The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is S Jon Grant of Las Vegas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2015, 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.
The Center verified that the 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 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 23, 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.
On February 23, 2015 the Respondent sent an email indicating that it was willing to hand over the Domain Name to the Complainant. 4. Factual Background
The Complainant maintains that the Domain Name is confusingly similar to the TATA and INDICA VISTA registered trade marks, and unregistered rights in the same and in the TATA VISTA mark owned by the TATA Group of Companies and the Complainant. It contends that the Respondent lacks rights or legitimate interest in the Domain Name and registered and used the Domain Name in bad faith. The Complainant seeks transfer of the Domain Name.
The Respondent did not send a formal response but has indicated it is willing to transfer the Domain Name to the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant is India's largest automobile company with consolidated revenues of USD 32.5 billion in 2011 and is among the top five commercial vehicle manufacturers in the world.
Tata Sons Ltd 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. Tata Sons Limited is the registered proprietor of the trade mark TATA in India and around the world. These are used by various Tata companies under a licence agreement from Tata Sons Ltd as part of their company name and/or in relation to their products and services. The earliest registrations of TATA date back to 1951.
The Complainant is the licensed user of the trade mark TATA and the registered proprietor of INDICA VISTA, popularly known as TATA VISTA.
The TATA name has been respected in India for more than 140 years. The Complainant began manufacturing commercial vehicles in 1954. The Complainant has been expanding its electronic footprint established through exports since 1961 and its vehicles are marketing in Europe, Africa, the Middle East, South Asia, South East Asia and South America. The official website of the Complainant is T. TATA which forms part of the corporate name of the Complainant and other companies in the TATA Group of Companies connotes the distinctiveness, reputation, quality and goodwill acquired over a significant time with the products of the TATA Group of Companies.
TATA VISTA is the sportiest hatchback in its segment first seen on the road in India in 2008. The latest TATA VISTA was unveiled in February, 2014 and has been advertised under INDICA VISTA/TATA VISTA in mass media and at motor shows. Use by others would result in deception and confusion amongst end users.
The Respondent has wrongfully adopted the well-known TATA mark and slavishly copies VISTA from the Complainant's reputed mark INDICA VISTA with the sole intention of creating an association with the Complainant. It has no connection with the Complainant or the TATA Group of Companies and none of them have permitted the Respondent to use the Domain Name or any domain name incorporating TATA VISTA. The Respondent has no legitimate interest in the Domain Name
TATA is a well-known mark and the Respondent has adopted the term VISTA from the Complainant’s trade mark INDICA VISTA being aware of its growing popularity and that it is commonly referred to by end users as TATA VISTA.
The Domain Name is linked to various sites promoting the TATA VISTA vehicle, including web sites of the Complainant. Such use is considered evidence of bad faith registration and use under the UDRP.
The Complainant has enormous presence on the Internet and owns the domain names and .
An innocent consumer is bound to be misled by the Domain Name. The clear intention of the Respondent appears to be to pass off and mislead gullible consumers by unfair and dishonest means causing damage to the Complainant and, therefore, to the reputation of the Complainant. The registration of the disputed domain name was made in bad faith, perhaps to sell it.
The Respondent has made illicit gain by benefiting from pay per click links and the disputed domain name has been used in bad faith to attract customers to a web site or some other on line location. B. Respondent
The Respondent did not reply to the Complainant’s contentions, however sent an email after the time limit for a Response had expired indicating it would be willing to transfer the Domain Name to the Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith to obtain transfer of the disputed domain name.
However, this Panel notes that consent to transfer by the Respondent can provide a basis for an order for transfer without a need for consideration of the UDRP grounds. The Panel notes The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, and that when the Complainant seeks transfer of the domain name, and the Respondent agrees to transfer, the Panel may proceed immediately to make an order for transfer. Accordingly, given the consent of the Respondent to transfer of the Domain Name to the Complainant, the Panel will order the transfer of the Domain Name. 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.
Dawn Osborne
Sole Panelist
Date: March 4, 2015
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