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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MACH S.a.r.l. and MACH India Pvt Ltd v. Mr. Rajendra Kalmegh

Case No. D2008-0727

1. The Parties

The Complainant is MACH S.a.r.l. and its subsidiary MACH India Pvt. Ltd., of Bangalore, India, represented by DePenning & DePenning, India.

The Respondent is Mr. Rajendra Kalmegh, of Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <machsms.com> is registered with M/s Directi Internet Solutions Pvt. Limited d/b/a Public Domain Registry. com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2008. On May 9, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On May 16, 2008, Directi Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2008.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 24, 2008. 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 is a global provider of mobile telecommunication related services. The first Complainant, Multinational Automated Clearing House S.a.r.l (“MACH S.a.r.l”) is a Luxembourg based company. The second Complainant, Multinational Automated Clearing House (“MACH India”) Private Limited of Bangalore India, is a wholly owned subsidiary of MACH S.a.r.l. The Complainants are collectively referred to in these proceedings as “The Complainant”.

The Respondent is Mr. Rajendra Kalmegh of Nagpur Maharashtra India. The record shows the domain name <machsms.com> was created on July 26, 2007 and that the present registrant is Mr. Rajendra Kalmegh.

The Complainant is the proprietor of the trademark MACH. A list of the trademark applications and registrations for the Complainant’s MACH mark are shown here.

Trademark	Country	Application/Registration number	Class
MACH	UAE	67165	35
MACH	UAE	55404	36
MACH	UAE	55662	42
MACH	Brazil	827201311	09
MACH	Brazil	827201320	35
MACH	Brazil	827235151	38
MACH	Brazil	827201338	42
MACH	China	IR 858102	09, 35, 38, 42
MACH	Hong Kong	30096832	09, 35, 36, 38, 42
MACH	India	1336606	09,35,36, 38 42

5. Parties’ Contentions

A. Complainant

The Complainant states it is in the business of assisting telecommunication companies the world over to secure and develop existing and new revenue streams and is a provider of global clearing and settlement solutions for mobile based transactions. The Complainant specializes in outsourced roaming, billing and clearing solutions, together with Interconnect and WLAN. The Complainant claims that its global sales turnover under its trademark MACH is 65 million Euros. A certified copy of its sales turnover under the mark since the year 1998 has been furnished by the Complainant as evidence.

Originally started in Luxembourg as the Millicom Group, the first Complainant MACH S.a.r.l was founded in the year 1989. MACH S.a.r.l was born out of a merger between MACH S.a.r.l and Dan Net in 2004. It was acquired by the leading private equity firm, Warburg Pincus in the year 2005. The second Complainant is MACH India Pvt. Limited, located in Bangalore, India and was incorporated in 1997 as the wholly owned subsidiary of the first Complainant.

The Complainant claims it has approximately 700 employees with offices located in eleven countries around the world which include Brazil, Denmark, India, Germany, Luxembourg, Russian Federation, Singapore, Hong Kong, SAR of China, United Arab Emirates (“UAE”), United Kingdom and United States of America The Complainant states that it combines its global expertise and operations with local knowledge in each region.

In North America the Complainant is known as “MACH Cibernet”, due to the merger of Cibernet with MACH in 2007. The Complainant states that it has two other sister organizations under the MACH umbrella, these are End2End and Progrator /Gatetrade. The Complainant claims that its worldwide client base is approximately 600 clients.

The MACH mark, according to the Complainant, has been widely advertised in various media, including the Internet. The Complainant also refers to its extensively read publications, including its sales collateral (brochures, fact sheets, and case studies), product campaigns, events, public relations, press promotion and client news letters. The Complainant has filed copies of its quarterly newsletter, “The MACH Interact”, which according to the Complainant, currently has 3,485 subscribers. The Complainant states that its complete suite of MACH publications can be viewed by sending an email to “spa@mach.com”.

The Complainant states its trademark MACH is world renowned and identified with the Complainant and its group of companies. The term “mach” is the prominent aspect of the Complainant’s corporate name, trading style, trademarks, service marks and domain names. The first Complainant is the owner the intellectual property of the world wide trademark applications and registrations. The first Complainant is also the proprietor and registrant of the domain names <mach.com>, <machcibernet.com> and <mach-cibernet.com>.

The Complainant alleges that its MACH mark is a strong identifier for its clients who depend on its distinct identity for assured quality of goods and service. It has adopted a “master brand” strategy to reflect this, as all the Complainant’s solutions and services are named with the prefix MACH, such as MACH SMS, MACH Fraud Protection.

According to the Complainant, its website “www.mach.com”, receives a large volume of visitors. During the period February 2007 – February 2008 the Complainant’s website received 366,273 visitors and 13,797,385 hits. The Complainant further states that the web traffic for a standard month, January 2008, was a total of 37,212 visits and the total number of hits was 1,266,380. The majority of visitors, according to the Complainant, reach its website by typing in the direct address. Others use a search engine by keying in search phrases comprising different combinations of MACH.

The Complainant emphasizes that it has spent considerable amounts promoting its MACH brand worldwide. In the year 2007, a budget of 505,831 Euros was committed by the Complainant for promoting the MACH brand name and an amount of 787,383 Euros has been allocated for its 2008 brand activities. The Complainant claims to have participated in various events since 1989, including the GSMA Global conferences to promote its brand and services and has received world wide acclaim and response. The first Complainant has generated substantial reputation and goodwill in the name of MACH in India.

The Complainant provides details of its MACH SMS Solution which it had launched on June 12, 2007 in Luxembourg as a pioneering solution to provide operators access to multiple global networks. MACH SMS, according to the Complainant, is a one-stop-shop solution which allows clients to outsource their whole inter-operator SMS business and enlarge their international SMS coverage. The MACH SMS solution consists of two core components: SMS Hub and SMS clearing. The Complainant lists the features of its MACH SMS Solution, which are: (i) An overall solution for bilateral messaging, security and clearing; (ii) Increases messaging coverage and revenues, through just one connection; (iii) Quick to deploy, giving rapid access to many potential inter-working partners; (iv) Fewer commercial and technical resources required; (v) High class reliable carrier grade service.

The Complainant states that it is the first to conceive, adopt, use and promote the MACH mark in respect of its goods and services. The Complainant is also the first to conceive, adopt, use and promote MACH SMS. On account of extensive usage of the MACH mark, the said mark has become identified solely and exclusively only with the Complainant and none other. Further, the Complainant claims its MACH SMS is a pioneering state of the art solution which has gained a considerable customer base and response which is identified, associated and recognized only with the Complainant.

The adoption and use of the mark MACH, MACH CIBERNET, or MACH SMS by others would, according to the Complainant, amount to not only dilution of the Complainant’s rights over its distinctive marks but would also result in confusion and deception to the public. Such unauthorized usage of the Complainant’s marks by others would also amount to infringement and passing off, which are actionable offences under the law.

The Complainant requests for cancellation of the domain name<machsms.com> for the following reasons:

Domain Name is identical or confusingly similar to its mark

Firstly, the Complainant states it is the owner of the MACH trademark for which it has several registrations and pending applications in numerous jurisdictions including MACH DAN NET in Denmark, and MACH in Brazil, Denmark, European Union, Singapore, UAE and USA. Secondly, the Complainant also has the trademark registration for MACH in India, which is the Respondent’s jurisdiction. Thirdly, the Complainant is the registrant and proprietor of the following domain names <mach.com>, <machcibernet.com>, <mach-cibernet.com>.

Fourthly, the Complainant argues that:

(a) the Respondent’s domain name <wwwmachsms.com> is identical, closely resembling and confusingly similar to the Complainant’s mark MACH and its domain names <mach.com>, < machcibernet.com> and <mach-cibernet.com> in which the Complainant has prior rights.

(b) The Respondent’s domain name is a combination of the Complainant’s corporate name, prior and registered mark and its pioneering solution “MACH SMS”. The use of the domain name by the Respondent would confuse the public to thinking that the domain name is associated with the Complainant.

(c) The Respondent’s domain name is not distinctive but is phonetically, visually and conceptually similar to that of the Complainant.

(e) The Respondent’s domain name is identical or similar with earlier existing marks of the Complainant and is also similar, common, or overlapping field of activity. The presence of such a domain name would cause confusion to the public as there is nothing to indicate that the domain name belongs to the Respondent.

(f) The Respondent’s domain name takes unfair advantage of the distinctive character of the Complainant’s prior registered marks, corporate name and domain names. Such unauthorized use is likely to be prevented by the courts as deceptive use of Complainant’s mark as it will be considered infringement or passing off.

(h) The Respondent has created and registered the disputed domain name subsequent to the Complainant’s conception, adoption and usage of the said marks and domain names and subsequent to launch of MACH SMS by the Complainant.

(i) Respondent is not a bona fide or honest adopter of the disputed domain name and has registered the domain name to derive unfair benefit from the Complainant’s repute and good will.

Lastly, the Complainant states that its corporate name, trademark and domain names are highly distinctive and the use of the domain name by the Respondent is bound to create confusion and mislead potential customers.

Respondent has no rights or legitimate interests

The Complainant avers that the timing of the domain name registration is relevant as the domain name was registered on July 26, 2007. This is much after the Complainant had established its rights in the name MACH, which it has used since its inception in 1989. Secondly, the domain name was also registered after MACH SMS was launched by the Complainant in Luxembourg.

The Complainant further states that the Respondent uses the website for purposes that are similar to that of the Complainant. The Complainant further alleges that the information given on the Respondent’s website is incorrect. The Respondent’s website, according to the Complainant, mentions the Respondent’s name as M /s Mach Technologies Pvt. Limited, located in STPI Nagpur, India. Enquires made by Complainant, have revealed that no such entity exists.

The Complainant believes that the Respondent is not known by the name MACH but has registered the domain name to take advantage of the Complainant’s substantial reputation and prominent Internet presence to confuse and divert Internet users. The Complainant fears tarnishment of the reputation and goodwill of its mark, while the Respondent will gain to the detriment of the Complainant.

Domain Name was registered and used in bad faith

The Complainant contends that the Respondent ought to have been aware of the Complainant’s mark when he registered the disputed domain name for the reasons that the Complainant has a substantial presence and business and also that the Respondent is in a similar area of business as the Complainant. No license or consent to use the mark has been granted to the Respondent by the Complainant. Lastly, the registration of the domain name by the Respondent was done with an intention to defraud the public and is a deliberate attempt to dishonestly attract Internet users.

B. Respondent

The Respondent did not file a response to the Complainant’s contentions. However, the Respondent has sent a three line email to the Center, dated May 28, 2008, stating: Firstly, “that there is no such website hence no question of its cancellation”, secondly, “MACHSMS is a generic word and can be used” and thirdly, “numbers of website are working on this same name as MACH.”

The Center intimated the Respondent that a formal response could be filed by June 9, 2008. No formal response was filed by the Respondent within the specified time. In the absence of a formal response from the Respondent there is no evidence regarding the Respondent or any valid explanation for registering and using the domain name <machsms.com>.

6. Discussion and Findings

The Complainant is required to prove three essential elements under paragraph 4(a) of the Policy to obtain the remedy of cancellation of the disputed domain name. These are:

(i) The domain name registered by the Respondent 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 domain name; and

(iii) The domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is required, under paragraph 4(a)(i) of the Policy, to establish its rights in the mark and demonstrate that the disputed domain name is identical or confusingly similar to its mark.

The Complainant has demonstrated its ownership of the trademark MACH by providing evidence of its trademark registrations in several jurisdictions including India. Secondly, it has provided evidence of use of the mark as a strong business identifier in course of trade by showing its promotion, advertising, media coverage and publications. Finally, the Complainant has exhibited its sustained usage of the mark over an extended period. All these factors establish that the Complainant’s mark has acquired secondary meaning as a distinctive identifier of its goods and services.

The figures showing web traffic to the Complainant’s website demonstrate wide user awareness of the Complainant’s mark and its strong online presence. The disputed domain name consists of the Complainant’s mark MACH along with the well-known abbreviation for “short message service”: “sms”. The Complainant has stated that it has launched a solution called MACH SMS prior to the Respondent registering the domain name.

The Panel finds, under the present circumstances, the domain name in issue is confusingly similar to the Complainant’s mark for the reason that it has used the Complainant’s mark and a term connected to the Complainant’s business. It is well established that a domain name which uses the Complainant’s mark with a word or term connected with the business of the Complainant may be found confusingly similar. See for instance AT&T Corp. v. William Gromally, WIPO Case No.D2005-0758, where the domain name <attelepnone.com> was found confusingly similar to the ATT mark.

The Panel finds that the Complainant has established the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant, under paragraph 4(a)(ii), has to at least make out a prima facie case that the Respondent lacks rights and legitimate interests in the domain name.

If the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to demonstrate that any of the circumstances under paragraph 4(c) apply, then it can be concluded that the Respondent lacks rights or legitimate interests in the domain name. See 402 Shoes Inc .dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223.

In the present case, the Panel finds that the Complainant has made out a prima facie case, for the reasons that the Complainant is the prior owner of the MACH mark and has not authorized or licensed its use to the Respondent. Further, the Respondent here has failed to file a response and raise any circumstances under paragraph 4 (c) justifying the use of the mark in the domain name. The Complainant therefore, has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has to establish that the domain name is registered and used in bad faith under Paragraph 4(a)(iii).

The term “machsms” is neither a generic term nor a dictionary word. As noted by the Panel under the first ground discussed above, evidence provided by the Complainant clearly shows that the Complainant’s mark has acquired secondary meaning. Although the dictionary word “mach” refers to a measure of high speed, it may not be immediately apparent that it is descriptive of the Complainant’s business. The mark MACH is adopted by the Complainant as a trademark which is unique and ingenious, and is therefore a distinctive mark. These facts suggest that the Respondent may have known of the Complainant’s mark when he registered the disputed domain name. Further, the use of the abbreviation “sms” with the Complainant’s trademark indicates that the Respondent has knowingly targeted the Complainant’s mark and users who may be misled to believing it is sponsored by or affiliated with the Complainant.

It is reasonable to infer that the Respondent has tried to derive increased Internet traffic for commercial gain, by attracting and diverting Internet users based on the Complainant’s mark and Internet presence. The Policy recognizes such registrations as abusive registrations of domain names under paragraph 4(b)(iv). See Microsoft Corporation v. SysWeb Soft S.R.L and Martino Caeteno, WIPO Case No. D2003-0528.

The Complainant has successfully established that the domain name is registered and used in bad faith under Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the reasons discussed, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <machsms.com> be cancelled.

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Harini Narayanswamy
Sole Panelist

Dated: July 8, 2008