relate to Respondent’s
interest in reporting and providing news specifically about Complainant’s Mahindra products. Respondent
contends that it did not register and is not using the domains in bad faith
because it has not advertised, promoted or attempted to divert Internet users
from any official Mahindra website, and the parking page displayed at <mahindratr40.com>
does not link to competitors because the Mahindra TR20 and Mahindra TR40
vehicles do not exist yet. Respondent claims the website does not
confuse Internet users. Respondent admits that prior to
registration of the domains it had knowledge of the application for the
trademark MAHINDRA TR20 and TR40 names. Respondent admits further that it
found the fact that the <mahindratr20.com> and <mahindratr40.com>
domains to have not been registered by Complainant to be “extremely
surprising”.
C. Additional Submissions
Complainant’s additional submission dated June 18, 2010 contends that Respondent concedes that the domains were registered with knowledge that they were identical to trademarks for vehicles Complainant’s planned to introduce into the United States. Complainant contends that Respondent has made no use of the <mahindratr40.com> and it is merely a parking page. Complainant further contends that Respondent is operating in bad faith because <mahindra40.com> is solely a parking page and neither website has clarifying information regarding ownership. Respondent’s additional submission contends that Complainant has not made any use of the MAHINDRA TR20 or MAHINDRA TR40 marks, and while Complainant merely contends that it is planning to use the applied for trademarks, Respondent is using the marks to provide information to the public. Respondent further contends that any confusion on the website can be easily rectified and is acting good faith because promotion of Mahindra vehicles by Complainant is non-existent.
In response to the Panel’s request,
Complainant contends that its MAHINDRA TR20 and
MAHINDRA TR40 trademark applications in the
Respondent contends that Complainant is delaying the release of
its TR20 and TR40 vehicles due to an unidentified lawsuit,
that the Complainant has
not, and does not currently use the names Mahindra TR20 and Mahindra TR40. Respondent further contends that decision on
this arbitration should proceed regardless of the
FINDINGS
The Panel finds
that Complainant has established
all elements of the policy, and thus the domain names <mahindratr20.com> and <mahindratr40.com> should be
transferred.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant owns registered trademarks for the MAHINDRA mark in the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,255,311 issued June 22, 1999) and with the trademark authorities of sixty-five other countries/regions worldwide, including the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. E492066 issued August 31, 1999) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 005334479 issued August 30, 2007). Complainant’s registration of its MAHINDRA mark with the USPTO, as well as with numerous other trademark authorities worldwide, sufficiently establishes Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <mahindratr20.com> and
<mahindratr40.com> domain names are confusingly similar to
Complainant’s MAHINDRA mark because both disputed domain names incorporate
Complainant’s MAHINDRA mark and add only the descriptive terms “tr20” and
“tr40,” which are the intended names of two of Complainant’s trucks. The disputed domain names each also append
the generic top-level domain (“gTLD”) “.com.”
Adding a descriptive term that refers to Complainant’s products does not
distinguish the disputed domain names or prevent confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat.
Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,”
which described the complainant’s products, and the generic top-level domain
“.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Kohler Co. v. Curley, FA
890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed
domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”). The gTLD suffix is irrelevant for the
purposes of Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
Respondent makes no substantive contentions with regards to Policy ¶ 4(a)(i), and does not dispute Respondent’s <mahindratr20.com> and <mahindratr40.com> domain names are confusingly similar to Complainant’s MAHINDRA mark.
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 has rights or legitimate interests
in the subject domain names.”).
Complainant contends that Respondent is not
commonly known by the <mahindratr20.com>
and <mahindratr40.com> domain
names. Complainant also contends
Respondent is not authorized to use the MAHINDRA mark. The WHOIS information for the disputed domain
names does not indicate any nominal association between the disputed domain
names and Respondent. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the
<mahindratr20.com> domain name
in connection with a website purporting to be an online magazine, however, the
online magazine consists of only one page providing information about
Complainant and its vehicles with no original content from Respondent. Complainant asserts that the website contains
no clarifying information as to the owner of the website and does not notify Internet
viewers that Complainant is not associated with the website. Complainant contends that Respondent is therefore
attempting to deceive Internet users and mislead them into believing the <mahindratr20.com> domain name is
associated with or sponsored by Complainant.
See
State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept.
27, 2000) (“The unauthorized providing of information and services under a mark
owned by a third party cannot be said to be the bona fide offering of
goods or services.”).
Complainant further contends that Respondent’s <mahindratr40.com> domain name resolves to a website providing only a listing of links to various third-party websites, some of them in competition with Complainant’s vehicle products. Using a disputed domain name appropriating Complainant’s mark in connection with a site displaying no content or services other than presumed pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that the use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent’s use of Complainant’s MAHINDRA mark to redirect Internet users to competitors’ sites disrupts Complainant’s business, representing bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent advertises links to competing automotive producers and other unrelated websites on the <mahindratr40.com> domain name’s resolving website because the links provide pay-per-click revenue for Respondent, and provides links to Complainant’s competitors in the vehicle industry, such as Jeep.
Complainant asserts
that Respondent is attempting to trade off Complainant’s mark and its
accompanying fame in order to confuse consumers because Respondent includes no
information on the resolving websites that clarifies the relationship between
Respondent and Complainant or disclaims any affiliation or sponsorship. By appropriating Complainant’s mark and
intentionally aiming to confuse consumers in order to attract increased traffic
to a website commercially benefiting Respondent, Respondent has demonstrated
bad faith registration and use according to Policy ¶ 4(b)(iv). See
Respondent admits
actual knowledge of Complainant’s rights in the MAHINDRA marks prior to the
registration of the disputed domain names.
Respondent’s actual knowledge of Complainant’s marks is sufficient to
support a finding that Respondent registered and used the <mahindratr20.com> and <mahindratr40.com> domain names in
bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793
(Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which
the respondent acquired the disputed domain names indicated that the respondent
was well aware that the domain names incorporated marks in which the
complainant had rights); see also see
also 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).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mahindratr20.com> and <mahindratr40.com>
domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Panelist
Dated: July 30, 2010
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