Mahindra & Mahindra Limited v. Christian Winfield
Claim Number: FA1008001341835
PARTIES
Complainant is Mahindra & Mahindra Limited (“Complainant”), represented by Jay A. Bondell, of Ladas & Parry LLC, New York, USA. Respondent is Christian Winfield (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mahindraplanet.com>, registered with 1 & 1 Internet AG.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2010.
On August 20, 2010, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <mahindraplanet.com> domain name is registered with 1 & 1 Internet AG and that the Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 August 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@mahindraplanet.com by e-mail. Also on August 20, 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 on September 9, 2010 and, despite a minor deficiency, the Panel has elected to consider it along with all other information submitted by both parties.
Complainant’s Additional Submission was received on September 14, 2010 in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on September 20, 2010 in compliance with Supplemental Rule 7.
On September 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <mahindraplanet.com> domain name is confusingly similar to Complainant’s MAHINDRA mark.
2. Respondent does not have any rights or legitimate interests in the <mahindraplanet.com> domain name.
3. Respondent registered and used the <mahindraplanet.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent’s <mahindraplanet.com> domain name is not confusingly similar to Complainant’s MAHINDRA mark because it adds the descriptive word “planet”.
2. Respondent has a legitimate interest in the <mahindraplanet.com> domain name because he has spent considerable time posting information about Complainant to his blog and he allows third party advertising at that domain name.
3. Respondent did not register and use the <mahindraplanet.com> domain name in bad faith because he added the word “planet” to Complainant’s known trademark.
C. Complainant asserts the following in its Additional Submission:
1. Respondent’s addition of the word “planet” to its MAHINDRA mark does not eliminate the confusing similarity of Respondent’s <mahindraplanet.com> domain name.
2. Respondent did not provide any evidence that he is known as MAHINDRAPLANET, and the website notice that <mahindraplanet.com> is not affiliated with Complainant is remote, at the end of the website.
3. Respondent does not deny knowledge of Complainant’s trademark, and has engaged in a pattern of registering domain names with confusing similarity to Complainant’s MAHINDRA mark.
D. Respondent asserts the following in his Additional Submission:
1. The word “planet” is not trademarked by Complainant, and has nothing to do with Complainant’s business.
2. Respondent has been using the <mahindraplanet.com> domain name for almost 2 years and he has built traffic to the resolving website.
3. The disclaimer regarding the lack of affiliation with Complainant is valid regardless of its placement on Respondent’s website, and Respondent admits that he “naively” registered Complainant’s marks in other domain names.
FINDINGS
Complainant Mahindra & Mahindra Limited is the owner of the mark MAHINDRA, used in connection with vehicle sales and related services, and registered in 80 countries throughout the world. Complainant has used the mark since at least 1948. Complainant provided evidence of various U.S. trademark registrations for MAHINDRA by itself and in combination with other words, including one with a filing date of June 8, 2000. Complainant also owns and uses <mahindra.com>.
Respondent registered the <mahindraplanet.com> domain name on September 4, 2008, and uses it to conduct a blog about Complainant and its products, and to display third-party links in competition with Complainant.
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 has submitted evidence to show that it owns several trademark registrations with governmental trademark authorities including with the United States Patent and Trademark Office ("USPTO") for its MAHINDRA mark. The Panel finds that such evidence estalishes Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <mahindraplanet.com> domain name is confusingly similar to Complainant’s MAHINDRA mark, as it contains Complainant’s entire mark along with the generic term “planet” and the generic top-level domain (“gTLD”) “.com.” Such additions do not create a domain name distinct from Complainant’s mark. By Respondent’s own admissions, the <mahindraplanet.com> domain name is comprised of Complainant’s mark and a non-descript term. The Panel does not accept Respondent’s argument that the word “planet” is descriptive of its “news” blog, but cannot be descriptive of Complainant’s global business operations. The Panel finds that the word “planet” indicates neither and is simply a generic word appended to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
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.”).
Complainant contends that Respondent does not have rights and legitimate interests in the domain name because Respondent has not been authorized by Complainant to use its mark and Respondent is not commonly known by the disputed domain name. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and no other evidence was submitted by Respondent to demonstrate that he is known by <mahindraplanet.com>. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that while the website that resolves from the <mahindraplanet.com> domain name purports to be a blog about Complainant’s business, the website contains links to various third-party companies in competition with Complainant. Complainant asserts that Respondent receives click-through fees in association with the links and advertisements found on Respondent’s website, and that such use cannot establish rights or legitimate interests in the domain name. Respondent confirms that he uses the website for advertising links, but imagines that his posts about Complainant legitimizes the commercial nature of his website. The Panel finds that it does not and that Respondent’s use of the disputed domain name is not 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent has been previously ordered by a UDRP panel to transfer trademark infringing domain names to Complainant. See Mahindra & Mahindra Ltd. v. Winfield, FA 1325914 (Nat. Arb. Forum July 30, 2010). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use in reference to Complainant’s registered marks under Policy ¶ 4(b)(i).
Respondent is using the disputed domain name to divert Internet users who are seeking Complainant’s products to Respondent’s website where third-party competing automotive groups are advertised. The Panel finds that such diversion of Internet users to competing companies is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s website confuses Internet users as to the affiliation of the website and allows Respondent to commercially benefit from using Complainant’s mark by receiving click-through fees from Complainant’s competitors. The Panel finds that this use of the disputed domain name is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the MAHINDRA mark. In fact, Respondent does not deny knowledge of Complainant’s long-standing mark and his website content clearly demonstrates his knowledge of Complainant and its marks. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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).
Complainant argues in its Additional Submission that Respondent’s claimed disclaimer is in a remote location and does not avoid initial interest confusion. The Panel agrees and finds that such a disclaimer is insufficient to mitigate a finding of bad faith and use under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “).
In summary, the Complainant has the right to control the use of its trademark and none of Respondent’s efforts to dilute that succeed; the addition of a generic word, the buried disclaimer, and the website commentary do not give the Respondent the right to trade off the value of Complainant’s mark.
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
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 <mahindraplanet.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin,
Panelist
Dated: October 6, 2010
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