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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mahindra & Mahindra Limited v. Neoplanet Solutions
Case No. D2000–0248
1. The Parties
The Complainant is Mahindra & Mahindra Limited of Gateway Building, Apollo Bunder, Mumbai 40001, Maharashtra, India, represented by Mr. Shyam Sunder Iyer of Tas & Co. of 7/85 Bhaveshwar Dham, Rafi Ahmed Kidwai Road, Wadala, Mumbai 400031, India. The Respondent is Neoplanet Solutions of 557 West Golf Road, Arlington Heights, IL 60005, USA, represented by Ajay Kumar, also of 557 West Golf Road.
2. The Domain Name and Registrar
The domain name in issue is "mahindra.com", the Registrar of which is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received on April 1, 2000, an e-mail and on April 5, 2000, a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 17, 2000.
On April 7, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On April 14, 2000, Network Solutions transmitted via e-mail to the Center Network Solutions’ Verification Response, confirming that the registrant is Neoplanet Solutions of 557 West Golf Road, Arlington Heights, IL 60005, USA, and that the Administrative, Technical and Zone Contacts are Ajay Sunkara at the same address.
Also on April 7, 2000, the Center received an e-mail from Ajay Sunkara, which is referred to below. No formal Response has been received.
On April 18, 2000, the attorneys for the Complainant drew the attention of the Center to a page that had appeared on that day on the Respondent’s web site, after service upon it of the Complaint.
On May 24, 2000, the Complainant’s attorneys sent to the Center a copy of this Panelist’s decision dated May 18, 2000, in Case D2000-0247 concerning the domain names "mahindra.org" and mahindra.net" and stated that the Complainant relies on that decision.
4. Factual Background
The Trade Mark
The Complaint is based on the Trade Mark MAHINDRA, and specifically exhibits certified copies of the following registration certificates, all in the name of the Complainant:-
India Trade Mark No. 322911 – registered 10/02/1977_India Trade Mark No. 338997 – registered 27/07/1978_US Trade Mark No. 1,679,947 – registered 17/03/1992_US Trade Mark No. 2,255,311 – registered 22/06/1999_Community Trade Mark No. 492066 – registered 31/08/1999
While the specific goods and classes covered by the registrations differ somewhat, they cover motor vehicles and in particular tractors.
In Case No. D2000-0247 the Complainant brought proceedings against Advansoft World Wide under the ICANN Dispute Resolution Policy in respect of the domain names ‘mahindra.org’ and ‘mahindra.net’ which appeared to have been registered originally in the name of Neoplanet Solutions in November, 1999 and subsequently transferred to Advansoft World Wide of the same address in March, 2000. As indicated above, on May 18, 2000, this Panelist decided that case in favor of the Complainant.
5. The Complaint
The grounds set out in the Complaint can be summarized as follows:
The Complainant is a well-known manufacturer and exporter of tractors and utility vehicles. Its Annual Report for the year 1998/9 reveals that in the latest year it sold 70,548 utility vehicles and 69,362 tractors. These sales are said to represent market shares of 57.5% and 27.2% respectively (presumably of the Indian market).
Apart from the Complainant itself, 35 Group Companies include "Mahindra" in their names.
By reason of the extensive use of the Trade Marks and the name Mahindra in the various Group Companies, the word MAHINDRA, at least in relation to motor vehicles, is associated exclusively with the Complainant.
The Complainant became aware of the existence of the domain name registration in issue at a date prior to December 13, 1999, on which date its attorneys wrote a letter of complaint to Neoplanet Solutions at 64-8-14 Raghavanagar, Patamala Lanka, Vijaywada, Andhra Pradesh 520010, India (the then address of the Respondent). No response was received, except that Neoplanet Solutions’ address was changed to 557 West Golf Road, Arlington Heights, IL 60005, USA. The Complainant believes this address was changed to avoid service of proceedings in India.
Prior to the attorneys’ letter of December 13, 1999, they had asked their associates in Vijaywada to approach Network Solutions informally to enquire about its registration of the domain name. The associates were (it is said) informed that Network Solutions was willing to transfer the domain name for the sum of Rs. 15,000 (about US $1,500), but Network Solutions "did not reproduce the demand in writing".
The Complainant’s attorney was aware of the existence of NeoPlanet Inc, an internet company based in Phoenix, Arizona, and on December 22, 1999, sent an e-mail to Mark Brooks of NeoPlanet Solutions Inc. Mark Brooks sent the following e-mail:
Subject: RE: NeoPlanet Inc._
From: "Mark Brooks"_
Date: Thu.23 Dec 1999 08:26:48-0700
Attached is just one of many letters sent trying to solicit funds for a domain the individual in question had registered. Understand that when he first contacted NeoPlanet Inc. back in April of 1999 he was asking $110 for the domain. As communications continued the price kept escalating until he finally asked $2,000 and judging by previous behavior, was probably going to keep raising the price without transferring the rights to NeoPlanet Inc.
Please keep me informed of any progress you have regarding stopping this individual from cyber-squatting.
The attachment to the above e-mail was as follows:
"From: ajay sunkara [firstname.lastname@example.org]
Sent: Monday, October 04, 1999 3.48AM
Subject: re: WWW.NEOPLANETonline.com_hi…mark…
iam willing to transfer the rights of the domain www.NEOPLANETonline.com for $2000/-. If you are interested in it … please check out the aggrement copy attached if you agree the aggrement,i shall sign it and post it to you then we can proceed as per rules in aggrement.
Please reply soon …
By their e-mail of April 18, 2000 the Complainant’s attorneys sought to rely as evidence of bad faith on the page they believed had that day been posted on the Respondent’s "mahindra.com" web site. The Panelist accepts what is in effect a supplementary submission on the simple grounds that (a) the page is material to this dispute and (b) the Complainant could not have relied on it sooner. The page in question reads as follows:-
"welcome to official web site of Dr. mahindra
Poverty is the barrier between the developing world and a developed world. Lets join hands to make this a developed world.…….golden words said by Dr. mahindra
This web site contains …
……….the information about Dr. mahindra, his fight against poverty, his hard work for women freedom. This site is being hosted by Neoplanet Solutions for public interest. The information in this internet web site has been provided to the best of our knowledge and Neoplanet Solutions dosenot guarentee about the accuracy information. Neoplanet solutions thanks Dr. Vamsi krishna and Dr. chowdary who are the other social reformers, who gave thier support for Dr. mahindra in this work for the poor."
6. The Response
As indicated above, there has been no formal Response in this case, and for this reason, the e-mail dated April 7, 2000, and addressed to the Center is of importance..It reads as follows:-
"From: "ajay kumar" email@example.com_
Date: Fri, Apr 7, 2000 7.13 PM_
Subject: Re: D2000-0248/Acknowledgment of Receipt of Complaint
this is to inform you regarding the dispute of the domain mahindra.com
my case number: D200-0248
previously a complaint was submitted to networksolutions inc. and internic inc. regarding the domain mahindra.com, by Shyam Sunder Lyer (the person who submitted this case). And the judjement was given infavour of me my Network Solution inc and Inernic inc. they said that i has complete rights on the domain mahindra.com and also said the case is CLOSED. So i request you consider the previous judgment given by Networksolution inc and Internic inc (internic is the registered service mark of U.S. department of commerce and is managed by Networksolutions inc) in this case also
thanking you for your kind consideration,
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-
· the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
· the Respondent has no rights or legitimate interests in respect of the domain name ; and
· the domain name has been registered and is being used in bad faith.
The e-mail from Ajay Kumar quoted in the previous paragraph is important because:
It clearly identifies Ajay Kumar with Neoplanet Solutions in that he refers to "my case number D200-0248".
It suggests that the Respondent relies on an alleged decision in its/Ajay Kumar’s favour given by Network Solutions. The Panelist does not understand this, since it is the Panelist’s understanding that prior to the institution of the ICANN Policy all that Network Solutions would decide was whether or not to put the domain name in dispute "on hold". If it had previously declined to take such action, that does not preclude the Complainant from taking action under the Policy.
So far as element (i) of paragraph 4(a) of the Policy is concerned, the Respondent’s domain name "mahindra.com" is identical to the trademark "MAHINDRA".
The Complainant submits that the Respondent has no rights or legitimate reason for adopting the word "mahindra" as a domain name. The page on the web site referred to in paragraph 5(7) above does not in the Panelist’s opinion indicate any serious interest in using the domain name. Given the undoubted reputation of the Complainant and its trade mark in India, the Panelist does not accept that the addition of a page to the web site after institution of these proceedings constitutes a right or legitimate interest in the domain name. Element (ii) is established.
The evidence of Mark Brooks of NeoPlanet Solutions referred to in paragraph 5(6) above in relation to Mr. Ajay Kumar’s negotiations over the domain name NEOPLANETonline.com provides powerful corroboration of the hearsay evidence that Mr. Kumar’s company, Neoplanet Solutions, offered to transfer the domain name in issue here for the sum of Rs. 15,000 (see paragraph 5(5) above).
The change of address of Neoplanet Solutions from one in India to one in the USA is also noted. Avoiding the jurisdiction of the Indian Courts seems a probable motive for this action.
In the light of the matters referred to in (4) and (5) of this paragraph, the Panelist concludes that the domain name "mahindra.com" was registered and is being used in bad faith.
In the light of the findings in paragraphs 7(2), 7(3) and 7(6) above, the Panelist concludes that:-
- the domain name "mahindra.com" is identical to the trademark "MAHINDRA" of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name "mahindra.com" be transferred to Mahindra & Mahindra.
Dated: June 2, 2000