The Complainant is The Maharashtra Tourism Development Corporation Limited of Mumbai, India, represented by Cox and Kings Limited, India.
The Respondent is Rahul Sharma, Indian Holiday Pvt. Ltd. of New Delhi, India, self-represented.
The disputed domain name <deccan-odyssey-india.com> is registered with OnlineNic, Inc. d/b/a China-Channel. com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2015. On May 15, 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 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2015. The Response was filed with the Center on June 11, 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 Complainant sent its reply to the Procedural Order on July 2, 2015.
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 travel agent and was an agent of the Complainant to promote and sell bookings for the Complainant's train "Deccan Odyssey". The Respondent registered the disputed domain name <deccan-odyssey-india.com> on October 29, 2003, 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.
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 Complaninant. 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 agreements. 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 that 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 Odyssey" 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 agreements have been terminated but continue 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 cyber-squatter, 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 SC3540, the Supreme Court of India granted an 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 disputes the Complainant's ownership of the DECCAN ODYSSEY and DECCAN ODYSSEY INDIA.COM trademarksand states the Complainant has not fulfilled the first criteria under paragraph 4(a)(i) of the Policy. The Respondent states the disputed domain name <deccan-odyssey-india. com> is not identical to the Complainant's domain name <mtdcdeccanodyssey.com>.
The Respondent states that he uses his registered logo IHPL in the header of his website to diffrentiate his services and has placed a disclaimer in the footer that states it is not the official website of Complainant. The Respondent alleges that he has invested money in developing, running, and marketing his domain name and claims he has done more than the Complainant for online promotion and creating awareness about "Deccan Odyssey". The Respondent says he has attended several travel marts, fairs and exhibitions to promote his services. The Respondent further adds that the Complainant does not use its own website at <mtdcdeccanodyssey.com>, but uses the site of Cox and Kings, "www.coxandkings.co.uk/deccanodyssey" to promote "Deccan Odyssey".
The Respondent refutes the Complainant's claims that the Complainant's trademark MTDDECCANODYSSEY and website "www.mtdcdeccanodessy.com" are well reputed. The Respondent has filed documents to disprove the Complainant's contentions. Such documents include the search engine reports and print outs showing there is negligible traffic to "www.mtdcdeccanodyssey.com". Respondent further asserts that no evidence has been provided by the Complainant of its worldwide consumers to prove its claim of fame.
The Respondent states that it has used the disputed domain name only to promote "Deccan Odyssey" and not to sell any other product or service that could dilute the brand of the Complainant. The Respondent argues that the Complainant's statement that it recently came across the Respondent's site is incorrect, as the disputed domain name has been at the top of search engine rankings. The Respondent denies the Complainant's allegation that he is selling various packages on numerous other luxury trains along with the "Deccan Odyssey", as no evidence has been submitted by the Complainant to prove this. The Respondent has filed screenshots from "archive.org" to disprove the Complainant's contentions.
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 to that belonging to the Complainant.
The Complainant sent an unsolicited email submission on July 15, 2015. The Panel accepts the solicited supplemental submission of the Complainant, and in its discretion refused to accept the COmplaiannt's unsolicited submission. See WIPO Overview of WIPO Panel Views of Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2.
The Panel finds at times that the 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 now proceeds to the merits of the case.
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.
The first requirement under paragraph 4(a) of the Policy stipulates that the Complainant must 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 case, Maharastra Tourism Development Corporation Limited v. Supinder Singh, WIPO Case No. D2015-0576, where the Complainant's rights in the mark were 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 distinct identifiers of source of the Complainant's luxury train services. The disputed domain name contains the Complainant's trademark DECCAN ODYSSEY in its entirety and the term "India". The geographic term "India" does not lessen the confusing similarity, as the trademark is the main component of the disputed domain name.
The Respondent has argued that the Complainant has no rights in the mark
DECCAN-ODYSSEY-INDIA.COM. The Respondent has also claimed that the disputed domain name is different from the Complainant's domain name.
The Panel finds these arguments by the Respondent to be untenable, as the Panel finds that the Complainant has common law unregistered rights in the DECCAN ODYSSEY mark by virtue of its use in commerce (as discussed above).
The Panel finds the disputed domain name is confusingly similar to the Complainant's mark, in which it has rights. The Complainant has satisfied the first requirement under paragraph 4(a) of the Policy.
The second element of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or 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.
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 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. D2001-0373 and 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 a complainant by a 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 limited to its in the capacity as an authorized distributor or a licensee, the respondent was found to have no rights to continue 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. It was found that due to insufficient evidence, the issue of use of a domain name after termination of the relationship between the parties could to 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". 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.
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.
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 view expresses by 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 possible 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 Complainant itself admits that the Respondent was a sales agent for the Complainant. When invited by the Panel to supply the specific details fo 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 that 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.
Harini Narayanswamy
Sole Panelist
Date: July 23, 2015