On August 4, 2023, the WIPO Administrative Panel reviewed a complaint filed by MakeMyTrip (India) Private Limited ("MakeMyTrip") through the WIPO Arbitration and Mediation Center. The decision highlighted the consideration of gTLDs (generic top-level domains) in assessing confusing similarity, depending on individual cases. In this instance, MakeMyTrip filed a complaint against Mohammed Malik of www.TravelonEmi.com ("Respondent"), who had registered the #domainname <makemytrip.holiday>.
Introduction
In a recent dispute brought before the WIPO Arbitration and Mediation Center, MakeMyTrip (India) Private Limited, a well-established travel company, confronted Mohammed Malik, the registrant of the domain name <makemytrip.holiday>. The case unfolded against the backdrop of conflicting interests, trademark infringement, and questions of legitimate usage and bad faith, raising key concerns regarding trademark protection in the digital age. The subsequent analysis delves into the elaborate details of the parties involved, the factual and procedural history, and the critical aspects emphasized in the panel's decision.
1. The Parties
The Complainant, MakeMyTrip (India) Private Limited, stands as a prominent entity within the travel industry. Established on August 2, 2000, the Complainant has evolved into a global travel services provider, recognized and certified by the Ministry of Tourism, Government of India. Operating under the name "MakeMyTrip" since June 28, 2002, the Complainant boasts a comprehensive range of services through its primary website "www.makemytrip.com" and its app launched in 2012. The Complainant's unwavering commitment to quality and extensive advertising endeavors have propelled its trademark "MAKEMYTRIP" to a position of high repute.
On the opposing side, the Respondent, Mohammed Malik, operates a website under the name "www.travelonEmi.com" and registered the domain name <makemytrip.holiday>. The Respondent's website offers services that mirror those provided by the Complainant, situating the Respondent as a direct competitor. The Respondent's assertion of using a different prefix and logo for the disputed domain name forms a central point of contention.
2. Factual Background
The Complainant's journey commenced in 2000, with its trademark "MAKEMYTRIP" becoming synonymous with quality travel services over the years. The Complainant holds certificates of trademark registrations in multiple jurisdictions, including India, Canada, and the United States. With a history dating back to 2002, the Complainant's mark has solidified its position in the travel industry.
The Respondent, however, registered the domain name <makemytrip.holiday> on March 3, 2023. This act marked the focal point of the dispute, as the Complainant contended that the registration deliberately infringed upon its trademark rights and intended to mislead internet users seeking the Complainant's services.
3. Procedural History
The Complainant initiated the proceedings on May 31, 2023, submitting its complaint to the WIPO Arbitration and Mediation Center. The Registrar, Tucows Inc., verified the domain name's registration, disclosing the named Respondent as "Contact Privacy Inc." The Center communicated this information to the Complainant, prompting an amended complaint on June 15, 2023. The proceedings officially commenced on June 19, 2023, and the Respondent submitted their response on July 6, 2023.
The Panel, comprising Ashwinie Kumar Bansal, assumed responsibility for adjudicating the case, ensuring compliance with the Rules of Procedure. The stage was set for a comprehensive analysis of the Complainant's allegations and the Respondent's defenses.
4. Critical Aspects of the Decision
a. Confusing Similarity
The Panel delved into the matter of confusing similarity, recognizing the Complainant's trademark "MAKEMYTRIP" as a coined and distinctive mark. The domain name <makemytrip.holiday> not only mirrored the Complainant's mark but also included the gTLD "holiday," directly related to the Complainant's business focus. The Panel noted that while gTLDs are often disregarded in assessing similarity, the context of this case warranted a different perspective. The deliberate use of the gTLD "holiday" was deemed as an attempt to exacerbate confusion due to its direct relevance to the Complainant's industry. The Panel found that the disputed domain name was indeed confusingly similar to the Complainant's trademark.
b. Lack of Legitimate Interest
The Panel meticulously evaluated the Respondent's claim of legitimate interest. The Respondent's business, "TravelonEmi," provided services similar to the Complainant's, creating a significant overlap in offerings. The Panel underscored the absence of authorization from the Complainant for the Respondent to use its trademark. Furthermore, the Respondent's primary website, "www.travelonEmi.com," indicated that the Respondent was not commonly known as "MakeMyTrip." The use of the entire "MAKEMYTRIP" trademark within the disputed domain name, coupled with similar services, implied an intentional attempt to deceive users for commercial gain. The Panel deemed the Respondent's claims of legitimate interest as unsubstantiated.
c. Evidence of Bad Faith
In matters of bad faith, the Panel emphasized the Complainant's longstanding trademark rights, which predated the Respondent's registration. The Respondent's usage of the Complainant's trademark within the domain name demonstrated opportunistic bad faith, as the Complainant had not granted any permissions. The Panel highlighted the Respondent's active website, mirroring the Complainant's services, as evidence of intent to exploit the trademark's reputation for personal gain. Despite the disputed domain name's current inactivity, the Panel cited precedent to establish that the rapid global reach of the internet negated the defense of passive holding.
5. Conclusion
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