The Complainant is Tata Sons Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Raaghav Prasad of Raichur, Karnataka, India. 2. The Domain Name and Registrar
The disputed domain name (the “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 October 30, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2013.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on December 10, 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. 4. Factual Background
Tata Sons Ltd, the Complainant was established in 1917, as a body corporate, which is the promoter and principal investment holding company of the House of Tata. The trademark and name TATA has been registered in relation to various goods across various classes of the Fourth Schedule of the Trademark Rules, 2002 in India. The Complainant also owns trademark registrations for TATA in over 50 countries besides India. The Complainant and its group companies are registrants of various domain names containing the trademark and service mark TATA such as , , , , , , etc. The Complainant has a subsidiary by the name of Tata Capital Limited, which is registered with the Reserve Bank of India as a Systematically Important Non-Deposit Accepting Core Investment Company and offers through itself and its subsidiaries fund and fee-based financial services to its customers. There is another company named Tata Capital Financial Services Ltd, a subsidiary of Tata Capital Limited, which is also registered with the Reserve Bank of India as a Systematically Important Non-Deposit Accepting Nonbanking Financial Company and offers fund and fee-based financial services to its customers under the Tata Capital brand. The Respondent registered the Domain Name on March 9, 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the exclusive owner and proprietor of the trademark and service mark TATA. The use of the trademark and name TATA by the Complainant’s predecessors in business dates back to 1868 derived from the name of its founder Jamsetji Nusserwanji Tata. The Complainant has continuously and consistently used the trademark and name TATA, since its inception in 1917. The Complainant is the registered proprietor of several TATA formative trademarks in relation to various goods across of various classes of the Fourth Schedule of the Trademark Rules, 2002 in India. Some of the trademark registrations in favour of the Complainant in India comprising the word “Tata” in various classes along with printouts from the trademarks registry website pertaining to the said trademarks have been filed along with the Complaint as Annexure P. The Complainant has exclusive rights to use its trademark TATA in relation to the goods covered under the registrations. The Complainant further submits that it owns trademark registrations for the word TATA in over 50 countries besides India.
The Complainant has devoted an enormous amount of time, effort and energy in promoting and advertising the trademark in print as well as online media. The Complainant and its group companies have various online Internet portals and they have registered various domain names containing the trademark TATA and a list of several such domain names has been given in the Complaint.
The Respondent has registered the Domain Name in the wake of the Reserve Bank of India, the central banking authority of India, publishing the guidelines for the issuance of new bank licenses in February 2013 that allow any type of company to apply for a permit, thus paving the way for opening of new banks after a long time. It was well known in the media that the Complainant group of companies is applying for license from the Reserve Bank of India. The Respondent was aware of the commercial value and significance of the Domain Name due to which he has registered the Domain Name without any authority of the Complainant.
The Complainant asserts trademark rights in TATA and alleges that the Domain Name is confusingly similar to the trademark. The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith. The Domain Name is deceptively and confusingly identical, visually and phonetically similar to the trademarks and domain names owned and registered by the Complainant. The Respondent registered the Domain Name with an ulterior motive to deceive the public at large in order to cash in on the reputation of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 5(e) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences therefrom as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“4(a). Applicable Disputes. You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademarks rights in TATA in relation to goods across various classes of the Fourth Schedule of the Trademark Rules, 2002 in India and a list of certificates of registrations granted by the Trade Marks Registry of India has been produced with the Complaint besides a table of registrations in other countries. The trademark TATA has become associated by the general public exclusively with the Complainant. The Complainant also has several domain name registrations incorporating the trademark TATA.
The Respondent has registered the Domain Name wholly incorporating the trademark TATA of the Complainant, which the Panel finds is sufficient to establish confusing similarity for the purpose of the Policy.
The additional words “the” preceding and “bank” succeeding the trademark TATA in the Domain Name are merely generic and do not avoid a finding of confusing similarity of the Domain Name with the trademark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words1. Furthermore, it is established that the generic Top-Level Domain (gTLD) is typically not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name2.
The trademark and service mark TATA has been a well-known name in India for many decades. The Complainant has successfully contested litigation regarding the trademark TATA before various courts in India and other countries and some of the court decisions in this regard have been produced with the Complaint. Thirteen years ago, in a similar dispute before the Center regarding the trademark and name TATA, ten domain names were transferred to the Complainant. See Tata Sons Ltd. v. Ramadasoft, WIPO Case No. D2000-1713 in which it was concluded as under:
“This Panel concludes that the Respondent owns the domain names:
(i)
(ii)
(iii)
(iv)
(v)
(vi)
(vii)
(viii)
(ix)
(x)
These domain names are confusingly similar to the Complainant’s trademark TATA, and the Respondent has no rights or legitimate interests in respect of the domain names, and he has registered and used the domain names in bad faith. These facts entitle the Complainant to an order transferring the domain names from the Respondent. The Panel allows the Complaint and directs that the Respondent’s domain names listed above be transferred in favor of the Complainant.”
The Panel finds that the registration of the trademark TATA with Trade Marks Registry of India is prima facie evidence of the Complainant’s trademark rights for the purposes of the Policy3. Internet users who enter the Domain Name being aware of the reputation of the Complainant may be confused about its association or affiliation with the Complainant.
The Panel finds that the Domain Name is confusingly similar to the trademark TATA of the Complainant. B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the Domain Name. Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests in the Domain Name4. The Complainant has registered several domain names consisting of the trademark TATA. The Complainant has been using the trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the trademark TATA. The Panel finds that the Complainant has made out a prima facie case.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent has not filed a Response to rebut the Complainant’s prima facie case and the Respondent has thus failed to demonstrate any rights or legitimate interests in the Domain Name as per paragraph 4(c) of the Policy.
Based on the facts as stated above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Paragraph 4(b) is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a) (iii), 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 a domain name in bad faith:
(i) circumstances indicating that you have registered or you 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. Circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove that both that the Domain Name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”). Hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Complainant has not granted the Respondent permission or a license of any kind to use its trademark TATA. Such unauthorized registration and use of the trademark TATA by the Respondent suggests opportunistic bad faith. The case is squarely covered by paragraph 4(b)(iv) of the Policy. The Respondent’s true purpose in registering the Domain Name which incorporates the well-known trademark TATA of the Complainant is, in this Panel’s view, to capitalize on the reputation of the trademark TATA by diverting Internet users seeking the Complainant’s website(s) to the Respondent’s own website that displays pay-per-click links related to banking and finance.
The Panel therefore finds that the Domain Name has been registered and is being used by the Respondent in bad faith. 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 Domain Name be transferred to the Complainant.
Dr. Ashwinie Kumar Bansal
Sole Panelist
Dated: December 21, 2013
1 See Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
2 See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phoenomedia AG V. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
3 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 0705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 0174052 (finding that the Complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the Complainant’s rights in the mark for purposes of Policy, paragraph 4(a)(i)).
4 See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 0780200.
Full & Egal Universal Law Academy