WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mahindra & Mahindra Limited / Mahindra Retail Private Limited v. Mom & Me
Case No. D2014-2127
1. The Parties
The Complainant is Mahindra & Mahindra Limited of Worli, Mumbai, Maharashtra, India / Mahindra Retail Private Limited of Bangalore, Karnataka, India, internally represented.
The Respondent is Mom & Me of Salt Lake City, Utah, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <momandme.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2014. On December 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, 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 December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 31, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on January 6, 2015. 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 first Complainant is the flagship company of the Mahindra Group, a diversified industrial group originating in India but with very substantial business interests in numerous sectors across the world. The second Complainant was incorporated by the first Complainant in 2007 to focus on retailing premium lifestyle goods to mothers and children. In approximately August 2008 the second Complainant adopted the MOM & ME trade mark for this business in India. This business subsequently developed from around five stores in 2009 to around 100 stores at the date of the Complaint.
Since the end of December 2011, the second Complainant's business has offered its products on-line through its websites, in particular at the domain names <momandme.in>, which was first registered in 2008, and <wwwmomandmeshop.in> which was registered in 2009. In 2008, the first Complainant made trade mark applications in India for a stylised logo incorporating its MOM & ME mark for use by the second Complainant in connection with its business. These applications are still pending at the date of the Complaint.
The disputed domain name was registered on April 2, 2000. The Respondent is based in Salt Lake City in Utah in the United States. The disputed domain name resolves to a blank page.
5. Parties' Contentions
The Complainant submits that it has made a very substantial use of its MOM & ME mark since 2008 in particular in relation to apparel, toys and furniture and has submitted in evidence details of its sales and advertising under the MOM & ME mark across its retail outlets in India from inception to the present year. It notes that this business is carried on not only through a network of more than 100 retail stores but also by means of e-commerce through its websites at the domain names <momandme.in> and <wwwmomandmeshop.in>. It says that its business under its MOM & ME mark has developed to the point that the mark has developed a significant global reputation and protectable goodwill such as amounts to a protectable right under the Policy and that the disputed domain name is identical or confusingly similar to its mark.
The Complainant submits that it only became aware of the disputed domain name on or about October 29, 2014, and subsequently wrote by email through its in-house lawyers to the Respondent on November 17, 2014, asserting its rights and demanding that the Respondent cease use of the disputed domain name and requesting transfer of the disputed domain name. It says that in spite of its request the Respondent has failed to respond or to comply, and that the disputed domain name still resolves to a blank page, which the Complainant says is indicative of the Respondent never having used and having no intention to use the disputed domain name in relation to a bona fide offering of goods and services, and that this amounts to domain name parking, which prevents others from registering or using the disputed domain name for their business activities. As a result the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name.
As for bad faith the Complainant submits that the Respondent registered the disputed domain name to attract Internet users to its website as a consequence of confusion or false affiliation with the Complainant's mark in terms of paragraph 4(b)(iv) of the Policy, and that the Respondent registered the disputed domain name with the mala fide intent of blocking the disputed domain name. It says that in view of the well-known nature of the Complainant's mark, the disputed domain name could only have been registered with intent to dilute the Complainant's trade mark rights or at the least to attract and deceive Internet users. The Complainant submits that registration in these circumstances without authorization and with no legitimate purpose to use the disputed domain name reveals bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant does not own registered trade mark rights for its MOM & ME trade mark but has trade mark applications for a stylized logo mark including the MOM & ME word mark pending since 2008.
Although the Complainant's MOM & ME trade mark is made up of generic English words, as a combined expression it has some element of distinctiveness and in any event the Complainant has submitted evidence which demonstrates the development since that time, at least in India, of a very substantial retail business. This business trades under the MOM & ME word mark and stylized logo mark and operates both through a large network of retail outlets and through e-commerce sales on the Complainants' websites. The business has made significant sales and the development of this business has involved the use of various forms of advertising. The Complainant has provided evidence of the nature and value of this advertising. Overall the Panel finds that the Complainant has made sufficient use of its MOM & ME mark in India since 2008 to support its assertion that it has protectable rights for the purposes of the Policy. Although the disputed domain name, which includes the word "and" is not identical to the Complainant's mark, which features an ampersand instead, it is certainly confusingly similar to it.
Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
For the reasons set out below it is unnecessary for the Panel to address this element.
C. Registered and Used in Bad Faith
It is a requirement under this element of the Policy that the disputed domain name has both been registered and used in bad faith.
The disputed domain name was registered on April 2, 2000. There is no evidence before the Panel to suggest other than that the original registration was undertaken by the United States based Respondent. In short, there is no evidence to suggest that the disputed domain name was acquired by the Respondent after 2008 and therefore after the date on which the Complainant commenced its business in India under the MOM & ME mark. On this basis it seems to the Panel that this is most likely a case of the Respondent having registered the disputed domain name in 2000, well before the Complainant had commenced first use of its mark in 2008.
Neither is there adequate evidence of the Respondent's use of the disputed domain name in bad faith. The evidence that the disputed domain name appears to have resolved to a blank page for a substantial number of years (the Internet Archive shows use as a blog-type/scrapbooking site for the first few years it was registered). Although in certain exceptional circumstances the passive use of a domain name may amount to bad faith (as set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and the subsequent line of decisions), this cannot be the case in circumstances that the disputed domain name was registered approximately seven to eight years prior to the Complainant's first use of its mark. While the Respondent's failure to respond to the Complainant's cease-and-desist communication sent by email on November 18, 2014 might in other circumstances suggest bad faith, in this case, where there is no evidence that the Respondent had knowledge of the Complainant's mark and business prior to registration of the disputed domain name, the lack of response is not determinative.
For completeness the Panel notes that paragraph 4(b)(iv) of the Policy does not apply where the disputed domain name was registered long before the Complainant's first use of its mark and apparently used for legitimate (scrapbook-related) purposes for several years (notwithstanding that the disputed domain name now resolves to a blank page). In these circumstances it cannot be said that the Respondent intentionally attempted to divert Internet users by creating confusion with the Complainant's mark.
Panels in previous cases have generally agreed that domain name parking is not proscribed by the Policy in circumstances that there is no evidence of targeting of the Complainant or use in bad faith. In this case and for the reasons outlined the Panel does not accept the Complainant's argument that the Respondent registered the disputed domain name in bad faith and finds that there is nothing to demonstrate actual use in bad faith. In these circumstances the Complaint must fail under this element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: January 10, 2015