The Complainant is Tata Sons Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Jonni Starre / Charles Power of Woodinville, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2015. Further to the Center's notification of Respondent default, the Respondent sent an email communication on September 9, 2015.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on September 18, 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
The Complainant asserts common law rights in the mark TATA and in the mark TATA in combination with various generic terms reflecting a wide array of commercial activities.
The Complainant is the registered owner of the trademark TATA in India in relation to a wide variety of products and services. It is the registered owner of the trademark TATA in over 50 countries in relation to a wide variety of goods and services. The Complainant provides evidence of multiple registration certificates in Annexure to its Complaint.
The disputed domain name was registered on April 17, 2000. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is India's largest industrial conglomerate with a long history going back at least to 1917. The Complainant asserts that because of its long term use of the mark TATA over a wide geographical area, that mark has the status of a "well-known mark". The Complainant asserts that it has vigorously defended its trademark rights in the mark TATA in the Indian courts and also by way of the UDRP procedures. The very extensive advertising efforts of the Complainant in relation to the mark TATA mean that the mark is exclusively associated with the Complainant. According to the Complainant the mark TATA, although representing the founder's surname is also distinctive.
The Complainant asserts that is has registered a large number of domain names incorporating the mark TATA and a descriptor of particular goods or services. It thus points to the registered domain name tatawire. com. The latter domain name is owned by an associated company of the Complainant. The Complainant cites a number of Indian court decisions that have affirmed its rights in the TATA trademark, demonstrating its exclusivity and reputation. The Complainant also cites a substantial number of UDRP decisions in its favor.
Further the Complainant asserts that the Tata Global Wires Business is one of the most significant in India and around the world in the galvanized wire sector, with its products being well established in a large number of jurisdictions.
According to the Complainant the disputed domain name is identical to the Complainant's TATA trademark. If not identical, then it is at least confusingly similar. The incorporation and use of the mark TATA in the disputed domain name would be taken to refer to the Complainant, as TATA is a registered and well-known trademark, the Complainant asserts. The unwary consumer ignorant of the absence of connection between the Complainant and the Respondent will assume that the Complainant endorses the activities displayed on the Respondent's website, thus tarnishing the Complainant's reputation. According to the Complainant the website does not promote any brand or company and is thus only "eyewash" hiding the ulterior motive of the Respondent which is to promote an adult dating web service. The Complainant also asserts the mala fides of the Respondent which is evident from its registration of a domain name incorporating the Complainant's well-known trademark, preventing the latter from using it for legitimate commercial services and tarnishing its reputation.
Further the Complainant asserts that it has overwhelming statutory and common law rights in the mark TATA and associated figurative marks, precluding any rights or interests in the TATA mark from vesting in the Respondent. The latter has received no authorization or consent from the Complainant to use its mark in any way or incorporate it in a domain name. The TATA trademark is exclusively used by the Complainant and its associated companies and there is no plausible explanation for the use of that term by the Respondent, the Complainant asserts.
Further the Complainant asserts that the Respondent has constructive notice of the rights of the Complainant in the TATA trademark because of the latter's widespread use, registrations and reputation of the mark. The Complainant asserts that there cannot be any doubt that the Respondent was aware of the reputation of the Complainant in the trademark TATA prior to the registration of the disputed domain name in 2000. According to the Complainant the Respondent's actions are mala fide as they rely on initial interest confusion to bait consumers to visit the Respondent's website, which is concerned only with adult dating and pornography. This is a typical cyber-squatting strategy often resulting in demands from trademark owners for valuable consideration for the domain name concerned, at the risk of suffering continued dilution and tarnishment of its mark. In any case the unauthorized registration of domain names containing well-known trademarks in their entirety has often been held to amount to bad faith in UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant's contentions. Further to the Center's notification of Respondent Default, the Respondent sent an email communication noting that he will simply wait for the administrative panel's decision. 6. Discussion and Findings
In relation to the delay in the Complainant's filing of this Complaint, given that the disputed domain name was registered on April 17, 2000 and last updated on April 7, 2014, the disputed domain name is not of a kind to accumulate goodwill in the Respondent even over a long period of time. Further, the activities associated with the disputed domain name are not of a kind related to any part of the disputed domain name, or its inherent or any putative acquired meaning. The website to which the disputed domain name resolves is concerned with dating services and pornography. There is no positive obligation for a complainant to act within a certain delay and it is entirely possible that the Complainant only recently became aware of the activities associated with the disputed domain name. A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's TATA trademark. However, it contains that trademark in its entirety and as its first and most prominent part. Further, the disputed domain name also contains a generic term with a well understood English meaning. The combination of the mark TATA and the term "wires" has no meaning other than to suggest that the website to which it resolves is connected with the provision of goods of that kind under the TATA brand. The Complainant is a large and widely diversified industrial conglomerate. One of its significant activities is the manufacture and sale of galvanized wire. The suggestion inherent in the disputed domain name is of a connection with the Complainant's wire business or simply with one of the many industrial activities with which the Complainant is associated. This connection does not in fact exist, resulting in consumer deception and confusion. In any case many previous Panels have decided that a distinctive trademark combined with a generic term results in confusing similarity.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's TATA trademark. B. Rights or Legitimate Interests
The Respondent, upon receipt of its Notice of Respondent Default, in correspondence with the Center expressly chose not to request an extension of time within which to file a Response. The Respondent has thus neither asserted nor provided support for any rights or legitimate interests vesting in it. The Complainant has neither authorized nor licensed the Respondent in relation to any use of its distinctive TATA trademark. Nothing indicates that the Respondent is known in any way by reference to the word "Tata" nor does it have any legitimate activities that might justify its use of the word "Tata". The TATA trademark is one of long standing, used by the Complainant in a wide variety of fields and is non-generic. The incorporation without authority of such a trademark in a domain name for the purpose of registration by an unrelated party cannot but in exceptional circumstances give rise to rights or legitimate interests vesting in the registrant. There is no indication of any legitimate noncommercial or fair use; rather, the disputed domain name resolves to a website where adult dating services and pornography are offered.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was registered in 2000. Nonetheless at that time the reputation of the Complainant vesting in its TATA trademark was already well established. The Respondent has done nothing in the intervening period to justify its acquisition of the disputed domain name or vest rights in it or make a case supporting its acquisition of some legitimate interest. In fact the Respondent has used the disputed domain name to bait consumers into visiting its website and then presenting adult material that is totally unrelated to the Complainant's goods and services, thus accruing some commercial or financial advantage. The Respondent relies on consumer deception to profit from the Complainant's extensive reputation in its TATA trademark. The unauthorized incorporation in a domain name of a well-established trademark used for a wide variety of industrial goods and services and known in many jurisdictions is in itself an act of bad faith.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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.
William A. Van Caenegem
Sole Panelist
Date: October 2, 2015
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