WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Tea Ltd v. Gem Lifts Ltd
Case No. D2000-1823
1. The Parties
1.1 The Complainant is Tata Tea Ltd, a company incorporated under the laws of India; and
1.2 The Respondent is Gem Lifts Ltd, a company incorporated in Scotland, United Kingdom.
2. Domain Name and Registrar
2.1 The domain name upon which this complaint is based is . The registrar of the domain name as at the date of the Complaint is Core.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of
December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on December 27 2000 and in hard copy by courier on
February 2, 2001. The cover letter to the Complaint stated that the fees were to be made by wire transfer to WIPO�s account. The Complaint stated that a copy of the Complaint was sent to the Respondent by fax, courier and first class post (including all Annexes) and by email (not including annexes), and that a copy had been sent to Network Solutions Inc. by first class post.
3.3 Upon receipt of the email copy of the Complaint, the Center sent the Complainant an "Acknowledgment of Receipt of Complaint" on March 7, 2001 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.
3.4 The Center sent a Request for Registrar Verification to Core on January 10, 2001 by email. Core responded to the Center�s request by email on the same day, stating that Core was not yet in receipt of the Complaint, and verifying (1) that Core was the Registrar for the domain name in dispute, (2) that the Respondent was the current registrant of the domain name in dispute, (3) the Respondent�s contact details, (4) that Core�s 4.0 Service Agreement was in effect in relation to the domain name, and (5) that had an �active� status. On
January 26, 2001, Core verified that it had received the Complaint.
3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on February 6, 2001 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.6 The Center received the Response from the Respondent on February 12, 2001. The Center sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on February 12, 2001 by email.
3.7 The Center sent an email to the Respondent on February, 12 2001 and received a response on February 13, 2001. The Respondent stated in an email of February 13, 2001 that it considered its original Response to be final. Response deficiency notification was emailed to the Respondent on February 14, 2001.
3.8 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on
March 28, 2001 via email. A copy was also sent to the Panel on the same date by email.
3.9 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact in the Complaint and remains uncontested.
The Complainant has operated a tea cultivation, producing, manufacturing, processing, blending and marketing business in India since 1962 and has been known as Tata Tea Limited since 1983. The Complainant is one division of a much larger conglomerate known as the "House of Tatas".
The Complainant stated that its trademark is known internationally and has acquired significant goodwill both inside and outside India. The Complainant referred to two other domain name arbitrations in which the arbitrators had found significant goodwill in the Tata trademark �WIPO Case No. D2000-0479 (Tata Sons Limited v. D & V Enterprises) and WIPO Case D2000-0049 (Tata Sons Ltd. v. The Advanced Information Technology Asssociation).
4.2 The Complainant�s Trade Mark
The Complainant registered its trademark in class 30 in India on
28 November 1988 "in respect of tea for sale in India and for export". The Complainant has sold tea around the world under the name "Tata Tea" for almost forty years.
4.3 Activities of the Respondent
The following information was asserted as fact in the Response and remains uncontested.
The Respondent is the operator of a lift sale and repair business in Scotland and has no links with the tea industry in any country.
5. Complainant�s Contentions in the Complaint
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name in dispute is identical or confusingly similar to its registered mark Tata Tea, and the domain name in dispute incorporates the whole of the Complainant�s registered mark Tata Tea, with the sole addition of a hyphen between the two words.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interest in the domain name in dispute. In particular, the Complainant submits that the Respondent has registered the domain name with the ulterior intention of furthering their business activities in an unauthorised manner.
In reference to the requirement of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Respondent has registered and is using the domain name in dispute in bad faith. In support of this allegation, the Complainant claims that the Respondent does not operate in the tea business and has not used the domain name since registering it, other than to point it to a domain name registration company whose dispute policy encourages the purchasing of the domain name by a complainant (not at a price which reflects the Registrant�s out-of-pocket expenses in acquiring the domain name) rather than entry into this dispute resolution process .
The Complainant asserts that the Respondent acquired the domain name primarily for the purposes of (1) misappropriating the Complainant�s trademark to pass off the Respondent�s products and services and for those of the Complainant; and (2) selling it to the Complainant at a price substantially greater than the Respondent�s out-of-pocket expenses and that when the Complainant notified the Respondent of the Complaint, the Respondent�s Response included an offer to sell the domain name to the Complainant at a premium: ("It would probably save a lot of problems and save you money if you were to purchase this from us. We would be happy to give you first consideration and accept a reasonable sum commensurate with the stated importance you seem to place on this domain name.").
The Complainant asserts that the unauthorised use by the Respondent of the Complainant�s trademark will affect the goodwill image and reputation of the conglomerate of which it is a division and could also adversely affect the Complainant�s borrowing and selling power in relation to the tea industry.
5.1 The Respondent�s Contentions in the Response
The Respondent denies having any intent to become involved with the tea industry. The Respondent asserts that the word "tata" is a word commonly used in Scotland to mean good-bye. The Respondent asserts that the word "tea" is a generic word that "cannot be copywrited".
The Respondent denies that the Complainant has any reputation in Scotland, though admits that specialists in the tea industry in that country would likely be aware of the Complainant�s trademark, reputation and goodwill.
The Respondent asserted that it had received offers from third parties interested in acquiring this domain name and that the Respondent would be willing to "accept a reasonable sum commensurate with the stated importance you (the Complainant) seem to place on this domain name".
6. Discussion and Panel Finding
This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.1 Domain Name identical or confusingly similar to the Complainant�s Marks
The domain name in dispute is . The Complainant has a registered trademark in India for the mark TATA TEA. In the Panel�s view the domain name is identical to the trademark owned by the Complainant, the gTLD suffix and the hyphen having no relevant distinguishing function. In any event the domain name is confusingly similar to the trademark and the Panel notes that there is no asserted meaning for the second word by the Respondent.
6.2 Respondent has no rights or legitimate interests in the Domain Name
The Respondent has not asserted that it owns any trademark in Scotland (or any other jurisdiction) for Tata Tea. The Panel notes that the disputed domain name is identical to the Complainant�s trademark despite the addition of the hyphen.
The Respondent has shown no evidence of operating any business using the disputed domain name. Rather, the Respondent has only pointed the domain name to the website of the professional domain name registration company through which it acquired the domain name. The Respondent has also denied operating or having any intention to operate any business relating to the tea industry.
The Panel notes that the Complainant stated that its business operates around the world and that the Complainant holds significant goodwill outside India. The Respondent admitted that specialists in the tea industry in Scotland would be likely to know of the Complainant�s business.
The Complainant asserted that the Respondent has registered the domain name to diminish the value of the Complainant�s trademark and goodwill. The Respondent has not refuted this claim.
The Panel finds that the Respondent has shown no evidence that it used the contested domain name in connection with bona fide offerings of goods and services prior to notice of this dispute or notice of the Complainant�s registered Indian trademark.
The Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the domain name and therefore has proven paragraph 4(a)(ii) of the Policy.
6.3 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"� the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith�" (emphasis added).
In this case, although the registrar of the disputed domain name has confirmed that the site is "active", currently the domain name resolves to a message from UK2.net about its domain name registration and hosting services. In such a situation, it is clear that the Respondent is only using the domain name to promote the business that assisted the Respondent to register the disputed domain name in the first place.
The Panel notes that UK2.net refers to a dispute policy which encourages complainants to simply purchase the domain name from a respondent rather than to enter into this dispute resolution process.
Although the Panel finds that the Respondent has not "used" the domain name to pass off any goods or services as those of the Complainant, bad faith use of a domain name can arise through having the DNS entry point to another site, and the Panel finds that this has occurred in this situation.
The Complainant states that in offering to sell the domain name to the Complainant, the Respondent has clearly demonstrated that the domain name was registered in bad faith. Paragraph 4(b)(i) of the Policy provides that the following is evidence of bad faith registration and use:
"circumstances indicating that you have registered or have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
The Respondent has given a number of explanations for its registrations of the disputed domain name. The Respondent asserted that it was merely combining two generic words to form a domain name and that "tata" would be popularised through its use in the movie "Hannibal".
At the same time, the Response contained an offer to sell the disputed domain name to the Complainant for a "reasonable sum commensurate with the stated importance you seem to place on this domain name." Such an offer makes no reference to the Respondent�s out-of-pocket expenses directly related to the domain name, but instead attributes a value to the domain name based upon the value of that domain name to the Complainant�s business. This is a subjective third party valuation; not an objective valuation of the Respondent�s actual costs. Plainly a valuation that includes the goodwill of a successful business will exceed the Respondent�s registration expenses.
In this case, the question before the Panel is therefore, "did the Respondent register the domain name of the primary purpose of selling, renting or otherwise transferring it to a third party with an interest in that name?" The Complainant is required by the Policy to prove that this is the case. It is clear from the evidence and the Respondent�s comments in the Response that the Respondent had this intention after the date of registration. However, this does not automatically lead to the conclusion that this intention existed at the time of registration.
In this case the Panel infers that such an intention existed at the time of registration for the following reasons. First, the Respondent�s first discussion with the Complainant included an offer to sell the domain name to the Complainant. Secondly, the fact that the Respondent has provided no evidence that since registering the domain name it intended to use the domain name for any meaningful purpose leads the Panel to conclude that the Respondent�s purpose for registering the disputed domain name at the time of registration was to sell it for consideration in excess of its out-of-pocket expenses directly related to the domain name.
Paragraph 4(b)(i) of the Policy also requires that the consideration demanded by the Respondent for the domain name be in excess of the Respondent�s documented out-of-pocket costs directly related to that domain name. The Response to the Complaint stated that the Respondent was happy to "accept a reasonable sum commensurate with the stated importance you seem to place on this domain name." As noted above, this is clearly a demand for payment of an amount exceeding the reasonable out-of-pocket expenses directly related to that domain name as the demand is based upon the Complainant�s valuation of the disputed domain name, not the Respondent�s out-of-pocket expenses.
The Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 The Panel has found that the Complainant has proven all of the requirements of paragraph 4(a) of the Policy.
Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel directs that the domain name be transferred to the Complainant, Tata Tea Limited.
Philip N. Argy
Sole Panelist
Dated: April 17, 2001
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