The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is Vaidehi Jha, Freelancer of Udaipur, Rajasthan, India. 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 July 21, 2014. On July 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2014.
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 July 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2014.
The Center appointed David Stone as the sole panelist in this matter on September 5, 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, formerly known as Tata Engineering and Locomotive Company, began manufacturing commercial vehicles in 1954.
It is now India’s largest automobile company, with consolidated revenues of USD 32.5 billion in 2011-12. It markets its commercial and passenger vehicles across the world. It is among the top five commercial vehicle manufacturers in the word and apparently the market leader in India in commercial vehicles and among the top three in passenger vehicles. According to the Complainant, it is the world’s fourth-largest truck and bus manufacturer.
The trademark TATA is derived from the surname of its founder Jamshedji Tata, and has been used in India for more than 140 years. TATA has been registered as a trademark in India since 1974.
The Complainant adopted the trademark NEXON on December 4, 2013 and applied to register this mark as an Indian trademark registration on the same day for “Land vehicles, and parts thereof; accessories”. NEXON is the brand name of a compact sports utility vehicle (“SUV”) that was launched at the 12th Auto Expo 2014, held in New Delhi in February 2014. The SUV is popularly known as the “Nexon” or the “Tata Nexon”. The SUV has been widely marketed and is well known to the public.
The Respondent registered the disputed domain name on May 7, 2014, shortly after the Complainant launched its Tata Nexon SUV.
The Complainant provided correspondence between A. Jha (a relative of the Respondent) and the Complainant’s attorneys, De Penning & De Penning, concerning an offering by A. Jha to sell the disputed domain name to the Complainant. The offer was made by email on May 12, 2014, shortly after the disputed domain name was registered. An Advocate of the High Court of Bombay was also instructed to write to the Complainant’s representatives on behalf of the Respondent and A. Jha. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered marks TATA and NEXON, which are widely recognized as being associated with the Complainant. The disputed domain name incorporates the Complainant’s marks in their entireties.
The Complainant contends that there is no evidence to suggest that the Respondent has been using TATA, NEXON or TATANEXON in any way that would give it legitimate interests or rights in the disputed domain name, and consequently that the Respondent may not claim any rights established by common usage. The Complainant further contends that the Respondent is not in any way affiliated with the Complainant or authorized or licensed to use the TATA, NEXON or TATANEXON trademarks.
The Complainant submits that TATA is a well-known trademark worldwide, and that NEXON and TATANEXON are well-known trademarks in India. Therefore, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trademarks at the time of the registration.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith, and points to the fact that it was offered for sale to the Complainant by A. Jha, acting on behalf of the Respondent (as confirmed by an Advocate of the High Court of Bombay).
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(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 domain name, and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered trademark rights in the marks TATA and NEXON in India. From the evidence supplied, the Panel finds that TATA is a well-known at least in India where the Respondent lives.
The disputed domain name incorporates the Complainant’s registered trademarks in their entireties: it is no more than a combination of TATA and NEXON.
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of the three circumstances applies. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; or
(iv) to divert Internet traffic for commercial gain.
Given that the TATA trademark is well-known in India, and given that the Tata Nexon SUV was launched shortly before the disputed domain name was registered by the Respondent, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trademarks at the time the disputed domain name was registered. Previous UDRP panels have made a finding of bad faith where the Complainant’s trademark was shown to be well known or in wide use at the time of registration of the disputed domain name (see Playboy enterprises International, Inc v Zeynel Demirtas, WIPO Case No. D2007-0768; The Nasdaq Stock Market, Inc. vs Vidudala Prasad, WIPO Case No. D2001-1493; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Also, as demonstrated by correspondence annexed to the Complaint, a representative of the Respondent approached the Complainant to sell it the disputed domain name within five days of the disputed domain name’s registration. Whilst no price was proposed, the Respondent’s offer clearly links the sale of the disputed domain name to the Complainant’s launch of the Tata Nexon SUV. This, coupled with the speed of the offer, can only imply that the Respondent’s intention was to register the disputed domain name for the purpose of selling it on to the Complainant at a profit.
Accordingly, the Panel finds that the Complainant has established the third element under 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.
David Stone
Sole Panelist
Date: September 19, 2014
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