WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mahindra Reva Electric Vehicles Private Limited and Mahindra & Mahindra Limited v. Mike Shane
Case No. D2010-2182
1. The Parties
Complainants are Mahindra Reva Electric Vehicles Private Limited (“Mahindra Reva”) of Bangalore, Karnataka, India and Mahindra & Mahindra Limited (“Mahindra & Mahindra”) of Mumbai, Maharashtra, India, represented by Khaitan & Co., Mumbai, India.1
Respondent is Mike Shane of Budapest, Hungary.
2. The Domain Name and Registrar
The disputed domain name <mahindrareva.com> (the “Disputed Domain Name”) is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 15, 2010, the Center transmitted by e-mail to Name.com LLC a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2010, Name.com LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 10, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainants state that Mahindra Reva was “founded in 1994 as REVA Electric Car Company Private Limited” and “is a pioneer of Electric Vehicle technologies and one of the first companies to introduce electric vehicles worldwide.” Complainants further state that Mahindra Reva “has one of the largest deployed fleets of electric cars in the global market and available in 24 countries across Europe, Asia and Central and South America with more than 3,500 of its vehicles on the road.”
Complainants state that Mahindra & Mahindra was founded on January 13, 1948, and is “among the top ten industrial houses in India.” Complainants further state that Mahindra & Mahindra acquired a 56.33% stake in Mahindra Reva on May 26, 2010, accompanied by an announcement that “made big headlines in major newspapers, financial journals, auto blogs, etc.”
Complainants state that the Disputed Domain Name was registered on May 26, 2010 – the same date on which Complainants announced the acquisition described above. Complainants state that they sent a demand letter to the previous registrant of the Disputed Domain Name2 on September 1, 2010, regarding the Disputed Domain Name, to which they have received no response.
5. Parties’ Contentions
Complainants contend, in relevant part, as follows:
The Disputed Domain Name is identical or confusingly similar to a trademark in which Complainants have rights because Mahindra Reva “enjoys statutory and common law proprietary rights over the mark REVA” and Mahindra & Mahindra “enjoys statutory and common law proprietary rights over the marks Mahindra, Mahindra and Mahindra, M&M and all its variants.” In support thereof, Complainants have provided copies of trademark registration certificates for REVA in many jurisdictions, including India, the United States of America and the European Community (registered by Reva Electric Car Company Private Limited, which Complainant states is the “earlier name” of Mahindra Reva); and copies of trademark registration certificates for MAHINDRA in many jurisdictions, including India, the United States and the European Community (registered by Mahindra & Mahindra). Complainants state that the Disputed Domain Name “is clearly identical and/or deceptively similar to” each of the trademarks REVA and MAHINDRA.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no bona fide offering of goods or services under the disputed domain name by the Respondent” and “even in the trade name/name of the respondent, has no iota of resemblance or even mention about trade marks of Complainants’ through which they can claim any title over the disputed domain name.”
The Disputed Domain Name was registered and is being used in bad faith because, by registering the Disputed Domain Name on the same date on which Complainants announced an acquisition between them, “this by no stretch of imagination can be seen as a mere co-incidence” and the Disputed Domain Name “was deliberately and dishonestly registered to take advantage of the interest/attention associated to the above deal and attract internet traffic to the disputed domain name”; Respondent’s use of the Disputed Domain Name in connection with a website “deliberately and dishonestly” bearing the title “King Mahindra” and containing meaningless Latin text commonly used as a placeholder is “a mockery”; and “it is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”
The Respondent did not reply to the Complainant’s contentions. However, on December 23, 2010, the Center received an e-mail communication from the Respondent stating: “I got message from my domain registrar regarding UDRP dispute Mahindrareva.com. I just wanted to know about what all things i [sic] need to do in order to present my case?” On January 4, 2011, the Center responded to the Respondent stating, in part, “You may wish to consult the Response filing guidelines available at: “http://www.wipo.int/amc/en/domains/respondent/index.html.”
6. Discussion and Findings
Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainants, it appears that Mahindra Reva has trademark rights in the mark REVA and that Mahindra & Mahindra has trademark rights in the mark MAHINDRA, and Respondent does not dispute the validity of either of these trademarks.
As to whether the Disputed Domain Name is identical or confusingly similar to these trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mahindrareva”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
This dispute involves an unusual but not unprecedented issue, that is, whether a domain name that contains two trademarks owned by two different entities is confusingly similar to either trademark. One previous decision under the Policy observed that “UDRP panels have consistently found that the Respondent’s inclusion of [a] third party’s trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark.” F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751. And, in another decision, a panel wrote that “in light of Complainant’s use of its mark in connection with [a] third party mark for its own advertising purposes, the combination of the two marks would convey to Internet users familiar with Complainant’s advertising an expected association.” Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793.
The present case can be distinguished from these earlier decisions only in that both of the applicable trademarks are owned by each of Complainants, rather than one trademark being owned by a third party. If anything, this only enhances the confusing similarity, given the additional expected association held by Internet users between these two trademarks.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainants have argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no bona fide offering of goods or services under the disputed domain name by the Respondent” and “even in the trade name/name of the respondent, has no iota of resemblance or even mention about trade marks of Complainants’ through which they can claim any title over the disputed domain name.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainants have not stated with specificity which, if any, of these factors is present. Nor have Complainants cited any previous decisions under the Policy for their conclusions. Nevertheless, the Panel agrees with Complainants that, in light of the fact that the Disputed Domain Name was registered on the same date on which an agreement between the Complainants was publicized, “it is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.” This conclusion is consistent with previous decisions under the Policy. See, e.g., Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao"), WIPO Case No. D2000-0717 (disputed domain names registered within two days of “an article about [a] planned merger was published in several electronic news services”); Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (disputed domain name contained trademarks owned by two companies that had “announced the[ir] merger”); and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 (the merger between the two companies was widely publicised also in England before the date of the registration of the domain names”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mahindrareva.com> be transferred to Complainant Mahindra Reva Electric Vehicles Private Limited as requested in the Complaint.
Douglas M. Isenberg
Dated: February 24, 2011
1 Although the Policy does not specifically address whether more than one entity may file a single complaint, numerous UDRP panels have permitted this practice where one complainant was “a wholly owned subsidiary” of the other complainant, Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007; or where two complainants are both “part of” a single entity, Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388. More recently, panels under the Policy and the similar dispute procedure for “.au” domain names have allowed consolidated complaints where (1) the multiple complainants (a) have “a common legal interest” or (b) are the target of “common conduct” by the respondent, and (2) “it would be equitable and procedurally efficient to permit the consolidation of complaints.” See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331 and National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021. Accordingly, the Panel here, in the absence of any objection from Respondent, sees no reason not to allow this case to proceed with the two named complainants.
2 Complainants state that, with respect to the previous registrant and the Respondent, “the probability of both the parties being same entity is also not ruled out” given that a transfer occurred “on receiving a cease and desist letter.”