The Complainant is Maharashtra Tourism Development Corporation Limited of Mumbai, India, represented by Cox and Kings (India) Limited, India.
The Respondent is Supinder Singh of Princeton, New Jersey, United States of America ("United States").
The disputed domain name <thedeccanodyssey.com> (the "Disputed Domain Name") is registered with Register.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 2, 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 April 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2015.
The Center appointed John Swinson as the sole panelist in this matter on May 4, 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 Complainant is the Maharashtra Tourism Development Corporation Limited, an Indian company established in 1975. The Complainant is 100 percent owned by the State Government of Maharashtra and is the "nodal agency for the promotion and development of tourism in Maharashtra."
The Complainant claims common law trade mark rights in MTDCDECCANODYSSEY.
The Respondent is Supinder Singh of the United States. As the Respondent did not file a Response, little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on January 4, 2004.
The Disputed Domain Name currently redirects to a website at the domain name <fakeadvisor.com>. This website promotes "FakeAdvisor: The Antivirus of Social Media" and has links to Facebook and Twitter. Companies are able to register for a free "FakeAdvisor Shield." Registration requires the provision of the following information: company type and name, administrator name, email address, country and website.
The Complainant's contentions are as follows.
The Deccan Odyssey is a luxury train. It was a joint initiative between the Minister of Railways, Government of India and the State Government of Maharashtra. The Complainant designed the name, logo and signage for the train. The Deccan Odyssey was flagged off on January 16, 2004.
The Complainant entered agreements with a number of private sales agents and allowed use of "The Deccan Odyssey" during the term of those agreements. All such sales agreements were terminated on October 1, 2014. The Complainant now has an exclusive 10 year agreement with Cox & Kings Ltd.
The Complainant has acquired goodwill and reputation in its business and in the name "MTDCDECCANODYSSEY". The term "MTDCDECCANODYSSEY" has acquired a secondary meaning as indicating the Complainant.
The Complainant has promotedThe Deccan Odyssey at tourism exhibitions, through publicity literature (e.g., brochures, DVDs, posters). The Complainant's website at "www.mtdcdeccanodyssey.com" was launched in November 2003 (the "Website").
The Disputed Domain Name is confusingly similar to "MTDCDECCANODYSSEY" and any name containing the expression "Deccan Odyssey."
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent has been using the Disputed Domain Name to redirect to a website at "www.travbuzz.com", which, among other things, facilitates the booking of luxury trains, including The Deccan Odyssey. The Disputed Domain Name is being used for commercial gain.
The Respondent has copied elements of the Website on the website at the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith.
The Respondent is cybersquatting. The Respondent intentionally and fraudulently chose the Disputed Domain Name to trade upon the reputation of the Complainant, its common law trade mark and its domain name.
Members of the public are led to believe that the Disputed Domain Name belongs to, or is in some way associated with, the Complainant.
Given the extensive promotion of the services offered under the MTDCDECCANODYSSEY mark, the Respondent must have been aware of the Complainant, the MTDCDECCANODYSSEY mark, the Complainant's domain name and the Website at the time the Respondent registered the Disputed Domain Name.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent's default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant has claimed common law trade mark rights in MTDCDECCANODYSSEY – and not in DECCAN ODYSSEY or THE DECCAN ODYSSEY per se. The purported trade mark is a combination of an acronym of the Complainant's name, Maharashtra Tourism Development Corporation (i.e., MTDC), and name of "The Deccan Odyssey" luxury train.
It is not the Panel's place to make the parties' arguments for them. The Panel does note, however, that it was also open to the Complainant to argue that it had common law rights in DECCAN ODYSSEY, which is used prominently and frequently on the Website. The arguments that the Complainant has advanced in relation to common law rights in MTDCDECCANODYSSEY can equally be applied to DECCAN ODYSSEY.
In order to successfully assert common law trade mark rights, the Complainant must show that the DECCAN ODYSSEY mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e., that the DECCAN ODYSSEY mark has acquired a "secondary meaning") (see e.g., Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529).
In its submissions, the Complainant directs the Panel to the Website, where the DECCAN ODYSSEY mark is displayed prominently and frequently. The Panel has reviewed the content of the Website and conducted independent research into the use of the DECCAN ODYSSEY mark (as it is entitled to pursuant to paragraph 10 of the Rules) and confirms the Complainant's assertion that the DECCAN ODYSSEY mark has been used by the Complainant since 2003. The Panel is satisfied that the Complainant has acquired the requisite common law trade mark rights for the purpose of the Policy.
The Disputed Domain Name is identical or confusingly similar to the DECCAN ODYSSEY mark. In this case, the word "the" at the beginning of the Disputed Domain Name and the generic Top-Level Domain ".com" at the end of the Disputed Domain Name are irrelevant in assessing confusing similarity under the Policy and thus can be ignored here.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has no connection with the Complainant.
- The Complainant has not given the Respondent permission to use the DECCAN ODYSSEY mark.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
- The website that the Disputed Domain Name currently resolves to appears to be commercial in nature. It advertises "FakeAdvisor: The Antivirus of Social Media" and encourages companies to provide certain information to register for a free "FakeAdvisor Shield." The Disputed Domain Name is not a dictionary or common word (it was coined by the Complainant) and is not being used in a descriptive sense (i.e.,to describe the antivirus service available on the website). Accordingly, the Panel infers that the Disputed Domain Name is being used to misleadingly divert consumers. This is not a fair use of the DECCAN ODYSSEY mark, nor does it constitute a bona fide offering of goods or services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on January 4, 2004, after the launch of the Complainant's Website (in November 2003) and just two weeks before The Deccan Odyssey's first journey. At this time, the Complainant would have had some common law trade mark rights in the DECCAN ODYSSEY mark. There would have been publicity surrounding The Deccan Odyssey's maiden journey. It is highly unlikely that the Respondent was unaware of the DECCAN ODYSSEY mark when it registered the Disputed Domain Name. The Panel infers that the Respondent predicted the luxury train would be popular and opportunistically registered the Disputed Domain Name for future gain (to be generated through "click-through revenue" arising from customer confusion). The Respondent could have provided evidence to rebut this conclusion, but failed to do so (see e.g., Tectonic Digital Group v. Peter Brabeck, WIPO Case No. D2014-2146).
The Respondent has registered the Disputed Domain Name and used it to direct users to (a) firstly, a travel booking website which facilitated the booking of luxury trains and provided links to the Complainant's competitors, and (b) currently, a website for social media antivirus software. In the former instance, it can be reasonably inferred that the Respondent was profiting from "click-through revenue". Currently, as discussed above, the Respondent is using the Disputed Domain Name to misleadingly divert consumers to an unrelated product that appears to have no connection with "The Deccan Odyssey". In light of the above, the Panel is of the opinion that the Respondent has used, and is using, the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the DECCAN ODYSSEY mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website (paragraph 4(b)(iv) of the Policy).
The Panel finds that the Complainant has succeeded on the third element of the Policy.
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, <thedeccanodyssey.com>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 8, 2015