World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royale Indian Rail Tours Limited v. PrivacyProtect.org / Rahul Sharma

Case No. D2011-1417

1. The Parties

Complainant is Royale Indian Rail Tours Limited, New Delhi, India, represented by Cox and Kings Limited, India.

Respondent is PrivacyProtect.org / Rahul Sharma, Nobby Beach, Australia and New Delhi, India, respectively.

2. The Domain Name and Registrar

The disputed domain name <maharajasexpressindia.com> is registered with BigRock Solutions Pvt Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On the same day, the Center transmitted by email to BigRock Solutions Pvt Ltd a request for Registrar Verification in connection with the disputed domain name and received its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 24, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 26, 2011.

The Center verified that the Complaint together with the amended 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 August 29, 2011. As per the rules, paragraph 5(a), the due date for Response was September 18, 2011. The Response was filed with the Center on September 18, 2011.

The Center appointed Maninder Singh as the sole panelist in this matter on October 3, 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.

On November 11, 2011, Respondent submitted a Supplemental filing. On January 20, 2012, the Center issued a Procedural Order acknowledging receipt of said Supplemental Filing and granting Complainant 5 days to reply to Respondent’s submissions. Complainant filed its Supplemental Filing on January 23, 2012. On January 25, 2012, Respondent submitted further arguments in reply to Complainant’s Supplemental Filings.

4. Factual Background

Complainant is stated to be a Joint Venture Company of the Indian Railways Catering and Tourism Corporation (Government of India) (hereinafter “IRCTC”) and Cox & Kings Limited - a private company of the Cox and Kings Group, stated to have been set up specifically for operating a super luxury train to cater to high-end global clients and special groups of individuals and organizations to show them India. It uses the trademark “Maharajas Express” for its luxury train it uses the trademark MAHARAJAS EXPRESS for its luxury train. Complainant claims to have conceived, coined and developed its trademarks MAHARAJAS EXPRESS and domain names, which include said trademarks (specified below).

Complainant’s domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in> are stated to have been registered by Complainant in February-March 2009. Subsequently, it has also filed numerous trademark applications in September 2009 for its device trademark which includes the text MAHARAJAS EXPRESS. Complainant claims that the disputed domain name has never been used previously in respect of any other train. Complainant claims to have launched its website “www.rirtl.com” and has been marketing and making bookings for the said train on the same. The launch of its service and booking for its training was well publicised by the media across the world, especially in Europe, the United States of America, France, Canada and Australia.

Respondent registered the disputed domain name on February 19, 2011, i.e. after about 2 years from the date of registration of Complainant’s domain names, by suffixing the word “India” to the disputed domain name. Complainant contends that Respondent’s disputed domain name is identical or confusing similar to its trademarks, service marks and domain names and that Respondent has no rights or legitimate interests in respect of the disputed domain name. The contents of Respondent’s website or other sites which display links to Complainant’s website have not been permitted by Complainant. Respondent, in Complainant’s opinion, was aware of the existence of Complainant’s trademark, service marks and domain names. However, with a malafide intention to cause confusion and deception amongst the Internet users intending to log on to Complainant’s website for using its train services of “Maharajas Express”, Respondent has created links to Complainant’s website without any permission from Complainant and thereby redirecting the Internet users wishing to use Complainant’s “Maharaja Express” train services, to reach to Respondent’s website with a view to extract unlawful gain to Respondent.

5. Parties’ Contentions

A. Complainant

Complainant in its Complaint has, inter alia, raised the following contentions:

i) Contentions of Complainant regarding the disputed domain name being identical or confusingly similar to the trademark or service Mark of Complainant:

- Complainant is a Joint Venture Company (hereinafter “JVC”) of IRCTC and Cox & Kings Limited, a private limited company. This joint venture company has been set up specifically for operating a super luxury train to cater to high-end global clients and special groups of individuals and organizations to show them the great culture and heritage of India. Complainant claims to have conceived, coined, developed and registered its trademarks and domain names using the words “Maharajas Express” in February-March 2009 and said name is stated to have been made public during the Internationale Tourismus Borse (one of the travel shows stated to be most prestigious to the travel industry in the world) in Berlin in the second week of March 2009 in presence of the entire global travel industry. Complainant also claims that the disputed domain name has never been used previously in respect of a train. After setting up the JVC, Complainant is also stated to have launched its website “www.rirtl.com” for marketing and booking for the said train. The launch is claimed to be well publicized by the media across the world. In this regard Complainant has annexed a few clippings from various magazines and websites. Complainant also claims to have spent huge sums of money, that is, more than USD 500,000, on the advertisement, publicity and marketing for its train service “Maharajas Express” across the world, especially in Europe, United States, France, Canada and Australia.

- Complainant is also stated to have filed the following applications in September 2009 in various classes, before the Registrar, Trademarks Registry of New Delhi, for registration of its logo using the words MAHARAJAS EXPRESS:

Sr. No.

Application No.

Class

Date of Application

1.

1866081

3

September 23, 2009

2.

1866082

6

September 23, 2009

3.

1866083

42

September 23, 2009

4.

1866084

39

September 23, 2009

5.

1866085

38

September 23, 2009

6.

1866086

33

September 23, 2009

7.

1866087

29

September 23, 2009

8.

1866088

27

September 23, 2009

9.

1866089

26

September 23, 2009

10.

1866090

25

September 23, 2009

11.

1866091

24

September 23, 2009

12.

1866092

21

September 23, 2009

13.

1866093

20

September 23, 2009

14.

1866094

12

September 23, 2009

15.

1866095

32

September 23, 2009

16.

1866096

8

September 23, 2009

- Complainant claims that that the disputed domain name using words “Maharajas Express” is identical to Complainant’s trademark and it has exclusive rights in the same.

- Complainant also claims that only recently it has discovered the existence of the disputed domain name <maharajasexpressindia.com> being owned by Respondent. The Complaint contends that the disputed domain name is cleverly and mischievously a suffixed version of Complainant’s trademark MAHARAJAS EXPRESS and of Complainant’s domain names <www.maharajasexpress.com>.

- Complainant contends that suffix “India”, added to the disputed domain name, is merely a descriptive word, not capable of distinguishing the disputed domain name of Respondent from Complainant’s trademark or name.

- Complainant claims that the disputed domain name was registered by Respondent on February 19, 2011, i.e., 2 years after the registration of Complainant’s domain names. Complainant contends that Respondent’s disputed domain name is identical and confusingly similar to the trademark and service mark of Complainant. In this regard, Complainant has submitted as Annex E the printout of the homepage of Respondent’s website “www.maharajasexpressindia.com”.

ii) Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:

- Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name <maharajasexpressindia.com>. Complainant claims that it did not have knowledge of any such trademark being registered by Respondent.

- Complainant claims that the webpage, referable to Respondent’s webpage, markets “Maharajas Express” train service containing Complainant’s name, photographs, itinerary etc. without Complainant having given any authority or permission to Respondent in this regard. Further, Respondent also markets trains and other services of Complainant’s competitors. Complainant, while stating that Respondent has now edited its webpage and removed images of the train brands of Complainant’s competitors, has apprehended that Respondent might reintroduce the same in future just as easily as it has removed those services from its webpage.

- Complainant contends that the disputed domain name <maharajasexpressindia.com> has been misleadingly represented and shown by Respondent as “part of Indian Luxury Trains Network” which is totally false. Complainant further contends that the disputed domain name <maharajasexpressindia.com> is not part of any company, group or entity with the name “Indian Luxury Trains Network”. Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name <maharajasexpressindia.com> and the contents of Respondent’s website or other sites which display links to the disputed domain name, were without any permission having been granted by Complainant.

iii) Contentions regarding bad faith registration and use of the disputed domain name by Respondent:

- It has been the contention of Complainant that the webpage of Respondent’s disputed domain name <maharajasexpressindia.com> markets Complainant’s luxury train product “Maharajas Express” without having been in receipt of any authority or permission from Complainant. Complainant further contends that Respondent also has been found to be marketing train and other services, such as, Royal Rajasthan on Wheels, Palace on Wheels, Deccan Odyssey, The Indian Maharaja, Golden Chariot, etc., from Complainant’s competitors.

- It has also been the contention of Complainant that if an Internet user tries to access the website of Complainant to book the train services of Complainant’s “Maharajas Express” on the Internet, he or she may be misled by the deceptive similarity of Respondent’s disputed domain name <maharajasexpressindia.com> and would tend to access Respondent’s site.

- Complainant contends that Respondent, with malafide and mischievous intention, has created the disputed domain name by cleverly suffixing “india”, a descriptive word, to the already registered trademark or domain names of Complainant.

- It is also the contention of Complainant that Respondent was aware of the existence of Complainant’s trademark and domain names, however, it has deliberately created the deceptively similar disputed domain name with the malafide intention of redirecting Internet users intending to access Complainant’s services of “Maharajas Express” to reach Respondent’s website marketing the services. It further contends that Respondent has also been found to be marketing other trains and services of Complainant’s competitors.

- Complainant argues that an Internet user intending to log on to the website of Complainant to use the service of “Maharaja Express” would not be able to decipher the difference between different services being marketed and would unintentionally reach Respondent’s website due to the deception created by Respondent’s disputed domain name and believing it also to be the website of Complainant, the user is likely to conclude that this website is also the official website of Complainant’s train service “Maharaja Express” notwithstanding the disclaimer at the bottom of Respondent’s webpage. Further, a normal user may believe that all other train services being marketed by Respondent (as they were prevalent on earlier versions of Respondent’s website) are also Complainant’s train or are associated with Complainant.

- Complainant claims that its trademark comprises a unique, novel and easy-to-remember combination of the words “Maharajas” and “Express”. Respondent, in the disputed domain name, has merely suffixed a descriptive word, “India”, to the combination of words used by Complainant. Complainant contends that if the domain names of Complainant and the disputed domain name of Respondent are compared, it would be clear that the disputed domain name is bound to cause confusion and deception amongst the unwary consumers and Internet users believing that the services offered in Respondent’s website are those of Complainant’s or that Respondent is in some way associated with Complainant.

- Complainant further contends that potential customers after seeing Complainant’s advertisement would access the website to learn more in detail about the various schemes and offers by Complainant for its service “Maharaja Express”. However, customers mostly having an imperfect recollection of the website address, remember the phrases that are emphasized in the advertisements and are thus likely to search for the website by putting in the key words in a search engine and by doing so are likely to come-across Respondent’s website. They would mistakenly access the website of Respondent due to errors of a typographical nature that they might make. Thus, there is a high probability for Complainant’s customers actually landing up on the website of Respondent’s one instead and hence disrupting the business of Complainant.

- Complainant contends that Respondent has intentionally created a confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or the service marketed on Respondent’s website with a view to attract Internet users to its website for commercial gains. Hence, the case squarely falls within the four corners of Policy, paragraph 4(b)(iv).

- Complainant contends that the registration of the disputed domain name by Respondent is primarily for the purpose of disrupting the business of a competitor within the meaning of Policy, paragraph 4(b)(iii).

- Complainant, in this regard, has relied upon certain earlier UDRP decisions, annexed as Annexure F, G and H to the present Complaint, wherein panels deciding in the similar complaints filed by Complainant herein, have granted relief to Complainant herein striking down other domain names resembling Complainant’s domain name.

iv) Further contentions from Complainant’s Supplemental Filing:

- The domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in> were registered by Complainant on February 27, 2009. The trademark MAHARAJAS EXPRESS is a trade mark / service mark belonging to Complainant and Complainant has exclusive rights on it.

- Complainant is a separate legal entity, quite distinct from its Joint Venture partners who have formed the said company. Complainant’s company continues to be an incorporated company with the Registrar of Companies and is a live company which is operational and has not been wound up either voluntarily or by any order of a Court having competent jurisdiction.

- There are ongoing disputes on a whole range of issues between the Joint Venture partners regarding the Joint Venture agreement entered into between the equal partners Cox & Kings Ltd. and IRCTC, which are presently pending before the arbitral tribunal. The disputes have also been referred to arbitration and a statement of claim has also been filed in the matter in which both disputed parties have nominated their respective Arbitrators. Thus the issues and disputes pertaining to the Joint Venture agreement interse the Joint Venture partners are pending and subject matter of the Arbitrators and the arbitral tribunal is yet to reach the final conclusion.

- It is denied that Complainant is not the authorized representative of Complainant. It is further denied that Complainant has been making false representations to the agents and travel community at large, which matter is being appropriately dealt with by Complainant.

B. Respondent

Respondent in his response to the Complaint has, inter-alia, submitted the following:

i) Response to contentions on identical or confusing similar domain name

- With regard to Complainant’s contentions that the disputed domain name is a cleverly suffixed version of Complainant’s trademark MAHARAJAS EXPRESS and domain names “www.maharajasexpress.com”, Respondent in his response has admitted that there is no other way to sell Complainant’s product except by using the name “Maharajas Express” and that is how an Internet user or Internet spiders identify as to what a website is all about. Respondent has further indicated that since he is only selling Complainant’s products and that the final beneficiary to that is Complainant itself, the contention that the disputed domain name is confusingly similar does not hold.

- Respondent further responded that it has used a suffix “India” to differentiate the disputed domain name from the trademark and domain name of Complainant and has also mentioned clearly in the footer that this is not the official website of Complainant’s products.

ii) Response to contentions regarding Respondent having no rights or legitimate interests in the domain names

- Respondent has once again admitted that since the product in both cases is the “Maharajas Express” train service, it belongs to and benefits Complainant itself. Respondent has further admitted Complainant’s contention that the competing brands being marketed by Respondent which had subsequently been removed by Respondent upon objections raised by Complainant, and submitted that as Complainant itself has argued that Respondent has removed the competing train brands, the claim of Complainant that Respondent is marketing trains and services of Complainant’s competitor does not hold any longer.

- Respondent has submitted that it has invested money in developing, running and marketing his disputed domain and has employed a dedicated team to promote it.

- Respondent submits that Internet marketing is an expensive venture and believes that the disputed domain name is his by right and legitimate interest. If Complainant had been so much concerned and had got the snapshots taken so many months ago, it could have reverted to Respondent regarding this issue earlier. Respondent also stated that as Complainant had known about domain registration by Respondent as early as February 19, 2011, any issues or concerns should have been conveyed to Respondent through e mail addresses provided on the website itself.

- Respondent claims that Internet marketing is a time bound process and Complainant seems to have cleverly waited for Respondent’s website to mature on the search engine ranking performance.

iii) Response to contentions regarding bad faith registration and use of the disputed domain names

- With regard to the contention of Complainant that Respondent was aware of the existence of Complainant’s website “www.maharajasexpress.com”, Respondent admitted that since he is marketing Complainant’s products, it is quite obvious that the knowledge of existence of the website was needed.

- As to the contentions of Complainant with regard to malafide and mischievous intentions of Respondent in using the disputed domain name, Respondent submitted that whereas Complainant claims that the product which was being marketed by Respondent is that of Complainant’s “Maharajas Express”, Complainant still claims that Respondent’s intentions are malafide and mischievous. It would have been believable if the product which was being sold had been that of something other than of Complainant’s product.

- On the issue of redirecting Internet users of Complainant’s website to Respondent’s website, Respondent states that although Complainant contends that it is with intention of redirecting users to Respondent’s website, however it also concedes that it was with a view to sell Complainant’s product only.

- Respondent alleges that visitors of Respondent’s website who pay a minimum of USD 5,400 per person per night for a journey on board Complainant’s train are not gullible enough to be fooled despite the disclaimer on Respondent’s website that the website is not the official website of Complainant’s “Maharajas’ Express” train.

- With regard to the contention of Complainant whether a “common man or a man of imperfect recollection” who has come across Complainant’s services offered under the name “Maharajas Express” or through their domain name “www.maharajasexpress.com” is likely to be misled to believe that the services offered by Respondent under the disputed domain name <maharajasexpressindia.com> are those of Complainant’s, or whether Respondent is in some way associated with Complainant, Respondent submits that it is unlikely that the product marketed by Complainant is meant either to attract a “common man or a man of imperfect recollection”. Respondent further submits that the cost of journey being as high as USD 22,000 per person, the product being marketed by Complainant would definitely be meant for elites by any standard of the world. It is one of the costliest trains in the world. Even if we see channels where Complainant has put its product for advertisement, it would be clear that they are normally out of reach of common man. Respondent argues that it is very unlikely that visitors, as elite as to travel on this train, would make such typographical mistakes as mentioned by Complainant in the Complaint.

- Respondent further submits that most of the guests of Complainant’s product are corporate big-shots, senior level executives and entrepreneur and it cannot be believed that they would act in the manner as Complainant has contended. Notwithstanding, Respondent submits that it has clearly mentioned in the disclaimer on its website “www.maharajasexpressindia.com” that it is not the official website of “Maharajas Express”.

- While requesting for denial of remedies prayed by Complainant, Respondent summarizes that it has never intended to fool Internet users of its website and has not used the disputed domain name in bad faith.

iv) Further contentions from Respondent’s Supplemental Filings

- Respondent would also like to bring the attention to some points as far as the authorized representation of Complainant’s is concerned in light of the recent developments through some points made by the division bench of the Delhi High Court in its earlier decision on the status and ownership of Maharajas Express.

- As per the observation of the division of Delhi High Court in order passed (Annexure A to Respondent’s supplemental filings filed on January 25, 2012), paragraph 22 reads "a faint attempt was made [...] to make out a case that train (Maharajas Express) had become a partnership property, i.e. property of Joint Venture but it is not possible to accept such a plea”. The bench further noted that "total cost of the train was Rs.49.5 Crores which was borne by Indian Railway Catering and Tourism Corporation (IRCTC) […]. If it was to be a Joint Venture property, there was no question providing for leasing of this train by IRCTC to the Joint Venture Company (RIRTL). These clauses are anathema and alien to the plea of partnership property. Therefore, IRCTC was and remains the exclusive owner of the train (Maharajas Express)."

- The point that Complainant’s domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in> were registered by Complainant on February 27, 2009 does not give it an exclusive right to the disputed domain name <maharajasexpressindia.com> as it is not the owner of the train, and the Joint Venture agreements (RIRTL) as for now remains terminated.

- Furthermore, IRCTC had contested the petition in Delhi High Court on various grounds which included the point that "the petition (filed by Cox & King) is not maintainable as the same was filed on the basis of two letters on 12.08.2011 (termination letter) issued by Respondent (IRCTC) by which Respondent terminated the joint venture agreement entered between IRCTC and Cox & Kings on 10.12.2008."

- The Division Bench of Delhi High Court also observed (See paragraph 23) that "the joint venture (RIRTL) stands terminated." Furthermore, the Bench also remarked that, whether the termination of the Joint Venture is bad in law or justified, can be resolved by the means of arbitration to be decided by the arbitration tribunal adding that even if Cox and Kings succeed in the arbitration proceedings, it may prima facie claim damages only and that termination of the Joint Venture cannot be restored.

- Moreover, the Bench also observed that the Joint Venture agreement was only in the realm contractual arrangement (paragraph 27) with no statutory flavor and no element of public law. Also in paragraph 33, the Division Bench of Delhi High Court has clearly mentioned that it can not restore the terminated arrangement between IRCTC and Cox & Kings. Furthermore, the Bench also observed that in this case, IRCTC has decided to terminate the arrangement and Cox and Kings may prima facie claim damages only, even in the event of its success in the arbitration proceedings.

- As per the last daily order passed by Supreme Court (SLP 965-967/2012), (Annexure B), the interim arrangement, as suggested by the Division Bench in the impugned order in paragraph 33, will continue, without prejudice to the rights and contentions of the parties and that final hearing will be on February 9, 2012.

- Respondent would also like to point out the fact that the domain names <maharajasexpress.com> and <rirtl.com> which were registered by Complainant are down as a consequence of the decision of the Delhi High Court. This fact also raises serious concern on the legitimate interest of the Complainant in the disputed domain name <maharajasexpressindia.com>. Respondent maintains that Complainant has no right or legitimate interests in respect of the disputed domain name <maharajasexpressindia.com> as the trademark MAHARAJAS EXPRESS is exclusively owned by IRCTC and that prime facie the Joint Venture Company stands terminated.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel has considered the documents submitted by Complainant in support of its use and possession of various trademark applications and domain name registrations which consist and/or include the words “Maharaja Express” for its marketing and booking initiatives for the train “The Maharaja Express” since February-March 2009.

The Panel observes that Complainant has spent tangible sums of money for advertisement, publicity and other marketing initiatives for the “Maharajas Express” train services in various countries across the world, especially in Europe, United States, France, Canada and Australia. There does not appear to be any doubt that Complainant, i.e. a joint venture company, is currently the owner of the unregistered trademark MAHARAJA EXPRESS as the distinctive element, as conceived, coined and developed by it and is widely used by for the last more than two years. Indeed, this trademark is distinctive and identified with its owner for the train service “The Maharaja Express”. The Panel has no doubt that Complainant has rights in the trademark and domain names in question using words “Maharaja Express”.

The disputed domain name <maharajaexpressindia.com>, with the addition of the word “India” is not sufficiently different from Complainant’s trademark and domain names for the purposes of the first element; and the disputed domain name of Respondent would remain confusingly similar to the trademark and domain names owned by Complainant.

In any event, for purposes of the UDRP this Panel has no doubt that the addition of the word “India” as suffix in the disputed domain name does not render the disputed domain name distinct from Complainant’s trademark. The Panel, therefore, concludes that the disputed domain name <maharajaexpressindia.com> registered by Respondent on February 19, 2011 by suffixing the word “India” to “Maharaja Express”, is confusingly similar to the MAHARAJA EXPRESS trademark, service mark and domain names of Complainant’s.

B. Rights or Legitimate Interests

The Panel has no doubt that the disputed domain name incorporates the widely known trademark MAHARAJA EXPRESS of Complainant by suffixing generic word “India” to it. Respondent has failed to submit to the satisfaction of the Panel any cogent response or document to prove that it has rights or legitimate interests in the disputed domain name or has been using the disputed domain name legitimately pursuant to the Policy. The Panel observes that Respondent has admitted to have adopted and is using the disputed domain name to market Complainant’s train service “Maharaja Express”. It is the contention of Complainant that Respondent has been using the disputed domain name, being identical and confusingly similar with the domain names of Complainant, without any authorization or licence from Complainant. It is more than apparent to this Panel that such an attempt on the part of Respondent is to create confusion and to cash on the name, goodwill and reputation of Complainant. Respondent is therefore attempting, without Complainant’s authorization, to extract commercial benefits for itself at the cost of Complainant by adopting and having registered a confusingly similar domain name. Moreover, the website associated with the disputed domain name included in the past links to competitors of Complainant, and the Panel believes that there may be a risk that Respondent includes those links again in the future. The Panel has little difficulty in accepting that Respondent has not demonstrated its bona fide use and registration of the disputed domain name as it has failed to submit any cogent and plausible reasons or documents - except to state that it has been marketing the train service of Complainant - to prove, in the absence of any authorization from Complainant, that it has legitimate interests in the disputed domain name.

Even if the Panel considers the Supplemental Filings on behalf of Respondent contending that Complainant is not the owner of the train “Maharaja Express”, with reference to certain legal proceedings between the parties regarding the JVC, this has no bearing insofar as Complainant’s company being the owner of the trademark MAHARAJA EXPRESS and domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in>. The Panel is of the view that certain pending disputes between partners of Complainant JVC would not have any impact on the present administrative proceedings. In the event there is any dispute in future with regard to the ownership of said domain names between the partners of Complainant JVC, this may have to be decided by the appropriate forum in any appropriate proceedings. However, at this juncture, the Panel has no doubt that Complainant is the owner of the trademark MAHARAJA EXPRESS and domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in> and has legitimate rights in this regard. The objections sought to be raised by Respondent through its supplementary submissions, in the view of the Panel, have no bearing on the present proceedings.

The Panel has, therefore, little doubt in its mind that Respondent has no legitimate interests or rights in the disputed domain name pursuant to the Policy.

C. Registered and Used in Bad Faith

The disputed domain name has been registered by Respondent subsequent to Complainant’s registration of the domain names <maharajasexpress.com>, <maharajasexpress.co.in>, <maharajasexpress.in> and is, in the opinion of the Panel, being used in bad faith by Respondent.

Respondent has not denied and has, in fact, admitted that it has registered and used the disputed domain name for marketing Complainant’s product, that is, “Maharajas Express” train services. This was done without Complainant’s authorization. Moreover, the website associated with the disputed domain name included in the past links to competitors of Complainant, and the Panel believes that there may be a risk that Respondent includes those links again in the future. In the absence of any plausible explanation showing bona fide usage of the disputed domain name by Respondent without Complainant’s authorization, the Panel has no inhibition in accepting that the contention of Complainant that being fully aware of the commercial value and significance of its domain names, Respondent has attempted to grab the disputed domain name <maharajaexpressindia.com> to take commercial advantage of it by riding over the substantial goodwill and reputation of Complainant.

The Panel is also of the view that there is likelihood of confusion among Internet users with the disputed domain name of Respondent believing that there is connection, nexus, affiliation or association between Complainant and Respondent thereby having the effect of disrupting the business of Complainant.

The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by Respondent.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <maharajasexpressindia.com> be transferred to Complainant.

Maninder Singh
Sole Panelist
Dated: January 31, 2012

 

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