The Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Lintas Personal of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with QuantumPages Technologies Pvt. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2014. On April 22, 28, 2014 and May 1, 5, and 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details. The Complainant filed an amended Complaint on May 16, 2014 following an invitation from the Center to correct an administrative error in the Complaint.
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 May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2014.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 20, 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, established in 1917, is the promoter and principal investment holding company of the Tata group of companies, “The House of Tata” is a famous business conglomerate in India and abroad. Its turnover in 2012-13 was circa USD 97 billion, and it employs over 500,000 people. Details of extensive trademark registrations of its TATA trademark in India and abroad has been provided to the Panel.
Two-thirds of the Complainant’s equity share capital is held by philanthropic trusts associated with the Tata name, for science and technology, medical research, social studies and the performing arts. Philanthropic expenditure related to these trusts amounted to circa 3 percentof the House of Tata’s net profits in 2011.
The disputed domain name was registered on January 19, 2006. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its well-known trademark.
The Complainant alleges that the Respondent has no rights or legitimate interest in the disputed domain name, and that it has not licensed or otherwise permitted the Respondent to use its TATA mark, or apply for any domain name incorporating the mark. It also alleges that the Respondent lacks bona fides, as the Respondent is relying on the Complainant’s well-known trademark in order to cause initial interest and confusion, and to bait Internet users to any website operated under the disputed domain name.
The Complainant contends that the disputed domain name was registered in bad faith. Although the disputed domain name has not as yet been used, the Complainant contends that it poses a constant threat that it might either be used to extort an excessive price from the Complainant, or might be used to start collecting money from unwary and gullible persons in the garb of raising funds for philanthropic purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(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. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the gTLD “.org” indicator to be irrelevant in the present case.
The Panel recognizes TATA as a well-known mark. It is well-established in prior decisions under the UDRP that the mere addition to a well-known trademark of a descriptive or non-distinctive element is insufficient to avoid a finding of confusing similarity. The Panel finds that, in the context of the present case, the word “trusts” is such a descriptive or non-distinctive element, and, accordingly finds that the Complainant has satisfied the provision of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent did not avail itself of the opportunity to justify its adoption of the disputed domain name in these proceedings, and the Panel draws the appropriate conclusion. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the disputed domain name contains the Complainant’s well-known TATA trademark in its entirety, with the mere addition of a word closely associated with an important activity of the Complainant, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith and the Panel so finds.
Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, in which the Panel also regards the Complainant’s concern that the disputed domain name may be used to fraudulently collect money by confusing people intending to contribute to philanthropic activity, an activity on which the Complainant places great importance, as entirely legitimate, the Panel is persuaded that a bad faith use finding is justified. Consequently, the Panel finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy. 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
George R. F. Souter
Sole Panelist
Date: June 30, 2014
Full & Egal Universal Law Academy