WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eicher Motors Limited and Eicher Goodearth Private Limited v. Perfect Privacy LLC / Tim Robertson
Case No. D2017-1434
1. The Parties
The Complainants are Eicher Motors Limited and Eicher Goodearth Private Limited of New Delhi, India, represented by Singh & Singh Advocates, India.
The Respondent is Perfect Privacy LLC of Jacksonville, Florida, United States of America ("USA" or "US") / Tim Robertson of Poole, Worcestershire, United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Name and Registrar
The disputed domain name <eicherworld.com> (the "Domain Name") is registered with eNom663, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on August 22, 2017.
The Center verified that the Complaint together with the amended 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 August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 18, 2017. 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 Eicher Goodearth Private Limited is a limited company organized in 2007 under the law of India and headquartered in New Delhi, India. It is the promoter company for the Complainant Eicher Motors Limited, which was initially registered as an Indian limited company in 1982 and is the flagship company of the Eicher Group, with shares traded on the Bombay and National Stock Exchanges in India. The Eicher Group started producing India's first agricultural tractors in the 1950s and now manufactures motorcycles, trucks, and buses, with a new US joint venture set to produce four-wheel personal vehicles. The Complainants report annual revenues exceeding USD 1.4 billion, with exports to 50 countries, including the UK and US. The Complainant Eicher Motors Limited operates a website at "www.eichermotors.in".
The Complainant Eicher Goodearth Private Limited holds numerous registered trademarks in India and more than a dozen other countries (not including the UK or US). The marks are used by the Complainant Eicher Motors Limited and other Eicher Group companies, and they are licensed to joint ventures. The Complainants' Indian trademark registrations include numbers 524503 (registered on January 1, 1953) and 539335 (registered on January 11, 1990) for EICHER as a standard-character mark. Because of their common ownership, business interests, and trademark use, the Complainants are joined in this proceeding.
According to the Registrar, the Domain Name was created on June 20, 2016 and initially registered in the name of an US domain privacy service. However, after notice of the current UDRP proceeding, the Registrar identified the registrant as Tim Robertson, an individual residing in the UK, who does not name a registrant organization (and who listed an apparently invalid postal address and an email address to a governmental ombudsman's office). As the domain privacy service has expressed no interest in the Domain Name, the Decision will hereafter refer to Tim Robertson as the "Respondent". The Respondent has not replied to communications from the Center or submitted a Response in this proceeding.
The Domain Name resolves to a website headed "Eicher World" with the tag line, "Driving Services for Everyone". It displays some third-party advertising in the left frame relevant to motoring, but the website is not an advertising portal. Rather, the Respondent's website publishes information about the services and fees of the DVLA, the UK Driver and Vehicle Licensing Agency. The "About Us" page does not say who sponsors or produces the website and announces simply that, "Our main aim is to provide you information regarding the DVLA." The website includes a single blog post authored by "John Chris," and the "Contact Us" page does not identify the website operator or anyone named "Eicher". The website does not advertise driver training lessons, although it offers some sample questions from the UK driver licensing examination. Clicking through those, however, takes the reader to a Facebook page linked to a website, "www.driving‑test‑success.com", which sells practice tests and videos and publishes automotive advertising and a searchable directory of certified UK driving instructors.
5. Parties' Contentions
The Complainants assert that the Domain Name is identical to their "inherently distinctive" and renowned EICHER trademark, and that the Respondent has no evident rights or legitimate interests in the Domain Name. The Complainants argue that the Domain Name was registered and used in bad faith, to misdirect Internet users for commercial gain and possibly for unlawful or immoral purposes, as the Respondent has obscured its identity and motivations in both the registration and the associated website.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a straightforward comparison between the complainant's trademark and the disputed domain name", which often involves a "side-by-side comparison of the domain name and the textual components of the relevant trademark". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
The Domain Name incorporates the EICHER mark in its entirety, adding the dictionary word "world". This does not avoid confusion, particularly given the international nature of the Complainants' business. The Panel concludes that the Domain Name is confusingly similar to the Complainants' mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 3.0, section 2.1.
Here, the Domain Name incorporates the Complainants' mark in its entirety. The mark is not a dictionary word, and the Respondent's website does not have content evidently related to any individual, business, or product named "Eicher". The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name. The Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following (in which "you" refers to the registrant of the domain name):
"(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 Domain Name corresponds exactly to a distinctive mark, not a generic word or phrase, and it is used for a website that is informational but that also links Internet users to commercial sites as described above under section 4. The Panel finds that it is more likely than not that the Respondent had actual knowledge of the Complainants and their mark, given that the Complainants have a substantial export and joint venture business in Europe and the UK, particularly in motorcycles. There is also a large Indian population in the UK, many of whom are presumably familiar with the EICHER mark and at least some of whom are presumably interested in UK driver and vehicle licensing. Otherwise, there is no apparent reason for the Respondent to select the Domain Name, as it has no evident connection to the Respondent's name or the subject of the Respondent's website :DVLA" and "Driving Services for Everyone", driver and vehicle licensing, and the linked commercial applications for driver training services and related automobile advertising. This fits the example of intentional misdirection for commercial gain given in the Policy, paragraph 4(b)(iv).
The Respondent has not offered an alternative explanation to rebut this reasonable inference of bad faith, and the Respondent's conduct tends to support that inference: a privacy registration including an invalid postal address, a website lacking information about the website operator, a failure to respond to trademark objections and to the Complaint in this proceeding.
On the available record, the Panel concludes that the third element of the Policy has been established.
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 <eicherworld.com> be transferred to the Complainant Eicher Goodearth Private Limited, the holder of the Complainants' trademark registrations.
W. Scott Blackmer
Date: September 22, 2017