The Complainant is Tata Sons Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Deep Bhasin of Mumbai, Maharashtra, India, represented by himself; PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2012. On November 6, 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 8, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent the complaint deficiency notification to the Complainant. The Complainant filed an amended Complaint on November 12, 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 initial Response was filed with the Center on November 16, 2012 where the Respondent offered to settle the disputed with the Complainant. In response to the Center’s email regarding the possible settlement between the parties, the Complainant informed the Center on November 19, 2012 that the Complainant did not wish to settle the dispute with the Respondent. The final Response was filed with the Center on December 2, 2012.
The Center appointed Maninder Singh 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.
On December 15, 2012, an email communication was received by the Center from the Respondent enquiring the identity of the appointed Panel. On December 21, 2012, the Panel instructed the Center to issue a communication to the parties, inviting the parties to comment on information submitted by the Panel.
On December 24, 2012, the Complainant indicated to the Center that it has no objection in having the appointed Panel as the sole panelist in this case. No comments were received from the Respondent by the specified due date. 4. Factual Background
- The Complainant is the promoter and principal investment holding company of House of TATA, established in the year 1917. It is India’s oldest, largest and well-known business conglomerate stated to be having a turnover of over USD 83.3 billion (around Rs.3,796.75 billion) in 2010-11, with 58 per cent of this coming from businesses outside India. The Complainant is one of India’s most trusted business houses. The Complainant’s trade name/mark TATA, derived from the surname of its founder Jamsetji Nusserwanji Tata, is a household name synonymous with excellence in various fields of business activities. The Complainant and its subsidiaries/associates are stated to have laid the foundation in core industrial sectors, textiles, iron & steel, power, chemicals, hotels, automobile industries, computers, software, electronics, telecommunications, financial services, mutual funds, tea and publishing etc.
- The Complainant the registered proprietor of the well-known trade mark/name TATA in over 50 countries including India. The Complainant and its Group companies are also claimed to have registered various domain names containing its trade/service mark TATA.
- The Complainant contends that the Respondent has registered the disputed domain name incorporating the trade mark/name TATA and also the name of its Deputy Chairman, “Cyrus Mistry”. The disputed domain name is identical and/or confusingly similar to the trade/service mark of the Complainant. The Complainant contends that the Respondent has violated/encroached upon its common law and statutory rights in its trade/service mark TATA.
- The Complainant claims that the disputed domain name attempts to associate itself with the Complainant’s online service under the trade name/domain name by incorporating the name of the service in full. The malicious intention of the Respondent is evident from the blatant misappropriation of the Complainant’s trade/service mark TATA by the Respondent. The Complainant contends that any search by an Internet user for the Complainant’s service online as “tata” would take the Internet user to the disputed domain name of the Respondent, thereby enhancing the possibility of inevitable deception and confusion to the Internet user.
- For further strengthening of its case, the Complainant has asserted that in the past also, the Complainant has been able to get restraint orders issued against parties for using deceptively similar marks to its mark/name TATA. In this regard, the Complainant has, inter alia, annexed the orders / judgements of the Hon’ble Delhi High Court in its case. Reliance has also been placed by the Complainant on certain UDRP decisions of WIPO.
- The Respondent in its Response has, inter alia, consented to transfer the disputed domain name to Complainant. 5. Parties’ Contentions A. Complainant
The Complainant in its complaint has, inter alia, made the following contentions:
- The Complainant as a body corporate, is the promoter and principal investment holding company of House of TATA. The Complainant is stated to have been established in the year 1917 and is India’s oldest, largest and well-known business conglomerate having a turnover of over USD 83.3 billion (around Rs.3,796.75 billion) in 2010-11, with 58 per cent of this coming from businesses outside India. The Complainant is stated to be one of India’s most trusted business houses and the name/trade mark TATA, derived from the surname of its founder Jamsetji Nusserwanji Tata, is a household name synonymous with excellence in several fields of business activity.
- The Complainant and its subsidiaries/associates is claimed to have laid the foundation in the industrial core sectors, pioneering textiles, iron & steel, power, chemicals, hotels, automobile industries. Later, keeping pace with the changing global scenario it branched out to other sectors like computers, software, electronics, telecommunications, financial services, mutual funds, tea and publishing etc.
- The Complainant is stated to be the registered proprietor of the well-known trade mark TATA. The Complainant is also claimed to have owned trade mark registrations for the word TATA in over 50 countries besides India. The Complainant and its Group companies is also stated to be the registrant of the following domain names containing its trade/service mark TATA:
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- Mr. Cyrus Pallonji Mistry (popularly known as Cyrus Mistry), as set out in the Complaint, has been declared as the next Chairman of the Complainant and he is to take over as Chairman from its present Chairman, Mr. Ratan Tata upon his retirement (in December, 2012). It has also been stated in the Complaint that the information that Mr. Cyrus Mistry would be the Chairman of the Complainant, is in the public domain. This has been widely publicized in electronic as well as print media.
- The Complainant claims that it has devoted an enormous amount of time, effort and energy in promoting and advertising the said mark in print and online media and the said mark is consequently identified solely with the Complainant. The Complainant and its Group companies have various online Internet portals. The Group companies of the Complainant are also engaged in the business of providing Internet based multi faceted services such as news, information, communication, entertainment and shopping that are accessed by users, shareholders, customers and other Internet users world over.
- The Complainant contends that the Respondent herein has registered the disputed domain name by misappropriating illegally and without authority the trade mark TATA and the name of the Deputy Chairman of the Complainant i.e. “Cyrus Mistry”, which is the exclusive property of the Complainant/its Deputy Chairman. The disputed domain name is identical and/or confusingly similar to the trade/service mark of the Complainant. The Complainant contends that the Respondent has violated/encroached upon its common law and statutory rights in its trade/service mark TATA.
- The Complainant claims that the disputed domain name attempts to associate itself with the Complainant’s online service under the trade name/domain name by incorporating the name of the service in full. The malicious intention of the Respondent is evident from the blatant misappropriation of the Complainant’s trade mark/service mark TATA by the Respondent. The Complainant contends that any search by an Internet user for the Complainant’s service online as TATA would take the Internet user to the disputed domain name of the Respondent, thereby enhancing the possibility of inevitable deception and confusion to the Internet user.
- The Complainant also claims that the use of the word TATA would be understood as a reference to the Complainant because it is one of the registered and well-known trade marks of the Complainant. Complainant contends that incorporation of a trade mark in entirety in a domain name is sufficient in establishing confusing similarity as has been held in UDRP decision - Magnum Piering Inc v. The Mudjackers,WIPO Case No. D2000-1525.
- The Complainant further claims that Internet users or the unwary general public who do not know that the Complainant and the Respondent have no affiliation with each other or that the Complainant has not licensed or authorized or endorsed the use of its famous and well-known mark TATA are likely to get confused to presume the Respondent’s activities as those authorized or endorsed or affiliated with the Complainant which would lead to dilution of the Complainant’s well-known and famous marks.
- The contends that the mala fides of the Respondent are further evident from the fact that the Respondent has incorporated the name of the Deputy Chairman of Complainant, i.e. “Cyrus Mistry” as part of the disputed domain name. Such acts of the Respondent amounts to invasion of the right to publicity/privacy rights of the Deputy Chairman of the Complainant, Mr. Cyrus Mistry, as well as passing-off. The Respondent does not have any rights or legitimate interests in the disputed domain name and by using/exploiting the mark and name, fame & popularity of the Deputy Chairman of Complainant “Cirus Mistry” it is making unlawful economic gains for itself.
- The Complainant contends it has not licensed or otherwise permitted the Respondent to use its trade/service mark TATA / CYRUS MISTRY or to apply for any domain name incorporating the said trade/service mark/personal name.
- The Respondent has not made any legitimate offering of goods or services under the mark TATA through the disputed domain name. The disputed domain name has been created by the Respondent to make unjust gains by depriving the Complainant/its Deputy Chairman of their legitimate rights to register an identical domain name. The Respondent may also offer to sell the disputed domain name in future for an exorbitant price. This act of the Respondent amounts to domain name squatting as well.
- The disputed domain name is not bona fide since the Respondent is trading on the fame and recognition of the Complainant’s well-known trade mark in order to cause initial interest, confusion and bait Internet users to accessing its website and force the Complainant to buy the Respondent out in order to avoid the said confusion as is typically the strategy of such cyber squatters. The Respondent has no right or legitimate interest in the disputed domain name.
- The Respondent is using the disputed domain name in bad faith. The website parked on the disputed domain name and the said website features write-ups on the Complainant, its Group Companies, its Chairman (Mr. R. N. Tata) and it’s Deputy Chairman (Mr. Cyrus P. Mistry).
- It is further stated there could be no plausible explanation for the use of the disputed domain name by the Respondent since the Complainant’s trade/service mark TATA is exclusively used by the Complainant and companies promoted by it.
- The Complainant has relied upon the recent judgement (Annexure R to the Complaint) of the Delhi High Court in CS(OS) No. 2963/2011 - Tata Sons Ltd. & Anr. v. Mr. Dharmendra wherein also the defendant in that case had got registered the domain name on November 24, 2011, i.e., a day after the Complainant’s official public announcement of the appointment of Mr. Cyrus Mistry as its Deputy Chairman who will take over as Chairman from Mr. Ratan Tata upon his retirement. This matter was however settled with the defendant as the defendant transferred the disputed domain name to the plaintiff and agreed to suffer a permanent injunction order from the Delhi High Court restraining him from using the names Cyrus Pallonji Mistry or any other deceptively similar variant thereto amounting to invasion of the right to publicity/privacy of Mr. Mistry.
- The Complainant also places reliance upon the judgements/orders/ decisions of the Hon’ble Courts/ WIPO upholding the Complainant’s trade mark rights in the mark TATA: Delhi High Court
(i) Tata Sons Ltd. & Anr. v. Mr. Dharmendra, CS (OS) No.2963/2011
(ii) Mr. Arun Jaitley v Network Solutions Private Limited, 181(2011)DLT716
(iii) DM Entertainment Pvt Ltd v Baby Gift House, CS(OS) 893 of 2002
(iv) Titan Industries Limited v. Ramkumar Jewellers, CS(OS) No. 2662 of 2011
(v) Tata Sons Ltd. V. Manu Kosuri, 2001 PTC 432; 90 (2001). DLT 659
(vi) Judgment dated 6th April, 2009 in Tata Sons Ltd. v. A K Chaudhary & Ors
(vii) Judgment dated 19.11.2009 in Tata Sons Ltd. & Ors. v. Tata Sumo Industrial (R)
(viii) Judgment dt. 27.10.09 in Suit No.1836/2006-Tata Sons Ltd v. Tata Industrial Recruitment
(ix) Judgment dt. 4.2.10 in CS(OS) 1105/2008 - Tata Sons Ltd. & Anr. v. Rama Nerusu & Ors
(x) Judgment dated 28th March, 2011 in CS(OS) No.232/2009 and CS(OS) No. 264/2008
(xi) Judgment dated 22.10.2009 in Suit No.392/2004 - Tata Sons Ltd. v. Sandy Chak
UDRP Decisions Upholding the Complainant’s Trade Mark Rights
(i) Tata Sons Ltd. v. Ramadasoft,WIPO Case No. D2000-1713
(ii) Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671
(iii) Tata Tea Ltd v. Gem Lifts Ltd,WIPO Case No. D2000-1823
(iv) Tata Sons Limited v. Hasmukh Solanki,WIPO Case No. D2001-0974
(v) Tata Sons Limited v. tataconnect,WIPO Case No. D2006-0572
(vi) Tata Sons Limited v. D & V Enterprises,WIPO Case No. D2000-0479
(vii) Tata Sons Ltd. v. The Advanced Information Technology Association,WIPO Case No. D2000-0049
(viii) Tata Tea Limited v. Antiquarium Ltd.,WIPO Case No. D2000-1827
(ix) Tata Sons Limited v. Tatasky International Corporation, WIPO Case No. D2005-0783
(x) Tata Sons Limited v. Imtiaz Kalwar,WIPO Case No. D2007-1924
(xi) Tata Tea Limited v. CPIC NET,WIPO Case No. D2000-1828
(xii) Tata Sons Limited v. Domaincar,WIPO Case No. D2006-0285
(xiii) Tata Tea Limited v. Aniruddha Roy,WIPO Case No. D2000-1824
(xiv) Tata Tea Limited v. Arms Communications Pvt Ltd,WIPO Case No. D2000-1826
(xv) Tata Sons Limited v. Net Prosol / Renjith R.,WIPO Case No. D2004-0083
(xvi) Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Ravi Maraj,WIPO Case No. D2010-0314
- The Complainant contends that the confusingly similar domain name was created by the Respondent on November 24, 2011 being fully aware of the commercial value and significance, reputation and goodwill of the Complainant’s trade/service mark. The Respondent was also aware that Mr. Cyrus Mistry was the Complainant’s Deputy Chairman, who would be taking over as Chairman upon retirement of Mr. Ratan Tata in December 2012 and therefore, in order to exploit the immense name, fame and popularity associated with the said name has got the disputed domain name registered. The Complainant contends that the Respondent can have no rights or legitimate interest in the disputed domain name and rather the sole purpose of the adoption of the Complainants trade mark as well as its Deputy Chairman’s name in entirety by the Respondent is to encash / misappropriate the Complainant’s well-known and famous trade mark TATA and goodwill and reputation attached to it.
- The Complainant contends that the Respondent is using the disputed domain name in a full-fledged way and may even sell the same in future at an exorbitant price. The Respondent, by creating the disputed domain name has blocked the Complainant/its Deputy Chairman of their legitimate right of registering a domain name that incorporates their trade mark/service mark/personal name. Such acts of the Respondent also amount to domain name squatting. Therefore, the Complainant states that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is only trying to name-squat thereby usurping the reputation and goodwill of the Complainant’s trade/service mark TATA through the disputed domain name.
- The Complainant alleges that there is a likelihood that potential unwary visitors to the Respondent’s present web page or any future web page that is resolved to this disputed domain name, will be induced to either the Complainant has licensed their trade mark TATA, and/or the service mark trade name, to the Respondent or authorized the Respondent to register the disputed domain name or that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the TATA Group or has been authorized by the Complainant to carry out these activities or that the website to which the disputed domain name resolves is affiliated to the Complainant. B. Respondent
- The Respondent in his response has issued bald denials of the contentions, and stated that he had no malafide intention while registering the disputed domain name. The Respondent, however, has consented to the transfer of the disputed domain name to the Complainant, as prayed for by the Complainant in the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
- The Panel has considered the documents submitted by the Complainant for supporting the claim of the Complainant that it has been using the trade mark/name TATA for decades. The Panel agrees that the Complainant is one of India’s most well-known business houses and the trade name/mark TATA, derived from the surname of its founder Jamsetji Nusserwanji Tata, is a household name synonymous with excellence in several fields of business activities. The Panel observes that the Complainant has many domain name registrations using its trade mark/name TATA.
- Indeed, it is a well-known mark which is distinctive and identified with its owner. The Panel has no doubt that the Complainant has trade mark rights that also correspond to the disputed domain name . The disputed domain name with the incorporation of the trade mark/name of the Complainant with addition of the name of its Deputy Chairman “Cyrus Mistry” is not sufficiently different from the Complainant’s trade mark for the purposes of the first element; and the disputed domain name would remain confusingly similar to the trade mark of the Complainant.
- The Panel, therefore, concludes that the disputed domain name registered by the Respondent in November, 2011 is confusingly similar to the well-known trade mark and service mark of the Complainant. B. Rights or Legitimate Interests
- The Panel has notes that the disputed domain name incorporates the well-known and famous trade mark TATA of the Complainant with that of the name of its present Deputy Chairman, “Cyrus Mistry”. The Complainant contends that the Respondent has been using the disputed domain name without any authorization or licence from the Complainant. It is more than apparent to this Panel that such an attempt on the part of the Respondent is to create confusion and to cash on the name of the Complainant. The Respondent is apparently attempting to extract commercial benefits for itself at the cost of the Complainant by adopting a confusingly similar disputed domain name. Be that as it may, the Panel finds that the Respondent in its Response has consented to the transfer of the disputed domain name from the Respondent to the Complainant, as prayed for in the Complaint.
- Accordingly, the Panel accepts the contention of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
- The disputed domain name has been registered by the Respondent subsequent to the Complainant’s relevant trade mark and domain name registrations and is being used in bad faith. In this regard the Panel would also like to refer to the following observations made in Tata Sons Limited v. Tata Telecom Inc/T, Mr. Singh, supra
“[...]Moreover, as noted in Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complaint, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith” [...] ”
- The Panel, in these circumstances, accepts that the trade mark/name of the Complainant TATA is well-known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name of Respondent believing that there is some connection, affiliation or association between the Complainant and the Respondent. This will ,in this Panel’s opinion, lead to extracting illegal and undue gains to the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.
- The Panel observes that the disputed domain name was registered by the Respondent in November 2011. The Panel has no hesitation in accepting the contention of the Complainant that being fully aware of the commercial value and significance of the disputed domain name, the Respondent has obtained the disputed domain name to take commercial advantage of it by free riding on the substantial goodwill and reputation of the Complainant’s trade mark TATA.
- The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by the Respondent. 7. Decision
For 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.
Maninder Singh
Sole Panelist
Date: January 20, 2013
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