WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mahindra & Mahindra Limited v. Advansoft World Wide
Case No. D2000–0247
1. The Parties
The Complainant is Mahindra & Mahindra Limited of Gateway Building, Apollo Bunder, Mumbai 40001, Maharashtra, India, represented by Mr. Shyam Sunder Iyer of Tas & Co. of 7/85, Bhaveshwar Dham, Rafi Ahmed Kidwai Road, Wadala, Mumbai 400031, India. The Respondent is Advansoft World Wide, represented by Ajay Kumar, whose address appears to be 64-8-14 Raghavanagar, Patamala Lanka, Vijaywada, India.
2. The Domain Name and Registrar
The domain names in issue are "mahindra.org" and "mahindra.net", the Registrar of both of which is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received on April 1, 2000, an e-mail and on April 5, 2000, a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 11, 2000.
On April 7, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On April 10, 2000, Network Solutions transmitted via e-mail to the Center Network Solutions’ Verification Response, confirming that the registrant is Advansoft World Wide of Arlington Heights, IL 60005, USA, and that the Administrative, Technical and Zone Contacts are:
kumar:sunkara, ajay kumar (AKS57) aiai
4. Factual Background
(a) The Trade Marks
The Complaint is based on the Trade Mark MAHINDRA, and specifically exhibits certified copies of the following registration certificates, all in the name of the Complainant:-
India Trade Mark No. 322911 – registered 10/02/1977
India Trade Mark No. 338997 – registered 27/07/1978
US Trade Mark No. 1,679,947 – registered 17/03/1992
US Trade Mark No. 2,255,311 – registered 22/06/1999
Community Trade Mark No. 492066 – registered 31/08/1999
While the specific goods and classes covered by the registrations differ somewhat, they cover motor vehicles and in particular tractors.
(b) The Domain Names
The domain names appear to have been registered originally in the name of Neoplanet Solutions of 557, West Golf Road, Arlington Heights, IL 60005, USA in November 1999 and subsequently transferred to Advansoft World Wide of the same address in March 2000.
5. The Complaint
The grounds set out in the Complaint can be summarized as follows:
(1) The Complainant is a well-known manufacturer and exporter of tractors and utility vehicles. Its Annual Report for the year 1998/9 reveals that in the latest year it sold 70,548 utility vehicles and 69,362 tractors. These sales are said to represent market shares of 57.5% and 27.2% respectively (presumably of the Indian market).
(2) Apart from the Complainant itself, 35 Group Companies include "Mahindra" in their names.
(3) By reason of the extensive use of the Trade Marks and the name Mahindra in the various Group Companies, the word MAHINDRA, at least in relation to motor vehicles, is associated exclusively with the Complainant.
(4) The Complainant became aware of the existence of the two domain name registrations in issue at a date prior to December 13, 1999, on which date its attorneys wrote letters of complaint to Neoplanet Solutions at the address in Vijaywada which is the same as that of Ajay Kumar. No response was received, except that Neoplanet Solutions’ address was changed to 557, West Golf Road, Arlington Heights, IL 60005, USA. The Complainant believes this address was changed to avoid service of proceedings in India.
(5) Prior to the attorneys’ letters of December 13, 1999, they had asked their associates in Vijaywada to approach Network Solutions informally to enquire about its registrations of the domain names. The associates were (it is said) informed that Network Solutions was willing to transfer the two domain names for the sum of Rs. 20,000 (about US $2,000), but Network Solutions "did not reproduce the demand in writing".
(6) The Complainant’s attorney was aware of the existence of NeoPlanet Inc, an internet company based in Phoenix, Arizona, and on December 22, 1999, sent an e-mail to Mark Brooks of NeoPlanet Solutions Inc. Mark Brooks sent the following e-mail:
Subject: RE: NeoPlanet Inc.
From: "Mark Brooks"
Date: Thu.23 Dec 1999 08:26:48-0700
Attached is just one of many letters sent trying to solicit funds for a domain the individual in question had registered. Understand that when he first contacted NeoPlanet Inc. back in April of 1999 he was asking $110 for the domain. As communications continued the price kept escalating until he finally asked $2,000 and judging by previous behavior, was probably going to keep raising the price without transferring the rights to NeoPlanet Inc.
Please keep me informed of any progress you have regarding stopping this individual from cyber-squatting.
The attachment to the above e-mail was as follows:
"From: ajay sunkara [email@example.com]
Sent: Monday, October 04, 1999 3.48AM
iam willing to transfer the rights of the domain
www.NEOPLANETonline.comfor $2000/-. If you are interested in it … please check out the aggrement copy attached if you agree the aggrement,i shall sign it and post it to you then we can proceed as per rules in aggrement.
Please reply soon …
(7) It appears that in about March 2000 the name of the registrant was changed to Advansoft World Wide, at the same address in Arlington Heights.
6. The Response
The Response and the Supplement to it (both dated April 17, 2000) are e-mails from Ajay Kumar and make the following points:-
(1) There is a considerable difference between the domain name MAHINDRA and the Complainant’s trade mark "MAHINDRA & MAHINDRA".
(2) The word "MAHINDRA" is a famous word. It is the name of a very famous Hindu god (god of heaven) and that of many thousands of people all over the world.
(3) "I have not misused the domain names mahindra.net or mahindra.org. If i registered it for misusing, i would have posted a for-sale banner or some thing like that . but i did not do it …"
(4) The Respondent says he has "many ideas behind registering the domain name". One is to place a free email site such as " YourName@mahindra.com" or "YourName@mahindra.net" & "YourName@mahindra.org”.
(5) The Respondent admits to "belonging" to Neoplanet Solutions Private Limited.
(6) He denies requesting Rs 20,0000 for the transfer of the domain. He states "i have not approached any one regarding this domain."
(7) He denies being a cybersquatter.
(8) He states that "my company Neoplanet Solutions Private Limited is noway connected with Neoplanet Inc."
(1) The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(iii) the domain name has been registered and is being used in bad faith.
(2) The Respondent in its Response seems to have misunderstood element (i) above. The Complainant’s registered trade marks are for the word "MAHINDRA" by itself. The Respondent’s domain name "mahindra.org" and "mahindra.net" are identical to the trade mark "MAHINDRA".
(3) The Complainant submits that the Respondent has no rights or legitimate reason for adopting the word "mahindra" as a domain name. The Response does not indicate any serious interest in using either domain name other than possibly as a free e-mail site. Given the undoubted reputation of the Complainant and its trademark in India, the Panelist does not accept that possible use a free e-mail site constitutes a right or legitimate interest in the domain name. Element (ii) is established.
(4) The evidence of Mark Brooks of NeoPlanet Solutions referred to in paragraph 5(6) above in relation to Mr. Ajay Kumar’s negotiations over the domain name NEOPLANETonline.com provides powerful corroboration of the hearsay evidence that Mr. Kumar’s company, Neoplanet Solutions, offered to transfer the domain name in issue here for the sum of Rs. 20,000 (see paragraph 5(5) above).
(5) The change of address of Neoplanet Solutions from one in India to one in the USA is also noted. Avoiding the jurisdiction of the Indian Courts seems a probable motive for this action.
(6) In the light of the matters referred to in (4) and (5) of this paragraph, the Panelist concludes that the domain names "mahindra.org" and "mahindra.net" were registered and are being used in bad faith.
In the light of the findings in paragraphs 7(2), 7(3) and 7(6) above, the Panelist concludes that:-
(1) the domain names "mahindra.org" and "mahindra.net" are identical to the trademark "MAHINDRA" of the Complainant;
(2) the Respondent has no right or legitimate interest in the domain names;
(3) the domain names have been registered and are being used in bad faith;
Accordingly, the Panelist orders that the domain names "mahindra.org" and "mahindra.net" be transferred to Mahindra & Mahindra Limited.
Dated: May 18, 2000