The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is dhanush pilo, pilokraft of Maharashtra, India / Domain Admin of NobbyBeach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with ZNet Technologies Pvt Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2014. On November 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2014, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 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 November 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2014.
The Center appointed Amarjit Singh as the sole panelist in this matter on December 18, 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.
[If necessary, summarize other stages of the administrative proceeding, including extensions granted and orders issued, other proceedings, consolidation of related proceedings, language of the proceeding.] 4. Factual Background
Tata Sons Limited is the promoter of the major operating Tata companies and holds significant shareholdings in these companies. Tata companies are commonly referred to as the Tata Group of Companies, and the Chairman of Tata Sons Limited is referred to as the Chairman of the Tata Group of Companies.
Tata Sons Limited is the registered proprietor of the trade mark TATA and its variants, which are registered in India and around the world. These are used by various Tata companies under a license from Tata Sons Limited as part of their corporate name and/or in relation to their products and services. The terms of use of the group mark and logo by Tata companies are governed by the Brand Equity and Business Promotion Agreement, entered into between Tata Sons Limited and Tata Group of Companies.
The Complainant claims to be the proprietor/licensed user of the trade marks BOLT and TATA.
The Complainant adopted the trade mark BOLT and filed trade mark applications in class 12 for the goods; land vehicles and parts thereof; accessories. The details of the trade mark applications is given below:
Country
Trade Mark
Class
Trade Mark
Appln. No.
Goods
INDIA
TATABOLT
12
2640548
Vehicles, Apparatus for Locomotion by Land, Air or Water
INDIA
BOLT
12
2655633
Land Vehicles and parts thereof; accessories included in class 12
INDIA
BOLT
12
2757556
Land Vehicles and Parts thereof; Accessories
INDIA
BOLT FROM TATA MOTORS
12
2757557
Land Vehicles and Parts thereof; Accessories
The Complainant claims the trade mark TATA has acquired both statutory right and Common Law right. The Complainant relied on the following Indian Trade Mark registration for the purpose of this Complaint:
Country
Trade Mark
Class
Regd. No.
Goods
Status
INDIA
TATA
12
299110
Vehicles, apparatus for locomotion by land, air or water
Registered on September 10, 2014
The Complainant claims to have enormous presence on the Internet and ownership of various domain names consisting of the word "tatamotors" under different gTLDs and ccTLDs, which are mentioned herein below:
Sl. No.
Domain Name
Country
Holder
Validity
1
India
Tata Motors Limited
May 9, 2023
2
Mexico
Tata Motors Limited
June 26, 2015
3
Colombia
Tata Motors Limited
December 12, 2014
4
Kenya
Tata Motors Limited
June 29, 2015
5
Nepal
Tata Motors Limited
September 11, 2015
6
Malaysia
Tata Motors Limited
June 23, 2015
7
Brunei
Tata Motors Limited
June 9, 2015
8
Philippiness
Tata Motors Limited
May 2, 2015
9
Japan
Tata Motors Limited
May 31, 2015
10
Indonesia
Tata Motors Limited
January 5, 2015
11
India
Tata Motors Limited
January 17, 2015
12
Columbia
Tata Motors Limited
January 24, 2015
13
India
Tata Motors Limited
January 17, 2015
14
India
Tata Motors Limited
January 17, 2015
15
India
Tata Motors Limited
January 17, 2015
16
India
Tata Motors Limited
January 17, 2015
5. Parties' Contentions A. Complainant
The Complainant claims to be India's largest automobile company, with consolidated revenues of Rs. 1,65,654 Crore (USD 32.5 billion) in 2011-2012. The Complainant is among the top five commercial vehicle manufacturers in the world. The Complainant is India's market leader in commercial vehicles and among the top three in passenger vehicles. It is also the world's fourth-largest truck and bus manufacturer. The Complainant belongs to the well known Tata Group of Companies.
The word "tata" is the dominant and essential feature of the Complainant's corporate name which connotes the distinctiveness, reputation, quality and goodwill acquired over scores of years and has been derived from the surname of its founder, Jamshedji Tata.
The "Tata" name has been respected in India for more than 140 years for its adherence to strong values and business ethics. Every Tata company or enterprise operates independently. Each of these companies has its own board of directors and shareholders, to whom it is answerable. There are 32 publicity listed Tata enterprises and they have a combined market capitalization of about $92.74 billion (as on February 21, 2013), and a shareholder base of 3.8 million. The major Tata companies are Tata Steel, Tata Motors (complainant herein), Tata Consultancy Services (TCS), Tata Power, Tata Chemicals, Tata Global Beverages, Tata Teleservices, Titan, Tata Communication and Indian Hotels.
The Complainant, formerly known as Tata Engineering and Locomotive Company, began manufacturing commercial vehicles in 1954 with a 15 year collaboration agreement with Daimler Benz of Germany. It has, since, developed Tata Ace, India's first indigenous light commercial vehicle; the Prima range of trucks; the Ultra range of international standard light commercial vehicles; Tata Safari; India's first sports utility vehicles; Tata Indica, India's first indigenously manufactured passenger car; and the Nano, the world's most affordable car.
The Complainant is also expanding its international footprint, established through exports since 1961. The Complainant has operations in the United Kingdom of Great Britain and Northern Ireland, the Republic of South Korea, Thailand, Spain and South Africa through subsidiaries and associate companies. The Tata Motors commercial and passenger vehicles are being marketed in several countries in Europe, Africa, the Middle East, South Asia, South East Asia and South America. It has franchisee/joint venture assemble operations in Bangladesh, Ukraine and Senegal. The official website of the complainant is "www.".
The Bolt hatchback vehicle was unveiled by the Complainant in the 12th Auto Expo 2014, held in New Delhi in the month of February 2014 and has attracted extensive reviews both in print and online portals. The trade mark is now popularly known as TATABOLT.
The Complainant has advertised it marks BOLT/TATABOLT through mass media such as print, electronic media and also through participation in the Motor shows etc. and has invested in publicizing the said trademarks. This hatchback vehicle is anticipated to be launched by end of 2014. The Bolt hatch features edgy styling, especially in the headlight and in the grilles.
It is stated that the use of the keyword "tatabolt"in any leading search throws up the web pages of the Complainant among the leading hits.
On account of extensive usage of the trade mark TATA and the rising awareness on BOLT, the adoption and/or usage of TATABOLT by others would amount to not only dilution of the Complainant's rights over the distinct mark but also would result in confusion and deception amongst the end customers. Such unauthorized usage of the Complainant's marks TATA and BOLT, and domain names comprising of TATABOLT by others would also amount to infringement of Complainant's trade mark rights and is liable to be prevented in the Court of Law.
The word "tata" forms an important part of the corporate name of the complainant and other companies belonging to the Tata Group of Companies. In respect of the business carried on by the Complainant and its associated companies, their products and services have come to be associated by the consumers and the members of the public exclusively with the Tata Group of Companies'. The word "tata" was adopted as a trade mark and has been extensively used in respect of the products and services manufactured and rendered by the companies belonging to the Tata Group of Companies. The Complainant and its associated companies are the registered proprietors of various trade marks containing the word "tata". The said trade marks are registered in different classes and the earliest registrations date back to the year 1951. The products and services of the companies belonging to the Tata Group of Companies are of national and international repute and standard and such companies have grown into a dynamic group of diversified companies. The products and services manufactured and rendered by these companies are popular not only in India but also in a large number of countries throughout the world. The Tata Group of Companies' use the trade name TATA on their letterheads, papers, goods, services, etc. In the facts and circumstances, it is explicit and obvious that the word "tata", which forms part of the corporate name of the Complainant and other companies belonging to the Tata Group of Companies connotes the distinctiveness, reputation, quality, and goodwill acquired over several years and is understood as connoting association with the famous Tata Group of Companies.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complainant is not connected to nor has it given permission to the Repsondent to use its trade marks.
The Respondent, whose registered address is in India, has registered the disputed domain name in bad faith, as it could not possible claim it did not know of the Complainant's mark and reputation. The Complainant claims the registration of the disputed domain name amounts to passing off on the part of the Respondent. Furthermore, the fact that the Repsondnet is passively holding the disputed domain name constitutes bad faith use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The trade mark TATA has been registered under no. 299110 in class 12 in India on September 10, 1974 and has been renewed from time to time by the Complainant.
The Complainant has filed the application for registration of the trade mark TATABOLT in class 12 under application no. 2640548 on December 10, 2013, having a proposed to be used claim.
The Complainant has further filed an application for registration of the trade mark BOLT under application 2655633 in class 12 on January 7, 2014, with a proposed to be used claim.
The Complainant has further filed an application for registration of the trade mark BOLT (label) in class 12 under application no. 2757556 on June 17, 2014 claiming use of the mark from June 5, 2014.
The Complainant has filed another application for registration of the trademark BOLT FROM TATA MOTORS (label) in class 12 on June 17, 2014 claiming use of the mark from June 5, 2014.
The Respondent registered the disputed domain name on January 26, 2014.
The Complainant (through a licensing agreement from its Parent company) has established registered and Common Law trade mark rights preceding the registration of the disputed domain name on January 26, 2014. The Complainant has registered trade mark rights for TATA, under number 299110 in class 12 in India on September 10, 1974.
This Panel finds that the disputed domain name is confusingly similar to the Complainant's trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In the present case, the Complainant adopted the trade mark BOLT on December 10, 2013. The registration of the disputed domain name by the Respondent is as of January 26, 2014, which is a date subsequent to the date of adoption of the trade mark 'BOLT' by the Complainant.
No doubt, the Complainant filed the application for registration of trademark TATABOLT on December 10, 2013 with a claim of "proposed use" and as a matter of fact commenced the commercial use of the mark only in June 2014. However, the Respondent despite having adopted the disputed domain name on January 1, 2014 did not make any commercial use of the disputed domain name until this date.
In any event, the Complainant and its associated companies are the registered proprietor of various trade marks containing the word "tata," the earliest registrations dating back to the year 1951.
The domain names , , , and were registered by the Complainant on January 17, 2014. The domain name was registered by the complainant on January 24, 2014.
The Respondent is no way connected to the Complainant and has also failed to show any right or legitimate interest in the disputed domain name .
The Respondent, by registering the disputed domain name, is trying to create an impression of an association with the Complainant's company.
The Complainant has also not licensed and/or otherwise permitted the Respondent to use its mark for the purposes of registration of the disputed domain name.
The Respondent has been passively holding the disputed domain name and has failed to demonstrate any preparation to use the same in commerce until this date.
The Panel thus finds that the Respondent does not have any rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant in its legal notice dated March 10, 2014 called upon the Respondent to, inter alia, immediately discontinue the use of the disputed domain name and take immediate steps to transfer the disputed domain name to the Complainant
The Respondent did not respond to the aforesaid notice given by the Complainant nor has it denied any facts stated therein.
The intent of the Respondent is evident from the fact that it has neglected and/or deliberately not responded to the Complainant's notice. The bad faith is further evident from the fact that the Respondent has further neglected and/or not responded to the contentions raised by the Complainant in the Complaint.
The primary purpose for the registration by the Respondent in the absence of any response seems to trade upon the goodwill and reputation associated with the marks of the Complainant.
Since the Respondent has failed to show any legitimate use of the disputed domain name prior to the filing of the Complaint, this panel has all the reason to believe that the disputed domain name has been registered and used by the Respondent in bad faith. See paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDROP Questions, Second Edition. 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.
Amarjit Singh
Sole Panelist
Date: January 6, 2015
Full & Egal Universal Law Academy