The Complainant is Tata Sons Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Tata Massage of San Francisco, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2012. On December 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2012, the Registrar transmitted by email to the Center its verification response confirming, inter alia, that:
(a) it is the Registrar for the disputed domain name;
(b) the name and address of the registrant of the disputed domain name;
(c) the language of the registration agreement is English; and
(d) the disputed domain name was registered on October 4, 2011.
On December 20, 2012, the Complainant filed an amended Complaint.
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”).
On December 23, 2012, the Center received an email communication from the Respondent, apparently indicating its willingness to stop using the disputed domain name. The Complainant filed a request for suspension of the proceedings on December 31, 2012, and on January 3, 2013, the Center confirmed that the proceedings would be suspended until February 1, 2013. Upon request of the Complainant of January 29, 2013, the proceedings were subsequently reinstituted on the same date.
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 January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Response was filed with the Center on February 18, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 25, 2013. 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.
After filing the UDRP Complaint, the Complainant commenced court proceedings in the Delhi High Court and obtained an interim order that:
the [Respondent is restrained from] manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in the business of spa /massage parlour under the trade name TATA MASSAGE or the [disputed] domain name and/ or using any trade name / mark / description / device bearing the trademark TATA or deceptively similar to the [Complainant]’s trademark till the next date. 4. Factual Background
The Complainant was established in 1917, taking over business activities associated with the TATA name which had been in operation since about 1868. It is the holding company of the Tata group of companies, with a turnover of USD100 billion in 2011-2012.
The Tata group includes 100 major operating companies, with 28 listed on stock exchanges. Their combined market capitalization in November 2011 was over USD 73 billion. The group employs over 455,000 people worldwide and has some 3.8 million shareholders. Major companies in the group include Tata Steel, Tata Motors, Tata Consultancy Services, Tata Power, Tata Chemicals, Tata Global Beverages, Tata Teleservices, Titan Industries, Tata Communications and Indian Hotels.
The Tata “brand” was ranked 45th by Brand Finance’s Global 500 Report in March 2012. The Tata group, or one of its members, was ranked 13th in the World’s 50 Most Innovative Companies by Business Week for the year 2009 and the world’s 11th most reputed company by the Reputation Institute which is based in the United States of America (USA).
The Complainant’s Indian hotel subsidiary operates the Taj Hotels Resorts and Palaces chain around the world. The first hotel of which was the Taj Mahal Palace which opened in Bombay (as it was then known) in 1903. The chain includes 93 hotels in 53 locations. There is also a Ginger chain of 25 hotels across India. The group owns 16 hotels outside India including The Pierre in New York, the Taj Cape Town in South Africa and the Taj Campton Place on Union Square in San Francisco, USA.
Associated with the hotels business, or operated by another company in the Tata group, is the Jiva Spas chain. According to the Complaint, the Jiva Spas “categorically state that they are a ‘TATA Enterprise’”.
The Complainant has numerous registrations for TATA, or including TATA, as a trademark in India where TATA has been declared a well-known mark and enforced in numerous court cases. The Complainant also numerous registered trademarks around the world including some 14 registered trademarks for, or featuring, TATA in the USA, all of which were registered before October 4, 2011. The registrations in the USA cover a wide range of goods and services.
The Respondent registered the disputed domain name on October 4, 2011.
The disputed domain name resolves to a website which advertises the massage services of Rassameesaitarn New Series World or Rassameesaitarn Wongsirodkul, who is apparently the wife of the individual disclosed in the WhoIs details for the disputed domain name, using a technique described as “face slapping”. 5. Discussion and Findings
Despite the making of the Delhi High Court’s order, the website to which the disputed domain name resolved still appears to be in operation. Although the Complainant has commenced legal proceedings in the Delhi High Court over the Respondent’s use of the disputed domain name, neither party submitted that the Panel should suspend or terminate the proceeding. The Delhi High Court is not a court of mutual jurisdiction for the purposes of paragraph 3(b)(xiii) of the Rules. Neither party made any submissions about the enforceability of the Delhi High Court’s order in the USA, where the Respondent appears to be located. Nor did either party provide submissions about the procedural steps or timing that would be involved in seeking to enforce the Delhi High Court’s order. In these circumstances, the Panel considers it would be inappropriate to exercise its powers to suspend or terminate this proceeding pursuant to paragraph 18(a) of the Rules.
Accordingly, paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for, or based on, TATA in many countries for a wide range of goods and services. The Panel also accepts that the Complainant, or its corporate group, plainly have common law rights in TATA in India. The Panel also accepts that the TATA trademark has been declared a well-known trademark in India and is, no doubt, very well known indeed.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different from the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The disputed domain name is not identical to any of the Complainant’s trademarks as, even disregarding the “.com” extension, none of the Complainant’s trademarks include the alphabetical string “massage”. Even so, the disputed domain name is plainly confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant states that it has not authorized the Respondent to use the TATA trademark in the disputed domain name. Further, the Complainant submits that the disputed domain name is not obviously derived from the names of the individuals behind the disputed domain name and the potential for deception or confusion with the Complainant’s trademark means there is no plausible explanation for the use of the Complainant’s trademark in the disputed domain name consistent with rights or legitimate interests in the disputed domain name.
In the circumstances of this case, these allegations raise a strong prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name within the scope of the Policy.
However, in this case, the Respondent claims that the massage services being promoted at the website to which the disputed domain name resolves are being provided by the wife of the individual disclosed in the WhoIs details for the disputed domain name and her nickname, or the name by which she is commonly known amongst her friends and family, is Tata.
In administrative proceedings of this kind, a panel does not have the burden nor the benefit of cross-examination to test the veracity of such claims. Even so, the panel is not of course bound to accept the assertions of either party uncritically. In the present case, however, there are a number of objective factors which support the Respondent’s claim.
First, both the Complainant and the Respondent have submitted a range of media reports and interviews, principally from the San Francisco area, in which reporters appear to have visited the Respondent’s business and, at least in some cases, report that the masseuse was introduced as “Tata”.
Secondly, the Respondent does in fact appear to be carrying on a massage business from established premises. It is not of course necessary that a person has a shopfront or office building for the person to be conducting a legitimate business. In this case, however, there is evidence that the Respondent does in fact have a functioning shopfront under its name which, as has been mentioned, a number of news outlets have visited and reported on. Accordingly, there is a bona fide business in operation.
Thirdly, the nature of the services offered by the Respondent – apparently a kind of massage technique. These services do not appear to be covered by the Complainant’s registered trademarks in the USA. The declaration that the trademark is a well-known trademark in India does not assist the Complainant here as the Respondent is located in and appears to be operating in the USA. Noting the global rankings achieved by the Complainant or its group referred to in section 4 above, it is nonetheless not clear from the Complaint that the trademark is in fact well known in the USA or the extent to which it is well known in the USA in relation to particular goods or services affects the rights of third parties in relation to other, unrelated goods or services. For example, the Complaint includes no information about the sales revenues generated by the Complainant or its group in the USA, nor what goods or services those revenues have been generated from. Nor does it include any information about the level of advertising expenditure in the USA. See e.g. WIPO Overview 2.0 paragraph 1.7.
The Complaint instead argues that massage services are provided by its hotel chain or its Jiva Spas. The brochure included in the Annexes to the Complaint does appear to depict someone receiving a massage at the Spa. As the Complainant states, the brochure does state clearly “A TATA enterprise”. The Complaint does not contain details, however, about how widely or extensively the brochure has been distributed in the San Francisco area or otherwise.
Sofar as can be ascertained from an Internet search, the Jiva Spa in San Francisco is part of the Taj Campton Place Hotel. The images available on the Internet page of the hotel do not show Jiva Spa prominently. Nor do they show the hotel itself as prominently branded Tata, but as Taj Hotels Resorts and Palaces Campton Place.
The Complainant points out that the Respondent’s home page includes images of Hindu gods and invites the Panel to infer that the Respondent must have been aware of the Tata group of companies and name as a result. The individuals behind the Respondent, however, appear to be of Thai background which has a Hindu history and has to some extent incorporated the Hindu gods in question in Thai Buddhist and religious imagery.
These circumstances distinguish the present case from the numerous previous UDRP decisions in which the Complainant has successfully made out its claims. Those that were defended involved different respondents, different domain names and different claimed justifications.
In this state of the record, the Panel is not prepared to infer that the Respondent, or those behind it, must have known of the Complainant’s trademarks and adopted the Tata name because of its associations with the Complainant. Instead, the Respondent has provided credible evidence, within the constraints of an administrative proceeding of this kind, that the disputed domain name was adopted because the masseuse providing the Respondent’s massage services is known as Tata. As the disputed domain name is being used in connection with an apparently legitimate business which does not fall reasonably clearly within the Complainant’s proven rights, the Respondent appears to have rights or a legitimate interest to use the disputed domain name.
Accordingly, on the record in this proceeding, the Panel finds that the Complainant has not established the second requirement under the Policy. C. Registered and Used in Bad Faith
Given the Panel’s finding under paragraph 4(a)(ii) of the Policy, it is both unnecessary and undesirable to address the requirement under paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: March 4, 2013
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