The Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Pierre Shami of San Rafael, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2016, 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 April 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 1, 2016. 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 is Tata Sons Limited, an Indian company with seat in Mumbai, India. The Complainant established in 1917 as a body corporate.
According to the Complainant, its group companies, subsidiaries and other promoted companies constitute India’s oldest and largest private-sector employer. In addition, the Complainant argues that all of the companies and subsidiaries that comprise the Complainant’s corporate group, have laid the foundation of several industrial sectors as textiles, iron, steel, power, chemicals, hotels, automobiles, computers, software, electronics, telecommunications, financial services, tea, aviation, retail, etc.
The Complainant is the owner of several trademark registrations in India and other jurisdictions, including the following: Trademark Registration Number Class
Registration Date Country
TATA
92655
1
October 1, 1945
India
TATA
92649
2
October 1, 1946
India
TATA
131196
3
December 1, 1948
India
TATA
6091
4
December 1, 1945
India
TATA
92651
5
June 1, 1945
India
TATA
92644
6
August 1, 1945
India
TATA
362742
7
November 1, 1991
India
TATA
92643
8
October 1, 1945
India
TATA
6089
9
December 1, 1945
India
TATA
585061
10
April 1, 2004
India
TATA
585721
11
August 16, 2001
India
TATA
838428
12
April 15, 2005
India
TATA
92642
13
July 1, 1945
India
TATA
838430
14
September 15, 2005
India
TATA
838431
15
July 1, 2003
India
TATA
4615812
12
October 7, 2014
United States
TATA
3963247
36, 38
May 17, 2011
United States
A TATA ENTERPRISE
3851682
30
September 21, 2010
United States
TATA CONSULTANCY SERVICES
2814916
9
February 17, 2004
United States
T TATA
3820084
37
July 20, 2010
United States
TATA NANO
3756475
12
March 9, 2010
United States
The Complainant claims that due to its unparalleled reputation and goodwill, the trademarks TATA have been acknowledged as well known.
The Complainant is also the owner of the following domain names, among others:
The Respondent is Pierre Shami, with domicile in San Rafael, California, United States. The disputed domain name was registered on February 24, 2011. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant claims:
That the disputed domain name is identical to its well-known trademark TATA.
That the Complainant has overwhelming common law as well as statutory rights in its TATA mark.
That the disputed domain name attempts to associate itself with the Complainant’s online service at “www.” by incorporating the Complainant’s trademark in full.
That the use of the word “tata” would be understood as a reference to the Complainant as it is a registered and well-known trademark.
That Internet users or the general public that do not know that the Complainant and the Respondent have no affiliation with each other will confuse the Respondent with the Complainant.
That the trademark TATA has acquired a distinctive connotation and identity of its own. That due to its distinctive nature and popularity in several fields, it has become a well-known trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
That the Complainant has statutory and common law rights in the mark TATA, and therefore is the sole, legitimate owner thereof.
That the Complainant has not licensed or otherwise permitted the Respondent to use its mark TATA, or authorized it to apply for any domain name incorporating said mark.
That the Respondent’s use of the disputed domain name is trading on the fame and recognition of the Complainant’s well-known trademark to cause confusion and bait Internet users into accessing the website to which the disputed domain name resolves.
That the Respondent registered the disputed domain name to make unjust gains by depriving the Complainant of its rights of reflecting the mark in a corresponding domain name.
That, since the mark TATA and various TATA formative marks are exclusively being used by the Complainant, there is no plausible explanation for the Respondent’s use of TATA in the disputed domain name.
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant argues that the Respondent had constructive notice of the Complainant’s rights in the mark TATA by virtue of the Complainant’s widespread use, worldwide reputation and global registrations.
That the disputed domain name was created by the Respondent to deliberately acquire a domain name that is confusingly similar to the Complainant’s trademarks, thus being of substantial interest to the Complainant.
That the Respondent was aware of the commercial value and significance of the various domain names owned by the Complainant.
That the website to which the disputed domain name resolves is being used by the Respondent to provide advertising space to pay-per-click websites that offer links to other sites. That the Respondent is thereby earning revenue by obtaining click-through commissions.
That the visitors to the Respondent’s website will be induced to think that the Complainant has licensed their trademark to the Respondent, and that the Respondent has some connection with the Complainant’s company group. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to file a response to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292). A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for TATA in many jurisdictions, including the United States, where the Respondent has declared to have his domicile.
The disputed domain name is confusingly similar to the Complainant’s trademark TATA, as it includes said trademark in its entirety.
The addition of the generic Top-Level Domain (“gTLD”) “.com” in this case is immaterial for purposes of assessing confusing similarity. For the referenced reason, the Panel will not take into account the gTLD “.com” (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
Furthermore, although the disputed domain name also includes the word “treats”, said fact does not exempt it from a finding of confusing similarity in connection to the Complainant’s trademarks. This Panel notes that, according to Exhibit U of the Complaint, the Complainant currently holds a vast number of domain names comprising the mark TATA followed by words describing a product or service, therefore, the inclusion of the word “treats” does not diminish the confusion between the disputed domain name and the trademarks owned by the Complainant (see, British Telecommunications public limited company v. Joshua Stone, Openreach Telecom Ltd.,WIPO Case No. D2015-0162; and Nordea Bank AB v. D,WIPO Case No. D2010-1818).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The evidence provided by the Complainant proves its ownership over several trademarks in many jurisdictions, which largely predate the registration of the disputed domain name. The Panel notes that the trademark TATA has been acknowledged as well-known by other UDRP panels (see, Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671; Tata Sons Limited v. Hasmukh Solanki,WIPO Case No. D2001-0974; and Tata Tea Ltd v. Gem Lifts Ltd,WIPO Case No. D2000-1823).
The Respondent’s name, Pierre Shami, does not include, or relate to the word “tata”, and it has not otherwise provided any proof of being commonly known by the disputed domain name.
The consensus view among UDRP panels is that paragraph 4(a)(ii) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests (see, Allianz SE v. Fernando Notario Britez / Oneandone, Private Registration,WIPO Case No. D2013-0279; and Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by asserting that it did not license its trademark TATA to the Respondent, or permitted the Respondent to use said mark. The Respondent did not provide any evidence or argument to contradict said statement.
There is no evidence that allows the Panel to assume the Respondent is making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, according to Exhibit AAF of the Complaint (which has not been disputed by the Respondent), the Respondent has featured on the site to which the disputed domain name resolves, advertising space to pay-per-click websites.
The owner of the disputed domain name has used it to resolve to a website with a pay-per-click service. This indicates that the Respondent is unfairly capitalizing upon, or otherwise taking advantage of, a similarity with the marks of the Complainant. In the circumstances, such use does not provide the Respondent with a right or legitimate interest in the disputed domain name (see, Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins.,WIPO Case No. D2010-1699; and mutatis mutandi Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
There are no signs of the Respondent having rights or legitimate interests with respect to the disputed domain name. Therefore, the second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Given the vast and undisputed evidence provided by the Complainant and the acknowledgement made in various decisions issued under the Policy, this Panel recognizes that the TATA trademarks are widely used and highly recognized. The fact that the Complainant owns several trademark registrations in the United States, where the Respondent has declared to have his domicile, brings weight to the assumption that such recognition could not have gone unnoticed by the Respondent at the moment of registering the disputed domain name.
In light of the above and in the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time when the Respondent registered the disputed domain name, given the widespread use and fame of the Complainant’s trademark TATA. (See, Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Playboy Enterprises International, Inc. v. John Hanley,WIPO Case No. D2014-0618; and Boiron S.A. v. José Antonio Paya Serer,WIPO Case No. D2001-0118.)
Exhibit AAF to the Complaint shows that the website to which the disputed domain name resolves has been used for pay-per-click services. The generation of revenue from domain name parking or other advertising activities may amount to use in bad faith within the scope of the Policy. Since the Respondent is using the disputed domain name in this manner, and because of its similarity to the marks of the Complainant, it is clear that said similarity would lead to the confusion of Internet users, and result in an increased number of Internet users being drawn to the Respondent’s web page, generating an unfair revenue in the favor of the Respondent. (See, Charlotte Ruses Holding, Inc. v. Whois ID Theft Protection,WIPO Case No. D2007-0371; Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244; and Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364.)
As such, the Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to other online locations, by creating a likelihood of confusion with Complainant’s TATA mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site within the meaning of paragraph 4(b)(iv) of the Policy (see Apple Inc. v. Domain Privacy Ltd.,WIPO Case No. D2012-0620).
The third requirement of the Policy has been fulfilled. 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.
Kiyoshi Tsuru
Sole Panelist
Date: June 15, 2016
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