WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani

Case No. D 2000-1816

 

1. The Parties

The Complainant is MAHA Maschinenbau Haldenwang GmbH & Co. KG, a corporation organized under the laws of Germany, having its principal place of business in Hoyen 20, 87490 Haldenwang, Germany (Complainant).

The Respondent is Deepak Rajani, an architect and the owner of Dear!Net Online e.K., a legal entity, practising under the laws of Germany with its principal place of business in Torgasse 141, 10119 Berlin, Germany (Respondent).

 

2. The Domain Name and Registrar

The domain name at issue is <maha.com>. The registrar is EPAG Enter-Price Multimedia AG, Talstraße 22-24, 40217 Düsseldorf, Germany.

 

3. Procedural History

The Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and under the rules for the UDRP implemented by ICANN ("UDRP Rules") on December 27, 2000 by email and on December 29, 2000 in hardcopy.

The Center acknowledged receipt of the Complaint by e-mail and post, both sent on December 29, 2000. On January 3, 2001, a Request for Registrar Verification was transmitted to the Registrar, EPAG, requesting it to: (1) confirm that the domain name at on issue is registered with it; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

In an e-mail to the Center dated January 4, 2001, EPAG confirmed that it is in receipt of the Complaint and that EPAG is the Registrar for the domain name. EPAG further confirmed that the contact data as given by the Complainant are correct, that the Uniform Domain Name Dispute Resolution Policy applies to the domain name and that the domain is connected.

On January 8, 2000, the Center sent a Complaint Deficiency Notification to Complainantís authorized representative. In the notification the Center requested Complainantís representative to submit the Complaint in accordance with Paragraphs 2 and 3 of the ICANN Rules for Uniform Domain Dispute Resolution Policy. The Center informed the Complainant that the complaint was not submitted in one original and four copies, as required by the Rules, Paragraph 3 (b) and the Supplemental Rules, Paragraph 3 (c) and that the complaint did not identify the registrar with which the domain name was registered at the time the complaint was filed as required by the Rules, Paragraph 3 (b)(vii).

Complainant transmitted the Complaint in the required form, with confirmation concerning the actual registrar was received in hardcopy on January 11, 2001 and by e-mail on January 18, 2001.

Having verified that the Complaint satisfied the formal requirements of the UDRP and the UDRP Rules on January 19, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by post, facsimile and e-mail; to Complainantís authorized representative by e-mail; and to ICANN and EPAG on the same day. The Center advised the Respondent that the Response was due by February 7, 2001.

On February 7, 2001, the Center received a Response to the Complaint by the Respondent which was sent by email. The Center received the Response in hardcopy on February 15, 2001. The Center acknowledged receipt of the Response on February 8, 2001.

In view of Complainantís designation of a single panelist, the Center invited Mrs. Andrea Jaeger-Lenz to serve as panelist and transmitted to her the Request for Declaration of Impartiality and Independence and a statement of acceptance. Having received Mrs. Jaeger-Lenzís Declaration of Impartiality and Independence and Statement of Acceptance, on February 22, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date by which Mrs. Jaeger-Lenz was formally appointed as sole panelist, and set a decision date, with the Panelistís deadline for issuing a decision as of March 7, 2001.

 

4. Factual Background

4.1 Complainantís activities and trademarks world-wide

The Complainant is active in the field of vehicle testing and is owner of the following trademarks:

(1) German Trademark registration No. 1076831 MAHA, application date:

July 18, 1984, registered with the German Patent and Trademark Office for goods in class 9 (test stands for automobiles consisting of testing apparatus, parts of the said goods);

(2) German Trademark registration No. 39941622 MAHA, application date: July 15, 1999, registered with the German Patent and Trademark Office for goods and services in classes 7, 8, 9, 35, 41, 42 (namely: lifts for vehicles, machines and machine tools for vehicles Ė class 7 Ė, hand tools and implements for vehicles Ė class 8 Ė, measurements-, test-, diagnosis- and service equipment for vehicles, vehicle brakes, vehicle lighting, systems, vehicle tires, vehicle suspensions, vehicle shock absorbers, vehicle headlights; software Ė class 9 Ė, management consulting for planning, managing, financing and operations of car work shops Ė class 35 Ė, planning organization and conducting of seminars and training sessions Ė class 41 Ė, computer programming, consulting for dealers and car work shops in technical questions Ė class 42 Ė);

(3) International Trademark registration No. IR 615 164 MAHA, application date: January 31, 1993; for the following countries: AT, BX, CH, ES, FR, HR, HU, IT, LV, PL, PT, RU for goods in class 9 (testing facilities for motor vehicles consisting of control apparatus and parts of said goods);

(4) International Trademark registration No. IR 728 848 MAHA, application date: January 11, 2000; for the following countries: AT, BX, BY, CH, CN, CU, CZ, ES, FR, HU, IT, KP, PL, PT, RU for goods and services in classes 7, 8, 9, 35, 41, 42 (goods and services mentioned under (2) above),

(5) Trademark registration No. CTM 591 735 MAHA, application date:

June 11, 1997, registered with the Office for Harmonization in the Internal Market for goods in class 9 (test stands for automobiles consisting of testing apparatus, parts of the said goods);

(6) Trademark registration No. CTM 162574 MAHA, application date: April 25, 2000, registered with the Office for Harmonization in the Internal Market for goods and services in classes 7, 9, 35, 42 (goods and services mentioned under (2) above);

(7) Brazilian Trademark registration No. 819743372 MAHA, application date: March 18, 1997, for goods in class 9 (test stands for automobiles consisting of testing apparatus, parts of the said goods);

(8) Indonesian Trademark registration No. 329115 MAHA, application date: December 4, 1993, for goods in class 9 (test stands for automobiles consisting of testing apparatus, parts of the said goods);

(9) South Korean Trademark application 2000-4000 MAHA, application date: August 14, 2000, for goods and services in classes 7, 8, 9, 35, 41, 42 (goods and services mentioned under (2) above).

All the above mentioned trademarks consist of the word MAHA in connection with figurative elements, the registered trademarks are word/device marks, incorporating also the words "Maschinenbau Haldenwang" as a dominant element.

The Complainant further presented a list of countries in which the company is active to show its world-wide business in addition with a number of company names the Complainant relies on. The Complainant is also owner of the domains name <maha.de> and <maha.ru>.

4.2 Respondentís identity and activities

The Respondent is the registrant of the domain name <maha.com>.

The Respondent gives a detailed outline of his current activities under <maha.com> and his business plans. His initial idea was to offer free services in the area of educational and spiritual activities, free email services, homepages and a directory of people and entities. Therefore, the first phase was to launch a directory providing commercial information about companies in Asia, followed by offering the directory in Hindi after having collected about 25,000 company listings.

There is as website in operation under the domain name <maha.com>. The actual content is offering free email services to the registered users with more than 6.000 links being available in the database <maha.com>. The Respondent has been developing a program to convert and display the database to directory services in Hindi.

 

5. Partiesí Contentions

5.1 Complainant

The Complainant contends that

(1) the domain name <maha.com> is confusingly similar to the trademark in which the Complainant has rights in accordance with Paragraph 4 (a) (i) of the UDRP;

(2) the Respondent has no rights or legitimate interest in respect of the domain name <maha.com> as provided in Paragraph 4 (a) (ii) in connection with Paragraph 4 (c) of the UDRP;

(3) the domain name <maha.com> was registered and used in bad faith as provided in Paragraph 4(a) (iii).

In particular, the Complainant alleges that the domain name <maha.com> had been reserved but not been in use until shortly after contacting the Respondent and asking him for transferring the domain name to the Complainant.

The Complainant further contends that Respondent has no legal or any reasonable economical interest as the domain name is not being used in a serious commercial manner.

Therefore, the Complainant is of the opinion that the Respondent intentionally prevents the Complainant from obtaining the domain name in issue and is misleading consumers by using the domain name.

5.2 Respondent

The Respondent alleges that the claim raised by the Complainant is of reverse domain name hijacking.

In particular, the Respondent contends that the Complainant does not own a word mark consisting of the term "MAHA" but only a figurative mark with other elements and that the term "MAHA" cannot be protected except in a combination with a design or a logo. He disputes Complainantís argument that he registered and used the domain name in bad faith and argues that Complainantís trademark "MAHA" is the generic word for "global, great, grand, divine, large, mighty, mega" being widely used in many Asian languages e.g. in Sanskrit and all languages based on Sanskrit. As Annex 01, the copy of a Sanskrit dictionary, shows, the word MAHA has the function of an adjective adding an enhancement to the noun, the Respondent contends. Therefore, the word "MAHA" is extensively used by third parties, as Respondent proves in Annexes 03 to 11.

The Respondent further claims that it was a mere coincidence that the Complainant holds a figurative trademark containing the word "MAHA" and he, the Respondent, who was completely unaware of Complainantís background chose the same word as a domain name; not even a small part of services overlaps between Respondentís and Complainantís business; the Respondent has not even offered any commercial services. The Respondent claims that he chose to register the domain name in question as it was a commonly known term for his mainly Asian customers and the meaning "great" was enhancing the image of a userís email address; due to the spiritual association with the word "MAHA" and its generic quality which made the web site easy to remember the usage of the domain name was evident regarding his aim to attract mainly Asian customers.

The Respondent contends that between 1998 and September 1999 he used the domain name in the same manner as it exists now; after having started offering free email services in 1999, he has now stopped to accept new users due to financial and technical problems.

In addition, the Respondent contends that the Complainant has no legitimate rights in the word "MAHA" and, furthermore, the domain name in issue is not identical to the word contents of the figurative trademarks of the Complainant.

The Respondent argues that the Complainant came into contact with him when writing a threatening letter in October 2000, demanding the Respondent to transfer the domain name in question; in a telephone call that followed the correspondence the Respondent clearly stated that he was not willing to sell the domain name.

 

6. Discussion and Findings

Pursuant to Paragraph 4 (a) of the UDRP, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the domain name holder 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.

This Panelist finds that the fulfillment of the first requirement is in question while the second and the third requirement are not met.

6.1 Confusing Similarity

It is not beyond doubt that the Complainant has even satisfied the first requirement.

The domain name registered by Respondent is not identical to the registered trademarks owned by Complainant. The domain name in question is <maha.com>. The relevant (name) part of this domain name is "MAHA". The Complainantís numerous trademark registrations concern word/device trademarks, they are not word marks consisting of the single word "MAHA" Ė a fact that the Complainant has withheld in his complaint and which only becomes evident in checking the Annexes. These trademarks consist of the word "MAHA" - looking in fact rather like a picture - surrounded by figurative elements. A figurative mark, however, is not identical to the domain name in question consisting of the generic term "MAHA". Dominant elements of the marks are the words "Maschinenbau Haldenwang". This is probably, how the public would see the trademarks.

A confusing similarity is not obvious either. A devise trademark is hard to compare with a single word, especially when the word in that device trademark consists of an abbreviation, referring to the kind of business and the geographic origin of the trademark holder. The Complainant therefore does not use MAHA as a word with a special meaning but as an abbreviation of the first syllables of "Maschinenbau Haldenwang". The Respondent, however, uses MAHA as one word with a generic background. The Panelist finds that a consumer will be able to distinguish the figurative mark from the domain name <maha.com>. Thus, the consumer is not either to be confused. In this regard, the Panelist tends to follow the Decision Copart, Inc. v. SalvageNow, Case No. D2000-0417, as cited by the Respondent where the Panelist held that the domain name <copart.net> was not identical to nor substantially similar to the mark registered and used by Complainant, "CI Copart Inc. Salvage Auto Auctions."

However, as the Panelist finds that the Complainant does not satisfy the second and the third requirement either, the question if a confusing similarity exists can be left open.

6.2 Respondentís rights or legitimate interest in the domain name

Paragraph 4 (a) (ii) of the UDRP asks whether the Respondent has any rights or legitimate interests in respect of the domain name. Under Paragraph 4 (c) of the UDRP, Respondent may demonstrate that he has a right or legitimate interest to a domain name for the purpose of Paragraph 4 (a) (ii) by providing evidence of any of the following circumstances:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights;

(3) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Respondent has shown that he has not only made demonstrable preparations to use the domain name in connection with a bona fide offering of services prior to the dispute but has also proven a fair use of the domain name. Thus, pursuant to Paragraph 4 (c) (i) and (iii) the Respondent has a legitimate interest to the domain name <maha.com> for the purpose of Paragraph 4 (a) (ii).

The particular circumstances of this case which lead to this conclusion are:

The Respondent points out that the Complainant has no trademark rights in the word "MAHA" in any country but only in a device mark. He asserts that he registered the domain name because it is the Sanskrit word for "great" with the intention of creating a special image for a customer using his email service. As the reasons, for using the domain name "MAHA" were in no means related with the Complainants business and trademarks, the Respondent never intended to divert consumers, and is not likely to, either.

The Respondent has provided evidence that he is using the domain name for free email and other services. It is clear from the record that the domain name is currently used for a web site that offers free email and links to other web sites. The response shows that Respondent is engaged in serious activities to use the domain name for the bona fide offering of services. Respondent has provided detailed business plans and launching phases. Thus, the Respondent has not registered the domain name for merely speculative reasons. It is not Complainantís business to judge if the Respondent uses the domain name in a serious commercial manner and if he has any reasonable economical interest, as the Rules do not talk about a serious business or a reasonable economical but about a "legitimate" interest.

Under these circumstances and on this record, it is concluded that Respondent has a legitimate interests in the domain name <maha.com> and that the requirement of the UDRP Paragraph 4 (a) (ii) is not satisfied.

6.3. Bad Faith

In addition to not satisfying the second requirement, the Complainant also did not enlighten the requisite "bad faith" of Paragraph 4 (a) (iii) UDRP. The reasonably plausible explanation given by the Respondent as to why the domain name was chosen proves that he did not act in bad faith. Pursuant to Paragraph 4 (b) the following circumstances provide evidence of the registration and use of a domain name in bad faith:

(1) circumstances indicating that the Respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration;

(2) registration in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, if the Respondent has engaged in a pattern of such conduct;

(3) registration for the purpose of disrupting the business of a competitor;

(4) attempts to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location or of a product or service on this web site or location.

The Complainant has proven none of these circumstances. In view of the activities expounded by the Respondent, the Administrative Panel follows the rulings set out in the decision LIBRO AG v. NA Global Link Limited, WIPO Case No. D 2000-0186 in finding that the UDRP is very narrow in scope and that it covers only rather clear cut cases of "cybersquatting" and "cyberpiracy". In this case the Panelist held that the explanation given by the Respondent why it selected the domain name, namely it was the Spanish and Italian word for "book", was acceptable.

The particular circumstances of this case which lead to this conclusion are:

The Respondentís explanation that he selected the domain name because it is the Sanskrit word for "great" appears prima facie acceptable. The Respondent seems to be familiar with Asian languages and offers his services not only but primarily to Asian customers. As the registration of a generic word facilitates the establishment of offering services in the Internet it is understandable that the Respondent chose the word "MAHA" as a domain name.

The Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of Complainantís trademarks or even that Respondent was aware of Complainantís existence when he registered the domain name. It is more likely that the Respondent living in Berlin and being an architect has never heard of Complainantís business.

The Panelist cannot even think of a reason why the Respondent should try to exploit Complainantís trademarks as the customers he is trying to attract are completely different to those who might search the Internet for Complainantís services and goods.

Under these circumstances it is absurd to hold that the Respondent has chosen the domain name with the intent to profit or otherwise abuse Complainantís trademark. Moreover, the threatening telephone call Complainant made to the Respondent seems to have been an attempt to achieve an offer for selling the domain so that Respondentís bad faith could be proven. Respondentís behavior when not offering the domain name for sale shows that Respondentís intent was not to sell and transfer the domain name to the Complainant.

Therefore, since it has not been demonstrated that the domain name <maha.com> was chosen by Respondent at the time of registration with the intent to profit or otherwise abuse Complainantís trademark rights, the Panelist concludes that Complainant has not met its burden of proof under Paragraphs 4 (a) (iii) of the UDRP.

6.4 Reverse Domain Name Hijacking

Eventually, the Panelist has to decide if Complainantís behavior constitutes "reverse domain name hijacking" as the Respondent alleges.

Under Paragraph 1 of the UDRP Rules "reverse domain name hijacking" means using the Policy in bad faith to attempt to deprive a registered domain-holder of a domain name. "Reverse domain name hijacking" usually involves big businesses threatening to sue legitimate domain name registrants who do not give up the right to the registration. Under Paragraph 15 (e) of the Rules the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding if the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder. Therefore, pursuant to Rule 15(e) to prevail on such a claim, the Respondent must show that the Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.

In Smart Design LLC v. Hughes, WIPO Case No. D2000-0993, reverse domain name hijacking was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interests. In Plan Express Inc. v. Plan Express, WIPO Case No.D2000-0565, the Panel held that to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of Respondentís right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge.

Under these standards, Complainantís actions in this case does not constitute bad faith.

Although there is some evidence that Complainant acted in bad faith, e.g. Complainant presented device trademarks without actually mentioning that it did not hold a trademark for the single word "MAHA", it cannot be insinuated that he knew about the generic meaning of the word "MAHA" and about Respondentís background.

Furthermore, the Complainant alleges that the web site <maha.com> was not active when the Complainant contacted the Respondent for the first time. Fact is, that the web site <maha.com> is still connected with the web site <dearnet.com> and that both show the same image. Therefore one could question the actual use and purpose of both web sites. The Complainant may also have been led by a wrong definition of "legitimate interest" as it argued, the Respondent was not involved in any serious business. Maybe this error concerning how big or how serious a business has to be to justify a legitimate interest made the Complainant pursue the Complaint. Thus, it is not completely "out of the way" that the Complainant presumed Respondentís lack of legitimate interest and his bad faith.

Although the Panelist suspects that the Complainant used the administrative proceeding because it knew it would not be able to succeed under its jurisdiction, there is no real evidence that shows that Complainantís only aim was to deprive the Respondent of his domain name. In Complainantís view there may have existed reasonable scope for suspicion, so that it would be unduly harsh to characterize this complaint as Reverse Domain Name Hijacking.

 

7. Decision

On the basis of the foregoing considerations the Panelist

1) rejects Complainantís request for transfer of the domain name <maha.com>, and

2) rejects Respondentís request for a finding of Reverse Domain Name Hijacking of the domain name at issue.

 


 

Dr. Andrea Jaeger-Lenz
Sole Panelist

Dated: March 2, 2001