WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Maharashtra Tourism Development Corporation Limited (MTDC) v. Bestway Tours & Safaris PVT Ltd.

Case No. D2015-0595

1. The Parties

Complainant is The Maharashtra Tourism Development Corporation Limited (MTDC) of Mumbai, India, represented by Cox and Kings (India) Limited, India.

Respondent is Bestway Tours & Safaris PVT Ltd. of New Delhi, India, internally represented.

2. The Domain Name and Registrar

The disputed domain name <the-deccan-odyssey.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2015, the Registrar 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 April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The due date for Response was extended to May 12, 2015. The Response was filed with the Center on May 11, 2015.

The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on May 14, 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.

To assist the Panel in rendering its decision in this proceeding, the Parties were directed via Procedural Order dated June 12, 2015 to submit a copy of any sales agreement that is or was in force between them. The Parties were additionally directed to clarify, if it was unclear from the sales agreement, the dates that any sales agreement was in force. Complainant and Respondent submitted their respective responses to the Procedural Order on June 18, 2015.

4. Factual Background

Complainant, the Maharashtra Tourism Development Corporation Limited, is an Indian company incorporated in the year 1975 under the Companies Act, 1956, owned by the State Government of Maharastra. It is the nodal agency for the promotion and development of tourism in Maharashtra. The Deccan Odyssey is a luxury train jointly financed and built by the Ministry of Railways, the Government of India and the State Government of Maharashtra to showcase the tourism aspects of Maharashtra like the pristine beauty of the Konkan coast, and the art, culture, and heritage of Maharashtra including World Heritage sites, as well as Maharashtra’s local arts, crafts and cuisine. Complainant’s domain name and corresponding website “www.mtdcdeccanodyssey.com” was launched on or about November 13, 2003. The Deccan Odyssey was flagged off on January 16, 2004 by the then Prime Minister of India.

Respondent registered the disputed domain name <the-deccan-odyssey.com> on November 29, 2003.

5. Parties’ Contentions

A. Complainant

Complainant promotes the development of tourism and encourages projects for the promotion of the culture and heritage of Maharashtra. The Deccan Odyssey train is now being operated and managed by Cox & Kings Ltd., authorized agent of Complainant. The Deccan Odyssey train was designed and built at the Integral Coach Factory of the Indian Railways. The name “Deccan Odyssey”, including its logo and all signage was designed exclusively by Complainant.

Complainant has acquired tremendous goodwill and reputation in the business and services in the name of MTDCDECCANODYSSEY and the same has been exclusively connoting and denoting to the members of trade and to the public, the services of Complainant’s origin and of none else. The expression MTDCDECCANODYSSEY has therefore acquired a secondary meaning as indicating Complainant.

Complainant has been promoting the Deccan Odyssey train by way of participating in various tourism related exhibitions in India and abroad as well as by printing publicity literature i.e., brochures, posters, DVDs, etc. Complainant has also taken efforts to popularize its said goods and services bearing the name MTDCDECCANODYSSEY. In the course of its business, Complainant is using the domain name and corresponding website “www.mtdcdeccanodyssey.com” containing the expression MTDCDECCANODYSSEY as its leading, essential, memorable and vital part with a view to conduct and expand its business through the Internet.

Complainant had appointed some private sales agents and it had allowed usage of the name Deccan Odyssey during the tenure of the sales agreement. It has since October 1, 2014 terminated all such sales agreements worldwide and has entered into a ten year agreement with Cox & Kings Limited, a renowned global travel group. Respondent is among the sales agents whose agreement with Complainant has been terminated. However Respondent has continued to operate the website “www.the-deccan-odyssey.com” which infringes on the domain name and website of Complainant.

In or about the month of March, 2015, Complainant came to know about the disputed domain name and website of Respondent. Respondent is taking undue advantage of the reputation and goodwill of the domain name and website of Complainant.

Complainant in its response to the Procedural Order has clarified that there existed no written agreement between the Parties, but there was an oral arrangement between the Parties for sale of products of Complainant relating to the Deccan Odyssey train.

B. Respondent

Respondent is a private limited company incorporated under the Companies Act, 1956 and engaged in the business of tours and travels for over twenty two years in India. It has acquired tremendous goodwill through its experience and skill in pioneering tours, treks, safaris and catering to exotic travel requirements.

Complainant has no right in the expression “Deccan Odyssey” which is a generic name (being geographical as well as descriptive in nature) and cannot be registered under Indian Trademark Law. Respondent registered the disputed domain name on November 29, 2003 and has been maintaining the same uninterruptedly since then. Respondent denies that Complainant had entered into any agreement with Respondent which has been terminated. The disputed domain name was registered for promoting and selling tours in the Deccan area including railways tours of the Deccan Odyssey train covering the rich culture of Maharashtra (Deccan area) state in India. There was no bad faith involved in the registration of the disputed domain name, which was done with a legitimate right.

On account of lack of passengers, the train had a very limited run over the period 2005 - 2013. The train was re-launched only recently in 2014. Complainant has submitted no evidence pertaining to its sales or any other usage evidence to indicate its popularity over a span of twelve years.

Respondent has rights or legitimate interests in the disputed domain name by virtue of its registration of the disputed domain name since 2003. Respondent was entitled to sell the tours of the Deccan Odyssey. It was a standard industry practice with several tour operators operating websites with the inclusion of “Deccan Odyssey” in their domain names. Respondent is a well-known tour operator of India who has a legitimate right to promote tour packages including those related to train journeys. Complainant and Respondent are not competitors and the disputed domain name was not registered by Respondent to disrupt Complainant’s business.

In its response to the Procedural Order, Respondent has denied the existence of any sales agreement with Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three elements which Complainant must prove to obtain its requested remedy:

“You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

The Panel will address the three aspects of the Policy listed above.

A. Identical or Confusingly Similar

Complainant has asserted common law rights in the phrase “mtdcdeccanodyssey”.

Apart from dashes, the disputed domain name contains only the common words “the”, “Deccan” and “Odyssey”. Deccan is a large plateau in India, making up most of the southern part of the country. “Odyssey” is a common English word meaning “journey”. Accordingly, “the Deccan Odyssey” is a phrase roughly meaning “the journey in Deccan”.

The Panel is aware of Maharashtra Tourism Development Corporation Limited v. Supinder Singh, WIPO Case No. D2015-0576, finding Complainant has common law trademark rights to “the Deccan Odyssey” without “mtdc” as a prefix.

However, in this Panel’s view, based on the limited evidence of record, Complainant has failed to produce sufficient evidence of relevant trademark or service mark rights.

Regardless, in view of the below, the Panel need not make a finding on this element of the Policy.

B. Rights or Legitimate Interests

Complainant had registered on or about November 13, 2003, its domain name and launched its website “www.mtdcdeccanodyssey.com”. The luxury train was flagged off on January 16, 2004. The disputed domain name was registered on November 29, 2003 i.e., just after a few days of registration of Complainant’s domain name and the launching of the website by Complainant but before the train started its operation.

Respondent has produced a printout of a recent email dated May 6, 2015 from the official agent of Complainant seeking Respondent’s assistance to sell packages on the train on a commission basis. In these circumstances, it is not possible that Complainant had no knowledge about the registration of the disputed domain name (for a period of more than eleven years). The Complaint has been filed long after the registration of the disputed domain name. There has been no objection or opposition by Complainant to the registration of the disputed domain name at any time prior to the filing of the present Complaint. To the contrary, as the email above possibly indicates, Complainant may have acquiesced to it. In these circumstances, it may be that Respondent has rights or legitimate interests in the disputed domain name. More to the point, however, Complainant has not met its burden under this element to show that Respondent lacks such rights.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that Respondent has registered or he has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.

The requirement in paragraph 4(a)(iii) of the Policy is that the domain name “has been registered and is being used in bad faith” would be satisfied only if Complainant proves that the registration was undertaken in bad faith and the circumstances of the case are such that Respondent is continuing to act in bad faith.

The May 6, 2015 email evidences Complainant’s knowledge of, and possible acquiescence to, Respondent’s conduct as a sales agent for the Deccan Odyssey train. Further, Respondent has been maintaining the disputed domain name without any objection by Complainant for more than eleven years. Hence the Panel finds that Complainant has not on the present record demonstrated that the disputed domain name has been registered or used by Respondent in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Ashwinie Kumar Bansal
Sole Panelist
Date: June 24, 2015