The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is DVLPMNT MARKETING, INC. of Charlestown, Saint Kitts and Nevis, represented by Faia & Associates, LLC, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with DNC Holdings, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2018, 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 Complainant filed an amended Complaint on July 31, 2018, to address an administrative formality.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Response was filed with the Center on August 20, 2018.
The Center appointed Andrea Mondini as the sole panelist in this matter on August 23, 2018. 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 a leading manufacturer of commercial and passenger vehicles.
The Complainant is the owner of the Indian registration No. 3357314 for the trademark HARRIER, filed on September 7, 2016, in class 12.
The disputed domain name was registered on December 23, 1992 and transferred to the Respondent on October 3, 2013. The disputed domain name resolves to an inactive page. 5. Parties' Contentions A. Complainant
The Complainant contends in essence:
- that it intends to launch a vehicle under the trademark HARRIER at the 2018 Auto Expo;
- that for such vehicle, the trademark HARRIER will be used independently or in conjunction with the well-known trademark TATA;
- that in view of the popularity of the trademark HARRIER and its association with the TATA mark, the adoption and/or usage of HARRIER by others would amount to not only dilution of the Complainant's right over the mark, but would also result in misuse of the trade mark for individual benefit;
- that the Respondent's domain name is identical to the trade mark of the Complainant, HARRIER;
- that the Respondent has no rights / legitimate interest in the domain name because it has not made any legitimate offering of goods or services under the mark HARRIER through the disputed domain name;
- that the disputed domain name has been registered and used in bad faith, because the Respondent has not made any legitimate offering of goods or services under the Complainant's trademark HARRIER through the disputed domain name. Hence, the Respondent being aware of the Complainant's HARRIER trademark would try to usurp the reputation and goodwill of the Complainant's trademark HARRIER through the disputed domain name. B. Respondent
The Respondent contends in essence:
- that the Respondent purchased the disputed domain name on October 3, 2013, thereby becoming the registrant;
- that, therefore, the Respondent's ownership of the disputed domain name predates the Complainant's registration of the HARRIER mark by three years and the Complainant's intended use of this mark on its future SUV goods by five years;
- that because the Respondent's domain name predates the acquisition of the Complainant's rights in the name, there is no bad faith on the part of the Respondent;
- that there is no evidence demonstrating that the Respondent has offered to sell the disputed domain name to the Complainant;
- that there is nothing on the Respondent's Website that is injurious to either the Complainant or the Complainant's goods it sells or will eventually sell;
- that there are no goods or services offered by competitors of the Complainant displayed on any website connected to the disputed domain name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the 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. A. Identical or Confusingly Similar
The Complainant has shown that it holds the Indian registration no. 3357314 for the trademark HARRIER, filed on September 7, 2016, in class 12. This trademark is identical to the disputed domain name.
The fact that the disputed domain name has been registered and transferred to the Respondent before the Complainant has acquired trademark rights does not by itself preclude the Complainant's standing to file a UDRP case, nor a finding of identity or confusing similarity under the first element.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is undisputed that there is no relationship whatsoever between the Complainant and the Respondent. The Complainant has further shown that the disputed domain name resolves to an inactive website. None of the other circumstances set out in paragraph 4(c) of the Policy have been shown.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent has not come forward with any evidence of rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie showing. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent purchased the disputed domain name on October 3, 2013, thereby becoming the registrant. Therefore, the Respondent's ownership of the disputed domain name predates the Complainant's registration of the HARRIER trademark by approximately three years and the Complainant's intended use of the mark on its future SUV goods by approximately five years.
Because the Respondent acquired the disputed domain name before the Complainant's trademark rights accrued, the Panel finds that the disputed domain name has not been registered and used in bad faith by the Respondent.
In particular, there is no evidence that the Respondent would have offered to sell the disputed domain name to the Complainant. The website connected to the disputed domain does not offer any goods or services of competitors of the Complainant, nor other information injurious to the Complainant.
The Panel therefore finds that the Complainant has not satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrea Mondini
Sole Panelist
Date: August 27, 2018
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