Complainant is Tata Sons Limited of Mumbai, India, represented by DePenning & DePenning, India.
Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2014. On December 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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. The Center sent an email communication to Complainant on December 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 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 Respondent of the Complaint, and the proceedings commenced on December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2015.
The Center appointed Dina Leytes as the sole panelist in this matter on January 16, 2015. 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
Complainant is the owner of trademark registrations for the word mark TATA on the Trade Marks Registry in India and worldwide, including in India Registration Number 569378 for “Land vehicles and parts thereof, locomotives and wagon parts, rims and wheels for motorcars and trucks,” in International Class 012, and Registration Number 585377 for: Tractors, forklift trucks, lift trucks, trailer vehicles of all kinds,” in International Class 012. Complainant has submitted proof of publication and renewal in the Trade Marks Journal for both of the above referenced marks to the Panel.
Complainant’s corporate name is derived from the name of its founder, Jamshedji Tata. “Tata” is the dominant and essential feature of Complainant’s corporate name. The Tata name is highly regarded and has been used in India for more than 140 years. Complainant is a promoter and significant shareholder of a group of independently operated Tata companies (hereafter the “Tata Companies”). The Tata Companies consist of over 100 operating companies in seven business sectors. Various Tata Companies use the Tata name and the TATA mark, under license from Complainant. Their terms of use are governed by the Brand Equity and Business Promotion Agreement entered into between Complainant and the Tata Companies. The Tata Companies operate in more than 80 countries across six continents and export products and services to 85 countries. The total revenue of the Tata Companies, taken together, was USD 100.09 billion in 2011-12, with 58 percent of the revenue originating from outside of India. The Tata Companies employ over 450,000 people worldwide. Complainant has registered numerous domain names to promote the Tata Companies’ activities.
Tata Motors Limited (hereafter “Tata Motors”) is a prominent company within the Tata Companies and India’s largest automobile company. Tata Motors is among the top commercial vehicle manufacturers worldwide. In India, Tata Motors is India’s market leader in commercial vehicles and among the top three in passenger vehicles. Tata Motors is also the world’s fourth largest truck and bus manufacturer. Tata Motors began manufacturing commercial vehicles in 1954 with a 15-year collaboration agreement with Daimler Benz of Germany. In 1958 Tata Motors began a strategic partnership with the Indian Armed Forces. It has developed a number of vehicles of its own. Tata Motors has exported its vehicles since 1961 and has operations worldwide. The TATA brand has been extensively used on trucks manufactured and marketed by Tata Motors. Complainant has submitted evidence of its advertising and promotional materials related to Tata Motors’ trucks to the Panel.
The disputed domain name was registered on August 15, 2004. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name fully incorporates and is confusingly similar to its well-known trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it has not licensed or otherwise permitted Respondent to use its TATA mark or to apply for any domain name incorporating the mark. It also alleges that Respondent’s use of the disputed domain name constitutes infringement of its trademark rights and creates a false impression among members of the public that Respondent is an authorized dealer of TATA vehicles or is otherwise associated with or authorized by Tata Motors.
Complainant alleges that the disputed domain name was registered and is being used in bad faith. The website that corresponds to the disputed domain name contains pay-per-click links that wrongfully target Complainant’s TATA mark by using TATA in connection with offering commercial trucks and other vehicles for sale or rent by various third parties. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview, 2.0”), at paragraph 4.6 and the cases cited therein. A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in TATA. Although no registration dates or certificates were provided by Complainant for the two TATA marks referenced above that are registered on the Trade Marks Registry in India, Complainant has demonstrated that it carries on substantial business in India and worldwide and that the TATA mark is well-known and has been for decades.
The Panel further finds that the disputed domain name is confusingly similar to Complainant’s TATA trademark. The disputed domain name incorporates Complainant’s trademark in its entirety and merely adds the word “trucks,” which is commonly associated with Complainant.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant. B. Rights or Legitimate Interests
There is no evidence to show that Complainant has authorized Respondent’s use of the TATA mark or that Respondent has any independent basis for using the word “tata.” Moreover, it is well established that operating a website with competitor pay-per-click links does not demonstrate the rights or legitimate interests of a respondent. See, e.g., Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021 (finding that use of pay-per-click links that direct to competitor sites does not constitute rights or legitimate interests). Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that it has rights or legitimate interest in the disputed domain name. However, by failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the domain name was registered or acquired 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 the domain name registrant's out-of-pocket costs directly related to the domain name;
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct;
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant's 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 the registrant's website or location or of a product or service on the registrant's website or location.
The Panel finds that, on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b)(iv) of the Policy. Respondent’s use of Complainant’s TATA mark with the word “trucks” in connection with pay-per-click links shows that Respondent seeks to trade on and profit from the name and reputation of Complainant as a well-known, international truck manufacturer and exporter. See, e.g. Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 (finding that “[w]hile the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is … bad faith use.”)
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 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 Complainant.
Dina Leytes
Sole Panelist
Date: January 30, 2015
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