The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is Jan Sampurna of Jakarta, Indonesia. 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 December 16, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 28, 2014.
The Center verified that 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 January 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2014.
The Center appointed Ross Wilson as the sole panelist in this matter on February 26, 2014. 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, a member of the Tata Group of Companies, is India’s largest automobile company and one of the top five commercial vehicle manufacturers in the world. It has operations in India and, through subsidiaries and associated companies, the United Kingdom of Great Britain and Northern Ireland (UK), Republic of Korea, Thailand, Spain and South Africa. It has franchisee/joint venture assembly operations in Bangladesh, Ukraine and Senegal. It employs over 4,500 engineers, technicians and scientists at research and development centers in India, Republic of Korea, Spain and the UK.
In 2008 the Complainant announced its “People Car”, the TATA NANO, which was commercially launched in 2009. It is a city car, made in India and is the cheapest car in the world. The car has been promoted under the trademark TATA NANO through various media such as print, electronic media, trade fairs and exhibitions.
The trademark has been registered in India, Indonesia and many other countries since 2007. The registered trademark owner is Tata Sons Limited which licenses the trademark to the Complainant.
The Respondent registered the disputed domain name on September 20, 2012.
In December 12, 2012, the Complainant through its representative requested the Respondent to cease use of the disputed domain name and to transfer it to the Complainant. The Respondent did not respond to the request. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the licensed user of the trademark TATA NANO and that the disputed domain name is identical to its trademark with the sole difference being the addition of the geographic identifier “Indonesia”. It contends that any unauthorized usage of its trademark would result in dilution of its rights and lead to confusion and deception. The Complainant states that its TATA NANO trademark is one of the well-known trademarks in the world and that the Respondent knowingly adopted the mark being aware of its reputation.
The Complainant states that the Respondent has no rights to or legitimate interests in the disputed domain name. Also, the Complainant alleges that the purpose of the Respondent in adopting the disputed domain name is to “en-cash” on the name, fame, reputation, image and goodwill of the Complainant. The Complainant alleges that the disputed domain name was registered in bad faith and by its use the Respondent is committing fraud. The Complainant argues the members of the public could get the wrong impression that the Respondent is associated with the Complaint. According to the Complainant the Respondent’s motive is to “clandestinely negotiate for transfer of the [disputed domain name] for consideration”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(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 used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence that the trademark TATA NANO is owned by Tata Sons Limited and through the operations of Tata Sons as the promoter of the Tata Group of Companies (of which the Complainant in one of over 100 operating companies) the Complainant is the licensed user of the trademark. The Panel is satisfied that as the Complainant operates under the TATA name and is a subsidiary of Tata Sons Limited it has rights in the trademark TATA NANO (see Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107).
The disputed domain name consists of the Complainant’s trademark in its entirety together with the word “Indonesia” and the generic Top-Level Domain (“gTLD”) extension “.com”. With respect to the gTLD extension “.com” the general rule is that it can be disregarded when considering whether a trade mark is identical or confusingly similar to a domain name.
It has been commonly held in previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro,WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The addition of the word “Indonesia” is a geographical location which cannot be considered distinctive. In fact the geographical location serves to accentuate rather than to diminish the confusing similarity to Internet users who may be potential customers of the Complainant in Indonesia. See L’Oreal v. Liao Quanyong,WIPO Case No. D2007‑1552 where the panel found that “the addition of the word “china” … does not serve to distinguish it from Complainant’s L’OREAL marks. Furthermore, the Panel finds that the addition of the word “china” serves to suggest a geographical location of Complainant’s business, which increases the level of confusion of Internet users as Internet users may confuse Respondent’s website for Complainant’s official website devoted to its customers in China”.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant denies that it or any entity belonging to the Tata Group of Companies has licensed or otherwise permitted the Respondent to use the trademark TATA NANO. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use disputed domain name which is confusingly similar to the Complainant’s mark in its entirety without authorization from the Complainant. Based on the evidence provided by the Complainant, the disputed domain name was intended to mislead potential customers and divert them to the Respondent’s website for its own commercial benefit. The Panel considers no rights or legitimate interests derive from such use of the disputed domain name.
The Panel considers the Respondent is not commonly known by its domain name. See Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognised as such. As stated by the panel in Hertz System, Inc. v. D/Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615 “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative proceeding, the Respondent has chosen not to rebut the Complainant’s prima facie case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.
The Respondent’s copying of images of the NANO car on the website at the disputed domain name demonstrates knowledge of the Complainant’s rights in its trademark when the disputed domain name was registered. The Complainant points out that using that knowledge the Respondent sought to appropriate the reputation and goodwill of the Complainant by registering a confusingly similar domain name for the purposes of commercial benefit.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view, the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s rights. In this Panel’s assessment, the Respondent clearly knew of the Complainant’s mark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated by the panel in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “It is therefore inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection in that case of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The evidence provided shows the Respondent’s website incorporated photographs of the Complainant’s car. The Panel considers the Respondent’s use of the disputed domain name to divert Internet user traffic to its website, without a clear and accurate disclosure of the Respondent’s relationship with the Complainant, to order the Complainant’s car clearly represents an intent to deceive Internet users into believing that the disputed domain name is associated or endorsed by the Complainant. Overall the Panel finds that the disputed domain name was registered and used by the Respondent in an intentional attempt to benefit from the reputation and goodwill of the Complainant’s mark for commercial benefit by creating a likelihood of confusion with the Complainant’s trademark.
Noting that the Respondent has not rebutted any of the Complainant’s contentions and has no demonstrable rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used 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 disputed domain name be transferred to the Complainant.
Ross Wilson
Sole Panelist
Date: March 12, 2014
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