MakeMyTrip (India) Private Limited v. domain admin / GREAT ECHO LTD.
Claim Number: FA1402001543309
Complainant is MakeMyTrip (India) Private Limited (“Complainant”), India. Respondent is domain admin / GREAT ECHO LTD. (“Respondent”), Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makemytrip.us>, registered with Moniker Online Services LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2014; the National Arbitration Forum received a hard copy February 24, 2014.
On February 12, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <makemytrip.us> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 March 3, 2014, the Forum served the Complaint and all Annexes, including a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of March 24, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (“Policy”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 <makemytrip.us> domain name, the domain name at issue, is confusingly similar to Complainant’s MAKE MY TRIP mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used the MAKEMYTRIP mark in connection with travel and accommodation booking services with the philosophy of empowering Indian travelers with instant booking and comprehensive travel choices. Complainant holds numerous domain names that encompass the MAKEMY TRIP mark along with other generic or descriptive terms and has registered the trademark with both the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 2,812,872 registered February 10, 2004) and with the Indian Trademark Registry (“ITR”) (e.g., Reg. No. 1,447,892 registered April 25, 2006).
Respondent’s <makemytrip.us> domain name merely adds the ccTLD “.us” to Complainant’s trademark, and as such is identical to the mark. Respondent has not been known by the <makemytrip.us> domain name, and Complainant has taken no actions that would bestow upon Respondent the right to use the MAKEMYTRIP mark in an Internet domain name. Respondent uses the <makemytrip.us> domain name to divert Internet users and potentially tarnish Complainant’s reputation. The resolving website replicated the “look and feel” of Complainant’s websites and seeks to imitate the services Complainant provides under the MAKEMYTRIP mark. Respondent has registered the domain name in order to sell the domain name in excess of out-of-pocket expenses. Respondent is profiting from a likelihood of Internet users’ confusion and has taken steps to make the <makemytrip.us> domain name’s website have a similar appearance to Complainant’s own websites. However, the Internet user who visits the <makemytrip.us> domain name will unwittingly be doing business with an independent competitor of Complainant. The <makemytrip.us> domain name was registered on September 16, 2011.
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 or 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.”).
Complainant has used the MAKEMYTRIP mark in connection with travel and accommodation booking services for years. Its business is built on the philosophy of empowering Indian travelers with instant booking and comprehensive travel choices. Complainant has registered the trademark with both the USPTO (e.g. Reg. No. 2,812,872 registered February 10, 2004) and with the ITR (e.g., Reg. No. 1,447,892 registered April 25, 2006. This evidence of both trademark registrations satisfies Complainant’s Policy ¶ 4(a)(i) showing of rights. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <makemytrip.us> domain name merely adds the ccTLD “.us” to Complainant’s trademark, and as such is identical to the mark. The Panel finds that the <makemytrip.us> domain name is identical to the MAKEMYTRIP mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
In the absence of any response from Respondent, the Panel finds that Respondent does not have rights in a trademark identical to the <makemytrip.us> domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the 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)).
Respondent has not been known by the <makemytrip.us> domain name. Complainant has taken no actions that would bestow upon Respondent the right to use the MAKEMYTRIP mark in an Internet domain name. The WHOIS information lists “domain admin / GREAT ECHO LTD.” as the registrant of record for this disputed domain name. There is nothing to suggest Respondent has been commonly known by this domain name under Policy ¶ 4(c)(iii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Respondent uses the <makemytrip.us> domain name to divert Internet users and potentially tarnish Complainant’s reputation. The resolving website replicated the “look and feel” of Complainant’s websites and seeks to imitate the services Complainant provides under the MAKEMYTRIP mark. The Panel agrees with Complainant that Respondent is using the disputed domain name to pass itself off as Complainant and finds that Respondent has failed to make a Policy ¶ 4(c)(ii) bona fide offering of goods or services, or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has registered to sell the domain name in excess of out-of-pocket expenses and Respondent is engaging in a pattern of bad faith conduct as well. Respondent is disrupting Complainant’s legitimate business. It appears that Respondent is attempting to use Complainant’s own intellectual property to compete with Complainant and that Respondent engaged in Policy ¶ 4(b)(iii) bad faith. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under UDRP Policy 4(b)(iii).”).
Respondent is profiting from a likelihood of Internet users’ confusion and has taken steps to make the <makemytrip.us> domain name’s website have a similar appearance to Complainant’s own websites. However, the Internet user who visits the <makemytrip.us> domain name will unwittingly be doing business with an independent competitor of Complainant. Accordingly, the Panel finds Policy ¶ 4(b)(iv) bad faith through Respondent’s plan to profit through the confusion of Internet users via an imitation of Complainant’s brand. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the [UDRP] Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <makemytrip.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 2, 2014
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