WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royale Indian Rail Tours Limited v. Go Heritage India Journeys Pvt. Ltd

Case No. D2011-0536

1. The Parties

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

The Respondent is Go Heritage India Journeys Pvt. Ltd of Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <maharajaexpresstrain.com> is registered with GoDaddy.com, Inc.(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2011.

The Center appointed Pravin Anand as the sole panelist in this matter on May 4, 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

The Complainant, Royale Indian Rail Tours Limited is a joint venture company formed by Indian Railways Catering, a Government of India enterprise and Cox & Kings Limited. The Complainant is into the business of operating a super luxury train that caters to the high end global clients.

The Complainant is using the trademark MAHARAJAS’ EXPRESS and its various variants for its luxury train. The Complainant has filed numerous trademark applications for the registration of the logo before the Registrar, Trade Marks Registry, New Delhi, in which the words “Maharajas’ Express’’ appear prominently. Further the Complainant is the registrant of various domain names incorporating its trademark MAHARAJAS’ EXPRESS.

5. Parties’ Contentions

A. Complainant

The Complainant states that its business was set up specifically for the purpose of operating a super luxury train to cater to high end global clients and special groups of individuals and organizations to show them India in a manner which the passengers will cherish and remember for rest of their lives

The Complainant states that it adopted the trademark MAHARAJAS’ EXPRESS, in February 2009, after doing extensive research to determine that the term has not been previously used for any other train. It publicly launched the train at ITB [Internationale Tourismus Borse] Berlin in March 2009. The said launch was well publicized by the media across the world with several news papers and websites reporting the unveiling of the Maharajas’ Express at ITB Berlin. RIRTL has spent huge sums of money in excess of USD 500,000 on the publicity and the marketing initiatives for the Maharajas’ Express in various countries across the world especially in Europe, United States of America, France, Canada and Australia.

The Complainant states that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent through the disputed website markets trains and services of Complainant’s competitors such as Palace on Wheels, Royal Rajasthan on Wheels, Golden Chariot, Deccan Odyssey, etc.

The Complainant contends that the disputed domain name redirects the Complainant’s potential customers to the Respondent‘s website where other trains are also promoted. The other trains on the Respondent’s website also have a reference to royalty, regal or luxury, but the Complainant states its train is far superior to the other trains. The Complainant states Internet users looking for the Complainant’s website are likely to be misled by the disputed domain name and the Respondent’s website. Further, as the Respondent’s website promotes other trains Internet users are likely to associate the other trains with the Complainant. The disputed domain name is therefore likely to disrupt the Complainant’s business, which is recognized as bad faith registration and use under paragraph 4(b)(iii) of the Policy. The Complainant further contends that Respondent has deliberately created the deceptively similar domain name with a mala fide intention of redirecting Internet users intending to access the Complainant’s services on Maharajas’ Express and / or Complainant’s website “www.maharajasexpress.com” to reach the Respondent’s website marketing the services Complainant’s train Maharajas’ Express (without the permission or authority of the Complainant) as also services of other trains Palace on Wheels, Royal Rajasthan on Wheels, Golden Chariot, Deccan Odyssey, etc., not run by the Complainant but by its competitors. The Respondent has deliberately registered a domain name which is confusingly similar to the Complainant’s train name. The Complainant argues that such a deceptively similar domain name registration comes within the meaning of paragraph 4(b)(iv) of the Policy, and the disputed domain name has been registered and is being used in bad faith. The Complainant therefore requests for the transfer of the disputed domain name. The Complainant states that the disputed domain name has been created by the clever device of misspelling and suffixing with a descriptive word shows that mala fide and mischievous intention of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has to establish each of the following elements:

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

2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) The disputed domain name has been registered and used in bad faith

In the case of a default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences there from, as it considers appropriate.

In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of factual circumstances in the Complaint as well as the evidence to support it.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.

The Complainant does not own trademark registrations for its MAHARAJAS’ EXPRESS trade mark but has submitted documents that indicate it has unregistered trademark rights in MAHARAJAS’ EXPRESS.

The material submitted by the Complainant includes extensive media coverage for its luxury train that clearly identifies the Complainant as the provider of the services, and documents showing promotion and advertisements for the MAHARAJAS’ EXPRESS mark by the Complainant which are sufficient to support its claim that it uses MAHARAJAS’ EXPRESS as a trade mark in different jurisdictions. The Panel notes that the disputed domain name is misspelled and suffixed version of Complainant’s mark MAHARAJAS’ EXPRESS and the Complainant’s domain name <maharajasexpress.com> which is merely a descriptive word, not capable of distinguishing it from the Complainant’s mark and the Panel finds that it is confusingly similar to that mark.

For the reasons discussed the Panel finds the Complainant has satisfied the first requirement under paragraph 4 of the Policy, that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to prove that the Respondant has no rights or legitimate interests in the disputed domain name.

The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name as it the Respondent has no trademark rights for MAHARAJAS EXPRESS. The Complainant has not seen any marketing, publicity or advertisement of any kind promoting either the name “Maharajas-Express” or the domain name <maharajaexpresstrain.com> or any similar name.

The Panel finds from the record that the Respondent is not known by the disputed domain name and the Respondent has not authorized the Respondent to use the Complainant’s trademark. In addition, the Respondent through the disputed domain name markets trains and services of the Complainant’s competitors. There is nothing that would show that the Respondent has any right or legitimate interest in the domain name <maharajaexpresstrain.com>.

For the reasons discussed the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.

The Complainant has asserted that the Respondent attempts to target the Complainant’s potential customers by deliberately creating the deceptively similar domain name with the mala fide intention of redirecting Internet users intending to access the Complainant’s services on Maharajas’ Express and / or the Complainant’s website “www.maharajasexpress.com” to reach the Respondent’s website marketing the Complainant’s MAHARAJAS’ EXPRESS branded train services (without the permission or authority of the Complainant) as also services of other trains Palace on Wheels, Royal Rajasthan on Wheels, Golden Chariot, Deccan Odyssey, etc., not run by the Complainant but by its competitors. The normal Internet user may not be able to discern the difference between the different services being marketed and having reached the Respondent’s website, the user is likely to conclude that all the train services being marketed are that of the Complainant’s train or associated with the Complainant. Furthermore, many of the destinations traversed by the said trains overlap with those of the Complainant’s train Maharajas’ Express.

The Respondent has dropped the letter “s’’ from “Maharajas’’ and suffixed descriptive word “train” to the Complainant’s domain name <maharajasexpress.com>. Hence, when the domain names of the Complainant and the Respondent are compared, applying the well established tests of deceptive similarity, it is clear that the Respondent’s domain name <maharajaexpresstrain.com> is bound to cause confusion and deception amongst the unwary consumers and / or put them in a state of wonderment as to trade origin of the Respondent’s services or services marketed on the Respondent’s website.

The Panel is of the view that the same is likely to mislead the users into believing the Respondent’s services offered under the domain name “www.maharajaexpresstrain.com” as those of the Complainant. The very use of the domain name <maharajasexpresstrain.com> is a sufficient effort on the part of the Respondent to project that it is in some way or other associated with the Complainant.

For the reasons discussed, the facts and circumstances in the present case indicate that the disputed domain name was registered and is being used in bad faith. The Panel finds the Complainant has therefore successfully established the third element under paragraph 4 of the Policy.

7. Decision

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

Pravin Anand
Sole Panelist
Dated: May 18, 2011