WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mahindra & Mahindra Limited v. Mahindra Cars
Case No. D2016-2139
1. The Parties
The Complainant is Mahindra & Mahindra Limited of Mumbai, Maharashtra, India, represented by Anand & Anand, India.
The Respondent is Mahindra Cars of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <mahindracarsindia.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2016. On October 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2016.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on December 12, 2016. 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 is a company engaged in manufacturing of automotives and tractors in India. It is a Fortune India 500 company and pioneer in the automotive sector. It had introduced the utility vehicle to India in 1947 and launched utility vehicles under brands like BOLERO, SCORPIO, XYLO, QUANTO, THAR, XUV500, TUV300, VERITO, KUV100 and NUVOSPORT. It has also manufactured several two wheelers under the brands like CENTURO, ARRO, RODEO, GUSTO and MOJO. All these vehicles and brands are popular in the market. The Complainant owns registration of the Trademark MAHINDRA in India (registered on March 25, 2008) which covers various goods including cars and other automobile equipment.
The disputed domain name incorporating the Trademark MAHINDRA was registered on July 4, 2012 by the Respondent. The disputed domain name resolves to a website describing itself as an "unofficial Mahindra news site".
5. Parties' Contentions
The Complainant is the flagship company of Mahindra Group of companies and it is among the top industrial houses in India. Mahindra Group is one of the largest automotive and tractor manufacturers in the world. The Mahindra Group has built a strong base in technology, engineering, marketing and distribution which is key to its evolution as a customer-centric organization. It has decades of experience and launched many utility vehicles under its brands which are very popular and well-known to the public for a long time.
The Complainant owns the Trademark MAHINDRA in India which has been renewed from time to time. It has extensive online presence and it has hosted the website "www.mahindra.com", which provides information about Mahindra Group including its automotive division. It also registered domain names and operates websites for providing information about its automotive brands. The Complainant has registered rights and common law rights in the Trademark MAHINDRA.
The Complainant is continuously and extensively using the Trademark MAHINDRA and domain names incorporating the Trademark MAHINDRA for manufacture, sale and advertisement of cars throughout India and abroad through the Internet as well as through its authorized chain of dealerships. It has spent huge sum of money for advertising and promoting products and services under the Trademark MAHINDRA. On account of extensive advertisement of the Trademark MAHINDRA and superior quality of goods sold and services rendered under the Trademark, members of trade and general public exclusively associate the Trademark MAHINDRA solely with the Complainant.
The disputed domain name <mahindracarsindia.com> incorporates the Trademark of the Complainant in its entirety and is confusingly similar to its Trademark. The Complainant is the prior user and owner of the registered Trademark MAHINDRA.
The Respondent is hosting a website at the disputed domain name as an unofficial Mahindra news site. The sole purpose of the Respondent for running the said website is to derive commercial gains by hosting several advertisements. Since the disputed domain name comprises the well-known Trademark MAHINDRA of the Complainant, it is evident that the Respondent cannot have any rights or legitimate interests in the disputed domain name and it is only to misappropriate the reputation associated with the Trademark of the Complainant and to derive illegal gains from the same. The Respondent is clearly trying to lure Internet users to its website by relying on the initial interest and confusion created by the disputed domain name which contains the key words that any person searching on the Internet is bound to use while seeking information about the Complainant's products. The said act is clearly directed to increase the traffic to the website so that the Respondent can gain commercial benefit by hosting advertisements.
The Respondent does not have rights in the Trademark MAHINDRA nor can it show legitimate use of the said mark to denote its business. On the other hand, the Complainant uses MAHINDRA to identify its automotive business which is included as a part of domain names for hosting its several websites. The Respondent is not commonly known by the disputed domain name. In fact, the Respondent has indulged in a systematic attempt to target a domain name incorporating a mark in which the Complainant has rights and interests.
The disputed domain name is clearly identical to the well-known registered Trademark MAHINDRA in which the Complainant has statutory as well as rights in common law, by virtue of being a long and continuous user and being a registered proprietor thereof. Further, the disputed domain name incorporates the Complainant's Trademark MAHINDRA along with the words "cars" which is an identical product for which the Complainant uses its Trademark MAHINDRA and "India" which is the country of origin of the Complainant.
The malicious intention of the Respondent is evident from the blatant misappropriation of the Complainant's Trademark MAHINDRA. Any user searching for the Complainant's website may well be taken to the Respondent's website at the disputed domain name which enhances the possibility of inevitable confusion.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 5(f) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute based upon the complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences therefrom as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceedings to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. In order to succeed in this proceeding, the following elements of paragraph 4(a) of the Policy must be established:
(i) The disputed domain name is identical or confusingly similar to the Trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The Panel will address the three aspects of the Policy listed above.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the Trademark MAHINDRA by producing evidence of registrations granted by the Registrar of Trademarks. The Trademark MAHINDRA has become associated by the general public with the Complainant. The Complainant has also domain name registrations incorporating the Trademark.
The Respondent has registered the disputed domain name <mahindracarsindia.com> wholly incorporating the Trademark MAHINDRA of the Complainant, which the Panel finds is sufficient to establish confusing similarity for the purpose of the Policy.
The additional words "cars" and "India" succeeding the Trademark MAHINDRA in the disputed domain name <mahindracarsindia.com> is merely generic and does not avoid a finding of confusing similarity of the disputed domain name with the Trademark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words.1 Furthermore, it is established that the Top Level Domain is typically not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between the Complainant's trademark and the disputed domain name.2
A trademark registered with the Registrar of Trademarks is prima facie evidence of trademark rights for the purposes of the Policy.3 Internet users may be confused about the association or affiliation of the disputed domain name with the Complainant.
The Panel finds that the disputed domain name <mahindracarsindia.com> is confusingly similar to the Trademark MAHINDRA of the Complainant.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.4 The Complainant has adopted the name and also registered the Trademark MAHINDRA. The Complainant has been using the Trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the Trademark MAHINDRA. The Panel finds that the Complainant has made out a prima facie case.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent has not filed a response to rebut the Complainant's prima facie case and the Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name <mahindracarsindia.com> as per paragraph 4(c) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <mahindracarsindia.com>.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
"Evidence of Registration and Use in Bad Faith. 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Respondent has registered the disputed domain name incorporating the Trademark of the Complainant and further the Respondent is operating a website containing supposed news articles and advertisements at the disputed domain name. The Complainant has not granted the Respondent permission or a license of any kind to use its Trademark MAHINDRA. Such unauthorized use of the Trademark MAHINDRA by the Respondent suggests opportunistic bad faith. The case is squarely covered by paragraph 4(b)(iv) of the Policy. The Respondent's true purpose in registering the disputed domain name <mahindracarsindia.com> which incorporates the Trademarks MAHINDRA of the Complainant is, in this Panel's view, to capitalize on the reputation of the Trademark MAHINDRA by diverting Internet users seeking the Complainant's website(s) to the Respondent's own website.
In view of these facts, the Panel finds that the Respondent by using the disputed domain name <mahindracarsindia.com> has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation of its website which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name <mahindracarsindia.com> has been registered and is being used by the Respondent in bad faith.
For 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, <mahindracarsindia.com>, be transferred to the Complainant.
Ashwinie Kumar Bansal
Date: December 26, 2016
1 See Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
2 See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phoenomedia AG V. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1.