The Complainant is Tata Sons Ltd. of Mumbai, India represented by Anand & Anand, India.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Bala Ramamoorthy of Rockville, Maryland, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2012. On November 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 8, 2012.
The Center verified that the Complaint together with the amended 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 November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on December 14, 2012. 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 an Indian company which although not stated in the Complaint, would appear to be a public company. It was established in 1917 and is the parent or holding company of the House of Tata. It represents the numerous separate legal entities in the group, all of which bear the name Tata.
The companies in the group are the oldest and largest private sector employer in India comprising of over 100 major operating companies, 28 of which are publicly listed companies with a combined market capitalization of about USD 73.86 billion as of November 2011. The group employs some 455,000 people worldwide.
The group has a turnover exceeding USD 100 billion, over half of which comes from its businesses outside India.
The group is ranked very highly in most lists published by international business analysts.
The group has an extensive portfolio of goods and services including manufacturing, steel, motor vehicles (large and small), chemicals, power, beverages, communications and tele-services, financial services and telecommunications.
The group also has clearly established philanthropic objectives, some of which are recognized and funded by philanthropic trusts which own one third of the share capital of the Complainant. About 3% of the group’s net profits are devoted to development related social activities.
The current Chairman of the group is Ratan Naval Tata or RN Tata. He has acquired over the years a number of awards and titles both in India and outside India.
The Complainant owns an impressive number of trade marks registered in India and in a very large number of other countries, including the United States, where the Respondent resides. The Complainant also is the registrant of a number of domain names. All trade marks and domain names include the mark TATA.
The Complainant has been assiduous in enforcing its rights to its trade marks whether registered or at common law in a number of cases prosecuted before the Indian Civil Courts and in various domain name disputes.
The Respondent is the registrant of the disputed domain name registered through Go Daddy.Com LLC. The Respondent’s registered details give an address in Maryland, United States of America. There is nothing in evidence to show that the Respondent’s domain name gives access to or is a portal for a live website. The disputed domain name was registered on May 13, 2009 and its current registration expires on May 30, 2013. 5. Parties’ Contentions A. Complainant
The Complainant relies upon its registered trade marks. It also relies upon the common law goodwill built up over the years through its various business activities under and by reference to the trade mark TATA. The materials in evidence, which are extensive and numerous, show a heavy use of the name “Tata” and the mark or sign TATA.
The Complainant contends that by reason of its various trade marks, registered and at common law, its domain names and its Indian and worldwide activities, the name, mark or sign TATA is a well known mark that has acquired sufficient of a reputation that anyone seeing or hearing of it will assume it is a mark of and signifying the Complainant. So well known is the mark that nobody else using it or any colourable imitation of it would immediately be associated in the mind of any person with the Complainant, contrary to the fact. B. Respondent
As the Respondent has defaulted there is no evidence or submission from it. The Respondent has been given every opportunity to respond and put before the Panel whatever it may seek to rely upon to justify its registration of the disputed domain name. It has not done so. Nevertheless, the Complainant still bears the burden of establishing to the satisfaction of the Panel all the requirements under the Policy. 6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark 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 respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
The Complainant has an impressive number of registered trade marks in India and in other countries. It also has an equally impressive number of domain name registrations.
The mark or sign TATA is a family name and the initials “RN” denote the current Chairman. Thus the disputed domain name carries the initials and surname of the current Chairman of the group. It is not unusual for Indian business people to be commonly referred to by initials and full surname rather than Christian name and full surname.
The Complainant has clearly been diligent in protecting and enforcing its rights to its trade marks, and properly so. There would be no possible quarrel with the claim that the name and mark TATA is well-known or famous as those descriptions are used in trade mark law (see Mostert, Famous and Well-Known Marks, Butterworths, 1997). Thus, in the Panel’s view, the mark qualifies under Article 6 bis of the Paris Convention. It is also noteworthy that Mostert (at page 306) states (in 1994) “although there is no precise definition for famous and well known marks the following trade marks would probably qualify as such in India …. TATA …”. The Indian Courts have similarly recognised (see Annexure M to the Complaint) the mark TATA as well-known, at least in the area of the Complainant’s activity.
The disputed domain name adopts the entire trade mark TATA. It adds to it the initials of its current Chairman “RN”. Although the registered trade marks do not include the initials “RN”, the majority of people coming across the Complainant’s goods and services would likely know of its Chairman “RN Tata”. The suffix “.com” is nothing more than the addition of generic Top Level Domain (“gTLD”), which may be disregarded for the purposes of assessing identity or confusing similarity under the first element of the Policy.
In the Panel’s view, the disputed domain name is arguably not identical to any trade mark in which the Complainant has rights. But it is without doubt whatsoever confusingly similar. The Panel does not overlook that the name of the Chairman of the Complainant is “RN Tata”. But it is the Complainant itself, Tata Sons Limited, that has brought this Complaint, not “RN Tata” personally. It is beyond the scope of the UDRP to enter into discussion as to the enforcement of rights to personal names and rights to control publicity and privacy. It is more than sufficient to note that so well known is the TATA mark that when the known initials of the Chairman “RN” are added, the disputed domain name is clearly and beyond any argument confusingly similar to the Complainant’s TATA marks.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the latter has not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The Complainant contends that it has not licensed or permitted the Respondent to use the mark TATA or RN TATA. It also contends that the Respondent does not use the disputed domain name in connection with any legitimate offering of goods or services by a website to which the disputed domain name defaults. It contends there can be no logical or plausible explanation for the registration of the disputed domain name beyond some unlawful activity such as domain name hijacking or cybersquatting.
In this, the Panel is of the view that the Complainant must be right. It is extremely difficult to comprehend what rights or interests the Respondent might possibly claim.
Separate inquiries from publicly available sources indicate that the Respondent is associated with the Briley Group which at some point itself had a connection with Bjets, a private jet company in Asia which in turn appears may have had some business connection with the Complainant or other companies in the TATA group. The Panel is of the view that it would be inappropriate to place any reliance on or draw any inferences from other publicly available sources. Suffice to say as is indicated in the following section, the Panel is of the view that the Respondent may have been opportunistic in its registration of the disputed domain name.
There being no Response from the Respondent, the Panel believes that the Complainant has more than made out a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name and that it satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
It is noted that the disputed domain name was registered on May 13, 2009, some 3 years ago. There is no evidence to indicate why the disputed domain name has not come to the attention of the Complainant before now. The Panel is of the view that nothing however turns on this.
Whether or not the Respondent took an opportunity that came its way in 2009 following some possible discussions that may have taken place with the Complainant or a member of the TATA group is not for the Panel to consider or let alone resolve. Nevertheless, given that RN Tata is the name of the Chairman of the Complainant and given also the well-known or famous nature of the Complainant’s mark, it is easy to draw the inference that the Respondent has simply been opportunistic.
The Complainant’s rights to its TATA trade marks go back very many years. Its history goes back even further.
The Panel has already held that the trade mark TATA is well-known or famous and that anyone seeing or hearing the disputed domain name will immediately associate it with the Complainant, contrary to the fact. Moreover, very many people will presumably know of the initials of the group’s Chairman.
In all the circumstances there can be no possible explanation whatever in this Panel’s view as to the Respondent’s reasons for the initial registration of the disputed domain name other than to adopt the reputation and goodwill of the Complainant in the TATA mark and name. The Respondent is not entitled to do this. It is easy to draw the inference in the absence of any rebuttal from the Respondent that there has been some proposed unlawful or otherwise improper use or benefit that the Respondent may have sought or perceived it could acquire from the registration of the disputed domain name.
The Complainant must also establish use in bad faith. The Panel notes that at the time of the notification of the Complaint the website was “under construction”, while at the time of rendering this Decision the website states “Directory Listing Denied. This virtual directory does not allow contents to be listed”. Use has been held on many occasions to include passive use, i.e. cybersquatting. This Panel is of the view that continued re-registrations or renewals of a disputed domain name originally registered in bad faith may constitute use in bad faith. Such activity denies the Complainant the opportunity which it exclusively has to register a trade mark or domain name if it so wishes under the same style as the disputed domain name.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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 disputed domain name be transferred to the Complainant.
John Katz
Sole Panelist
Date: December 28, 2012
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