WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd.

Case No. D2010-2107

1. The Parties

The Complainant is Royale Indian Rail Tours Limited of New Delhi, India, and is internally represented.

The Respondent is Divino Indian Memoirz Tours Pvt.Ltd. of Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <maharaja-express.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2010. On December 7, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 8, 2010, GoDaddy.com, Inc. 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 December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 17, 2011. 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, Royale Indian Rail Tours Limited, is an Indian joint venture company between Indian Railways Catering and Tourism Corporation, a Government of India enterprise, and Cox and Kings (India) Limited, a private travel business. The Complainant is in the business of operating luxury trains in India that caters to high-end global clients. It uses the trademark MAHARAJAS’ EXPRESS for its luxury train. On September 23, 2009 the Complainant filed Indian trademark applications for its MAHARAJAS’ EXPRESS logo under several classes. The Complainant has registered the domain name <maharajasexpress.com> and three other domain names on February 27, 2009.

The Respondent registered the disputed domain name <maharaja-express.net> on January 27, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant states that its super luxury train Maharajas’ Express provides its passengers royal treatmentof a maharaja (Indian word for mighty king) and also provides its passengers a memorable Indian experience to cherish. The Complainant asserts that the high standard of luxury and comfort of its services are not comparable to any other train.

The Complainant states that it adopted the trademark MAHARAJAS’ EXPRESS, in February 2009, after doing extensive research to determine that the term has not been previously used for any other train. It publicly launched the train in the second week of March 2009 at the Berlin Internationale Tourismus Borse (ITB) where it started the marketing and booking initiatives and launched its website “www.rirtl.com”. The Complainant states the launch of its train was well publicized in various countries and its publicity expenditure was in excess of USD 500,000. The Complainant therefore claims exclusive rights in the MAHARAJAS’ EXPRESS trademark and argues that the disputed domain name is identical or confusingly similar to the mark and the Complainant’s domain name <maharajasexpress.com>.

The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant believes that the Respondent has not registered any trademark or done any marketing under the name “Maharajas’ Express” or any similar name. The Respondent’s website at the disputed domain name markets five different trains, and these are “Maharajas’ Express”, “Palace on Wheels”, “Deccan Odyssey”, “Royal Rajasthan on Wheels” and “The Golden Chariot”. The Respondent’s web page has a link to “www.indianmemoirz.com”, and clicking on the link takes Internet users to the homepage of the Respondent Divino Indian Memoirz Tours Pvt.Ltd., a travel company offering discounted tours. The Complainant argues that from the Respondent’s website, no legitimate interests in the disputed domain name can be garnered in favor of the Respondent.

The Complainant contends the disputed domain name redirects the Complainant’s potential customers to the Respondent‘s website where other trains are also promoted. The others trains on the Respondent’s website also has a reference to royalty, regal or luxury, but the Complainant states its train is far superior to the other trains. The Complainant states Internet users looking for the Complainant’s website are likely to be misled by the disputed domain name and the Respondent’s website. Further, as the Respondent’s website promotes other trains Internet users are likely to associate the other trains with the Complainant. The disputed domain name is therefore likely to disrupt the Complainant’s business, which is recognized as bad faith registration and use under paragraph 4(b)(iii) of the Policy. The Respondent has deliberately registered a domain name which is confusingly similar to the Complainant’s train name and different only by the removal of “s” and the addition of a hyphen, and it shows the Respondent’s awareness of the Complainant’s train. The Complainant argues that such a deceptively similar domain name registration comes within the meaning of paragraph 4(b)(iv) of the Policy, and the disputed domain name has been registered in bad faith and is being used in bad faith. The Complainant therefore requests for the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).

(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.

The Complainant does not presently have a registered trademark for MAHARAJAS’ EXPRESS, but has submitted documents that indicate it has unregistered trademark rights in MAHARAJAS’ EXPRESS . The “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, on the question of recognizing common law rights and unregistered rights of a complainant’s mark, mentions that in order to establish such unregistered trademark rights in a term a complainant must show that the term has become a distinct identifier associated with the complainant or its goods and services. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” paragraph 1.7.

The material submitted by the Complainant includes extensive media coverage for its luxury train that clearly identifies the Complainant as the provider of the services, and documents showing promotion and advertisements for the MAHARAJAS’ EXPRESS mark by the Complainant. These documents establish that the Complainant has expended considerable resources in promoting its mark in different jurisdictions and has also filed a statement of promotional expenses for its mark.

In the Panel’s assessment, the material provided by the Complainant is sufficient to demonstrate that it has unregistered trademark rights in the term MAHARAJAS’ EXPRESS. In addition, the Complainant has provided its Indian trademark application numbers for the device mark filed on September 23, 2009, which contain the words “Maharajas’ Express”.

The Complainant has argued that removing the letter “s” and adding a hyphen in the disputed domain name does not lessen the confusing similarity with its mark. In several prior UDRP cases it was found that removing the letter “s” from a trademark does not significantly impact the finding of confusing similarity. For instance In the case Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com, WIPO Case No. D2003-1028, it was found that deleting the letter “s” from the complainant’s STAPLES mark did not change the confusing similarity of the domain name with the mark in question. Similarly, the addition of a hyphen between the two words of a trademark is insufficient to avoid confusing similarity. See Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683 (<credit-agricole.info>). In the present case, the Panel finds that deleting the letter “s” and adding a hyphen between the two words “maharaja” and “express” in the disputed domain name are insignificant modifications that do not reduce the confusing similarity between the disputed domain name and the Complainant’s mark.

For the reasons discussed the Panel finds the Complainant has satisfied the first requirement under paragraph 4 of the Policy, that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

The disputed domain name contains the words “Maharaja” and “express” which are descriptive dictionary words. For the Panel to make an assessment of the rights of the parties, it is necessary for the party claiming the right to demonstrate its rights in these proceedings. The Complainant has established in these proceedings that it has rights in the combination of the words “Maharajas’ Express” as a distinct identifier associated with its goods and services. Under paragraph 4(a)(ii) and paragraph 4(c) of the Policy the Respondent can demonstrate any rights or legitimate interests in the disputed domain name. The Respondent in the present case has not participated in these proceedings or filed any response to the Complaint to refute the Complainant’s averments of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

The Complainant has argued that the Respondent has no rights or legitimate interests, for the reasons that the Respondent apparently has no trademark rights rights in the term “Maharajas’ Express” or in any similar term. The Panel finds from the record that the Respondent is not known by the disputed domain name and the Respondent is not authorized to use the Complainant’s trademark. It has been established in these proceedings that the Complainant’s trademark is widely advertised, and the Respondent who is not connected with the Complainant nonetheless uses the Complainant’s trademark in the disputed domain name. In the Panel’s view, the use of the Complainant’s trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. In the Panel’s view, a domain name that gives a false impression to users does not confer rights or legitimate interests. This view has been upheld in several UDRP decisions. See for instance Pfizer Inc. v. Alex Schreiner / Schreiner & Co., WIPO Case No. D2004-0731.

For the reasons discussed the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent. The Complaint has therefore satisfied the second element of paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.

The Complainant has asserted that the Respondent attempts to target the Complainant’s potential customers by using a domain name that is a typo squatting variant of the Complainant’s trademark. Users looking for the Complainant’s train and for the online details for the Maharajas’ Express train are likely to be diverted and mislead by the disputed domain name and the Respondent’s website. The Panel finds on the basis of the screen shots of the Respondent’s website at the disputed domain name, that the Respondent’s website promotes others luxury trains in India. The use of a trademark of a complainant in a domain name to attract users to the respondent’s website that promotes goods or services which compete with the complainant’s products and services, or diverts users to competitors of the complainant is recognized as evidence of bad faith use under the Policy. See Viacom International Inc. v. Transure Enterprise Ltd. WIPO Case No. D2009-1616.

The Complainant has argued that the Respondent has registered the disputed domain name in bad faith to mislead the public and to disrupt the Complainant’s business. In the Panel’s view, the fact that the Respondent’s website is a travel website that mentions the names of many other luxury trains in India indicates that the Respondent must have been aware of the Complainant’s luxury train. Particularly as there has been the extensive publicity for the Complainant’s train, it can be inferred from the Respondent’s website which is dedicated to luxury trains in India that the Respondent had the Complainant in mind while registering the disputed domain name. In the absence of any response from the Respondent, and the unchallenged submissions of the Complainant it is the Panel’s objective assessment, that the Respondent has registered the disputed domain name to target the Complainant’s trademark and the train services being offered by the Complainant. The use of the trademark in the disputed domain name under such circumstances is found to be bad faith registration and use under paragraphs 4(a)(iii) and 4(b)(iii) of the Policy (registration of a domain name to disrupt the business of a competitor).

The Panel finds the Respondent has intentionally chosen a domain name that is confusingly similar to the Complainant’s trademark and as discussed in the previous section has no rights or legitimate rights in the domain name. Given these circumstances, it can be inferred that the Respondent’s registration and use of the disputed domain name was with the intention of attracting Internet users for commercial gain, due to the likelihood of confusion with the Complainant’s trademark. Such registration and use has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy, as it intentionally attracts Internet users to the Respondent’s website based on a false affiliation with the Complainant. See for instance, Turkcell Iletisim Hizmetleri A.S. v. Serdar Irmak, WIPO Case No. D2010-1911. The Panel finds the Respondent’s registration comes within the meaning of paragraph 4(b)(iv) of the Policy for intentionally attempting to attract for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of the Respondent’s website.

For the reasons discussed, the facts and circumstances in the present case indicate that the disputed domain name was registered and is being used in bad faith. The Panel finds the Complainant has therefore successfully established the third element under paragraph 4 of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maharaja-express.net> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Dated: January 31, 2011