M&M wins disputed internet site case at WIPO

Mahindra & Mahindra (M&M) has won a cybersquatting case at the World Intellectual Property Organisation (WIPO) against a US-based person, who was using the name Mahindra in an internet domain.

Zach Segal was using the domain name ‘mahindraforum.com’ about which the Indian conglomerate contended that the name is confusingly similar to its ‘Mahindra’ trade mark and Florida based person has no rights or legitimate interests.

The Geneva-based WIPO, a part of the United Nations, has asked Segal to transfer disputed internet site to M&M. The ruling came after M&M filed a complaint before the UN agency on July 6. WIPO’s Arbitration and Mediation Center found the domain name was chosen and employed precisely for its potential commercial value in misleading internet users familiar with the complainant’s well-known and arbitrary Mahindra marks.

Cybersquatting is an illegal activity of buying and officially recording an address on the internet that is the name of an existing company or a well-known person, with the intention of selling it to the owner in order to make money.

According to the details available with WIPO, a specialised agency for developing a balanced and accessible international system in the field of intellectual property rights, the domain name was registered by Panamanian company on February 28 last year.

“After the decision, I hope soon the domain name will be transferred to M&M,” Nikhilesh Panchal, partner, Khaitan & Co, which represented the M&M in the case, told PTI from Mumbai.

M&M is the proprietor of a large number of domain names of or including the name ‘Mahindra’, including ‘mahindra.com’, which was registered on November 27, 1999, and to which the Group’s main website is connected.

In its contention before the WIPO’s sole panelist Tony Willoughby, M&M alleged that on April 16, 2009, the site was connected to an ‘adult’ services site. On the same date the company’s US subsidiary sent an email to Segal requesting that he remove the content of the site.

Segal immediately removed the offending content from the site, which he blamed on spammers, and by his email next day “sought $500 for the domain name to cover his costs” of owning the domain and setting up the website.

Currently, the domain name is connected to a parking page hosted by an entity, Sedo, and featuring advertising links to various sites, including sites offering goods and services in competition with those of Mahindra.

M&M is a member of the Mahindra Group, which is engaged in a wide range of commercial activity, ranging from vehicle manufacture to the provision of financial services.