WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Maharashtra Tourism Development Corporation Limited v. Rajiv Varma, Lawrence Travels & Tours (P) Ltd.
Case No. D2015-0848
1. The Parties
The Complainant is The Maharashtra Tourism Development Corporation Limited of Mumbai, India, represented by Cox and Kings (India) Limited, India.
The Respondent is Rajiv Varma, Lawrence Travels & Tours (P) Ltd. of New Delhi, India, self represented.
2. The Domain Name and Registrar
The disputed domain name <deccanodyssey.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2015. On May 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2015, 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 May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2015. The Response was filed with the Center on June 13, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 22, 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.
The Panel sent a procedural order on June 29, 2015 requesting the Complainant for documents mentioned in the Complaint. The parties sent their reply to the procedural order on July 2, 2015.
4. Factual Background
The Complainant is a company set up by the State of Maharashtra, India to promote tourism in the state. The luxury train "Deccan Odyssey" is one such initiative, launched by the Complainant on January 16, 2004, jointly with the Ministry of Railways, Government of India. The Complainant owns rights to the name, logo and signage of the train "Deccan Odyssey".
The Respondent is a tour operator based in New Delhi, India and has been a sales agent for the Complainant's train "Deccan Odyssey". The Respondent registered the disputed domain name on May 12, 2002, and the Complainant registered the domain name <mtdcdeccanodyssey.com> on November 13, 2003. The disputed domain name was therefore registered prior to launch of the Complainant's train and prior to the registration of the Complainant's domain name.
5. Parties' Contentions
The Complainant asserts that it has acquired reputation and goodwill in MTDCDECCANODYSSEY and through promotion of the Deccan Odyssey train through publications and operations, MTDCDECCANODYSSEY has acquired secondary meaning indicating the Complainant.
The Complainant alleges that by an agreement dated July 24, 2014, Cox and Kings Limited was appointed to manage and operate the train "Deccan Odyssey" for ten years. The Complainant states it had previously appointed private sales agents, and allowed the agents use of the name "Deccan Odyssey" during the tenure of the sales agreement. Since October 1, 2014, the Complainant states, it has terminated the sales agreements with the private sales agents. However, some agents continue using the "Deccan Odyssey" name to encash on the marketing efforts of Cox and Kings even after termination of the agreement.
The Deccan Odyssey train is operated and managed, according to the Complainant, on similar lines to the Blue Train of South Africa, the Orient Express of Europe and the Eastern and Oriental Train of South East Asia. The Complainant states it has promoted the Deccan Odyssey train by participating in various tourism exhibitions in India and abroad. It alleges that considerable amounts have been spent on popularizing the name "MTDC Deccan Odessey" through printed literature, brochures, posters and other electronic material.
The Complainant states that it recently came across the disputed domain name being used by the Respondent to sell travel packages. The Complainant states that the content on the Respondent's website is deceptively similar to the content on its website "www.mtdcdeccanodyssey.com" and that the Respondent has also copied other content such as photographs and the logo from its website.
The Complainant states that the Respondent is among the sales agents whose agreement has been terminated but continues to use the disputed domain name. The Complainant states that the website at the disputed domain name is deceptively similar to its website and the Respondent has chosen the disputed domain name to trade upon the Complainant's name. The Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name, and states the Respondent is a cybersquatter as the disputed domain name was registered and is used with bad faith or mala fide intent to profit from the goodwill of someone else and disrupt the Complainant's business.
The Complainant has cited two Indian court rulings pertaining to passing off in relation to domain names. The first case is Rediff Communication Ltd. v Cyberbooth & Another,AIR 2000 BOM 27, whereit was discussed by the High Court of Bombay, India that passing off requires the following elements:
(i) Misrepresentation (ii) made in course of trade to prospective customers (iii) calculated to injure the goodwill of another trader and (iv) resulted in actual damage to the other side. In the other case, Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540, the Supreme Court of India had granted injunction in favour of the trademark owner for the use of a confusingly similar domain name by a third party. The Complainant requests transfer of the disputed domain name based on its submissions.
The Respondent states that it is one of the leading tour operators in India, that has been in business since 1989 and was incorporated in 1997. The Respondent alleges that it actively participates in various trade fairs and exhibitions and maintains dedicated websites to promote its tourism services.
The Respondent states that it has registered the disputed domain name in connection with promoting tours to the Deccan regions of India. The Respondent submits that the Government of India from time to time collaborates with the Indian Railways and state governments to operate luxury trains, and the Deccan Odyssey is one such venture. The Respondent argues that the Government of India owns the train and the Complainant only has rights to operate the train by paying a fee to the Indian Railways for each train journey.
The Respondent states that after obtaining approval to sell luxury train packages, it placed the MTDC Deccan Odyssey information on its website and has sold tour packages from the years 2004 to 2013. The Respondent states it has not received any complaint or notice from the Complainant prior to the present dispute. The Respondent believes that the Complainant has entered into a limited time contract with Cox and Kings, and that Cox and Kings in turn has not signed any agreement with the Indian Railways. The Respondent further states that Cox and Kings had approached the Respondent in August 2014 to be a retail sales agent for "Deccan Odyssey".
The Respondent further states that the Government of India prohibits all government agencies from holding any domain names with the generic Top-Level Domains ("gTLDs") ".com", ".net" or ".org" and that only the ".gov" extension is allowed, such as <maharastratourism.gov.in>. The Respondent argues that the train MTDC Deccan Odyssey is a joint venture between various government bodies and therefore neither the Complainant nor Cox and Kings have any right to ask for the transfer of the disputed domain name.
The Respondent argues the disputed domain name was registered eighteen months prior to the official launch of the train and this shows there was no mala fide intent in acquiring the disputed domain name. The Respondent states that it has not displayed the logo or the content from the Complainant's website, as the content on its website is only for journeys across the Deccan region of India. The Respondent states that it has placed a disclaimer on its site stating that the website should not to be confused with a similarly worded luxury train operated by the Complainant.
The Respondent states that Cox and Kings is only a sales agent and is operating ten different journeys in different names without the prefix "Deccan Odyssey", whereas the Complainant had previously insisted that agents append "Deccan Odyssey" for tours on its train. The Respondent states that the Complainant has failed to establish the elements under paragraph 4 of the Policy, and requests the Complaint be denied.
C. Parties Supplemental Submissions
The Panel, by a procedural order dated June 29, 2015, called upon the Complainant to provide a copy of the agreement and the written termination between the parties, referred to in the Complaint. The Complainant in its reply dated July 2, 2015, stated that the agreement and termination were not written but were verbal. The Complainant has further submitted that no private party can have rights to run a train in India and that a former sales agent cannot claim rights to create or use a deceptively similar website as that of the Complainant.
The Respondent through an email dated July 2, 2015, has rebutted the submissions of the Complainant and has argued that the Complainant has contradicted its own statement that no private party can have rights to a domain name with the Deccan Odyssey mark and yet has allowed Cox and Kings to use the domain names <deccanodysseytours.com> and <deccanodyssey.in>. The Respondent denies using the logo or content from the Complainant's website and requests dismissal of the Complaint.
On July 7, 2015, the Complainant sent another email in reply the Respondent's supplemental submissions stating that the use of term "Deccan Odyssey" in the disputed domain name are key words and that users looking for the Complainant are likely to be diverted due to the key words in the disputed domain name. The Respondent's disclaimer on its website does not assist the Respondent's case, argues the Complainant, as the Internet user has already been diverted and thereby the Complainant loses clients. The Complainant further states that Cox and Kings has a legal and valid contract with the Complainant and is reclaiming these sites to promote, market and sell tickets for the "Deccan Odyssey" and these sites will then revert to the Complainant on completion of the tenure of the contract.
The Panel accepts the solicited supplemental submission of the Complainant and the Respondent's reply, and in its discretion the Complainant's communication of July 7, 2015 for purposes of its assessments under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2.
D. Complainant's Presentation of its Case
The Panel finds at times that Complainant's presentation of its case has been inaccurate and unsupported with proper documents. The Complainant has clearly stated in the Complaint that the termination of sales agreements have been made in writing. When called upon to provide a copy of the termination document, the Complainant has retracted its earlier statement and said that the termination was verbal and not written. The Panel does not condone such actions being made by parties to the proceedings.
The Panel strongly disapproves of the Complainant's submission of unsolicited communications in these proceedings. The Complainant sent an email submission on July 15, 2015, after notice from the Panel that no further supplemental filings would be accepted by the Panel in these proceedings. The documents sent by the Complainant in the said email were documents showing evidence of use of its trademark. The Complainant ought to have filed the documents along with the Complaint and not as an afterthought. Further, no reasons has been given by the Complainant as to why the documents could not have been filed along with the Complaint in the first place. The Panel places on record the Complainant's disregard in adhering to the procedural rules and Panel directions in these proceedings.
The Panel now proceeds to the merits of the case.
6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first requirement under paragraph 4(a) of the Policy stipulates that the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has relied on common law unregistered trademark rights in the MTDCDECCANODYSSEY mark. The evidence relied on by the Complainant are the use of its website and findings in a previous UDRP case, Maharastra Tourism Development Corporation Limited v. Supinder Singh, WIPO Case No. D2015-0576, where the Complainant's rights in the mark have been recognized. The panel in that case had noted that the Complainant could have claimed rights in the DECCAN ODYSSEY mark apart from the MTDCDECCANODYSSEY mark. The Panel agrees with this assessment, as the Complainant's use of the DECCAN ODYSSEY mark on its website is quite prominent.
The Panel accordingly finds the Complainant has common law unregistered rights in the marks MTDCDECCANODYSSEY and DECCAN ODYSSEY which have become identifiers of source of the Complainant's luxury train services. The Panel finds the disputed domain name is confusingly similar to marks in which the Complainant has rights.
The Complainant has satisfied the first requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent on its part has the opportunity to rebut the Complainant's contentions and demonstrate any rights or legitimate interests in the disputed domain name it may have.
The Complainant has submitted that the Respondent was a former sales agent who was allowed to use the name "Deccan Odyssey" during the tenure of the agreement. However, after termination of the agreement, the Respondent does not have any rights or legitimate interests in the disputed domain name.
The question before the Panel is whether the Respondent can claim rights to the disputed domain name after termination of its relationship with the Complainant. One school of thought expressed by some UDRP panels on this point is, if a respondent had legitimately registered and used a domain name corresponding to a complainant's mark at one point under an agency agreement, and the agency between the parties has been terminated, the use of the domain name by the respondent after termination of the agency agreement does not qualify as legitimate use under paragraph 4(a)(ii) of the Policy.
Some relevant cases where this view has been upheld are: UVA Solar Gmblt K.G v Mads Kragh, WIPO Case No. D2001-0373and Jerome Stevens Pharmaceuticals Inc. v. Watson Pharmaceuticals, WIPO Case No. D2003-1029,and Omigraphics Capital (Pty) Ltd. v. Fleximount, Guy Langevin, WIPO Case No. D2004-0471, where it was found thatrights to use the intellectual property of the complainant by the respondent who is a terminated distributor or agent ceases when the agreement is terminated. In SPEC GmbH v SPECS Scientific Instruments Inc. d/b/a SPECS Technologies Corporation, WIPO Case No. D2009-0308,where the respondent's use of the domain name was only in the capacity of an authorized distributor or a licensee, the respondent was found to have no rights to continuing using it after the agreement was terminated.
Some panels have takena different view and declined to decide issues that appear to be a contractual dispute between the parties such as in Lonely Planet Publications Pty Ltd. v. Mike Tyler, WIPO Case No. D2004-0670, where it was found that due to insufficient evidence, the issue of the use of a domain name after termination of a relationship between the parties could be left for determination by the court and not through a UDRP administrative proceeding.
Turning to the facts in the present case, the Respondent's use of the disputed domain name has admittedly been as a sales agent for the Complainant's train "Deccan Odyssey" from 2004 until 2013. The details or terms and conditions of use of its mark by the Respondent, is not documented in writing. The Complainant has also submitted that there is no written termination of the agreement.
The Panel does not have the advantage, as in a court proceeding to ascertain the veracity of the statements made by the parties. Although there is insufficient documentary evidence, there are other facts on record that are indicative of the intentions of the parties. The record shows the Respondent has registered the disputed domain name prior to the Complainant's use of its mark in commerce and the Respondent has used the disputed domain name without any objection from the Complainant for over a decade. Based on these facts, the Panel finds it reasonable to infer that the Respondent had used the disputed domain name in a legitimate manner. In any event, the Panel does not see it necessary to make a definite finding under this element as it has found that the Respondent has not registered the disputed domain name in bad faith and has discussed this in the next section.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed
domain name has been registered in bad faith and is being used in bad faith.
The issue of bad faith use of the disputed domain name in the present case needs to be assessed keeping in mind that the Complainant has allowed the use of the name "Deccan Odyssey" by the Respondent for over a decade. Allowing use of the mark for a considerable period of time could be considered acquiescence on the part of the trademark owner. Furthermore, the Respondent has registered the disputed domain name prior to the Complainant's launch of the Deccan Odyssey train and prior to the Complainant registering its own domain name. These issues were discussed in Maharastra Tourism Development Corporation Limited v. Bestway Tours & Safaris PVT Ltd., WIPO Case No. D2015-0595, a case involving the same Complainant, the same trademark and with an almost identical set of facts, the panel in that case has found "possible acquiescence" on the part of the complainant and dismissed the complaint.
The Complainant has argued that further use of the disputed domain name by the Respondent is likely to mislead customers, dilute its mark, and result in loss of customers and business. It needs to be mentioned at this juncture, that the Complainant has no doubt been lax in protecting its trademark rights as apparently it had at some point allowed the use of its mark by several sales agents without a written agreement. Furthermore, apart from allowing multiple sales agents to use its mark based on a mere verbal agreement, there is no concrete evidence of termination of the sales agreements. In the Panel's view, there is insufficient evidence to make a determination regarding bad faith use of the disputed domain name and the Panel is inclined to agree with the panelist in Maharastra Tourism Development Corporation Limited v. Bestway Tours & Safaris PVT Ltd. supra, that given the long use of the name by the Respondent, without any objection from the Complainant for over a decade, there is a possibility of acquiescence on the part of the Complainant.
For the Panel, however, the central difficulty for the Complainant in this case is to establish that the Respondent registered the disputed domain name in bad faith. The Panel finds that the Complainant failed to establish that the Respondent registered the disputed domain name in bad faith at the time of registration.
In the present case, the Respondent has registered the disputed domain name prior to the Complainant's launch of its train "Deccan Odyssey", which is prior to the Complainant's first use of its mark in commerce. The Respondent submits that the domain name was registered to promote travel and tour packages to the Deccan region of India, and the Complainant itself admits that the Respondent was a sales agent for the Complainant. When invited by the Panel to supply the specific details of the contractual relationship between the Parties, the Complainant was unable to do so. The Panel therefore concludes that the Complainant has not met its burden of establishing that the Respondent registered the disputed domain name in bad faith.
The Panel finds the Complainant has not established the disputed domain name was registered in bad faith and has not fulfilled the requirements under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: July 23, 2015