The Complainant is Tata Motors Limited, India, represented by DePenning & DePenning, India.
The Respondent is WhoisGuard Inc., Panama / Kt Kt, India. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2019, 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 the Complainant on June 17, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 2, 2019.
The Center verified that the Complaint together with the amendment to 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 July 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. On July 19, 2019, the Respondent sent informal email communications to the Center. On July 22, 2019, the Center emailed the Parties regarding possible settlement. On July 23, 2019, the Respondent requested an automatic four-day extension to file a Response. The Center granted the extension on July 24, 2019, and the due date to file a Response was extended to July 27, 2019. On July 24, 2019, the Complainant sent an informal email communication to the Center. On July 25, 2019, the Complainant requested the suspension of the proceedings, and the Center issued the Notification of Suspension on the same day. The Complainant sent settlement forms to the Center on July 26, 2019, August 2, 2019, and August 5, 2019, signed only by the Complainant. The Respondent sent an informal email communication seeking clarification on the standard settlement form on August 7, 2019. The Complainant sent an informal email communication to the Center on August 16, 2019, and on August 22, 2019. The Respondent thereafter requested an extension of the suspension period on August 27, 2019, which was agreed by the Complainant on August 28, 2019. The Respondent sent an informal email communication to the Center on August 30, 2019 seeking clarification on payment of fees as regards the settlement. The Center issued the Notification of Extension to Suspension on August 30, 2019. The Respondent submitted the settlement form to the Center on September 4, 2019. The Respondent sent informal email communications to the Center on September 11, 2019 as regards clarifying its choice in the settlement form. The Respondent did not submit any response. Subsequent to the notification of reinstitution of proceedings on September 13, 2019, the Respondent sought extension for filing the response on the said date.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on September 25, 2019. 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.
The Respondent thereafter on October 6, 2019 submitted a late Response and accompanying annexes to the Center, which were forwarded to the Panel for its consideration. 4. Factual Background
The Complainant, Tata Motors Limited, belongs to the Tata Group of Companies and was duly incorporated under the laws of India in the year of 1945. An extract from the website of Ministry of Corporate Affairs in support of the said fact has been attached by the Complainant as Annex 4 to the Complaint. Previously known as Tata Engineering and Locomotives Company, the Complainant started manufacturing commercial vehicles in India in the year 1954 in collaboration with M/s Daimler Benz of Germany.
The Complainant since claims to have developed a range of diverse vehicles including “Tata Ace”, India’s first indigenous light commercial vehicle; “Safari”, India’s first sports utility vehicle; “Indica”, India’s first indigenously manufactured passenger car; and “Nano”, the world’s most affordable car.
According to the Complaint, the Complainant is India’s market leader in commercial vehicles and is ranked amongst the top four in the passenger vehicles segment. The Complainant also claims that it is ranked among the top five commercial vehicle manufacturers in the world and is the world’s fourth-largest truck and bus manufacturer.
The Complainant claims to be carrying out worldwide operations in United Kingdom (“UK”), Republic of Korea, Thailand, Spain and South Africa through its subsidiaries and associate companies. The Complainant’s commercial and passenger vehicles are being marketed in several countries in Europe, Africa, the Middle East, South Asia, South East Asia and South America and it claims to have franchisee / joint venture assembly operations in Bangladesh, Ukraine and Senegal.
The Complainant claims that a new generation hatchback vehicle about to be launched by them is called “Altroz” which is based on an Agile, Light, Flexible and Advanced (“ALFA”) platform, developed by the Complainant. It apparently comes with several unique features and strengths which have has already garnered popularity amongst car enthusiasts and customers.
The Complainant’s ALTROZ vehicle was unveiled at the 2019 Geneva Motor Show and promoted under the trademark ALTROZ and TATA ALTROZ. Extracts of promotional articles, featuring images and video clips of the vehicle where the name “Altroz” has been attached by the Complainant as Annex 5 to the Complaint.
The Complainant is the proprietor of the trademark TATA, registered in India in 1978 (registration No. 299110, registered on September 10, 1974) under Class 12 of the Trademarks Act, 1999 (Vehicles, apparatus for locomotion by land, air or water). An extract of the trademarks journal page and the last renewal notification have been attached by the Complainant as Annex 6 to the Complaint. The Complainant further appears to have an enormous presence on the Internet and owns several domain names comprising the word “tata” in various jurisdictions across the globe, including India. Further, the Complainant also owns domain names comprising the word “altroz”, a list of which has been outlined in paragraph 11(vii) of the Complaint.
The Respondent has registered the disputed domain name on February 22, 2019. The disputed domain name resolves to a standard registrar parking website with sponsored listings/pay-per-click (“PPC”) links redirecting Internet users to third-party websites . An extract from the website hosted on the disputed domain name is attached as Annex 2 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are fully applicable to the instant dispute .
In accordance with paragraph 4(a)(i) of the Policy, the Complainant states that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the word “tata” forms an important part of the corporate name of the Complainant and other companies belonging to Tata Group of Companies. The Complainant states that in respect of business carried on by the Complainant and its associated companies, their products and services have come to be associated by the consumers, the members of the public, international and domestic business houses exclusively with the Tata Group of Companies.
The Complainant contends that the word “tata” has also been adopted as a trademark and has been extensively used in respect of the products and services manufactured and rendered by the companies belonging to Tata Group of Companies. The Complainant states that it along with its associated companies are the registered proprietors of various trademarks containing the word “tata”. The Complainant contends that the said trademarks are registered in different classes, the earliest valid registration for which dates back to the year 1951. The Complainant in this regard has placed special reliance on its trademark registration No. 299110 for the mark TATA under Class 12 of the Trademarks Act, 1999 (Vehicles, apparatus for locomotion by land, air or water). As per the Complaint, it also owns several domain names comprising the trademark TATA in various jurisdictions around the world.
The Complainant states that various judicial forums, including the Delhi High Court, as well as the Center, in numerous cases have recognized and upheld the rights of the Complainant and the TATA Group of Companies in the well-known mark TATA. The Complainant in this regard has placed reliance on following UDRP decisions namely: Tata Motors Limited Vs Vaidehi Jha, Freelancer,WIPO Case No. D2014-1244; and Tata Motors Limited Vs Dhanush Pilo,Pilokraft/Domain Admain,WIPO Case No. D2014-1955. Copies of the said UDRP decisions relied upon by the Complainant have been attached as Annex 7 to the Complaint.
The Complainant states that in view of the well-known and iconic status of the TATA trademark, sub-brands such as ALTROZ have also acquired immense popularity even before actual market launch. The Complainant contends that the Respondent has wrongfully and fraudulently adopted and registered the disputed domain name in order to encash upon the goodwill and reputation associated with the well-known trademark TATA as well as the name “tata altroz” inspite of having full knowledge of the Complainant’s iconic stature in India and internationally.
The Complainant states that neither it nor any entity belonging to the Tata Group of Companies has licensed or otherwise permitted the Respondent to use the name or trademark “TATA Altroz” or apply for or use any domain name incorporating the said name or trademark.
The Complainant contends that the disputed domain name when searched on Google Chrome is directly linked to various sites promoting the Complainant’s “TATA Altroz” vehicle. The Complainant states that such use of the disputed domain name constitutes bad faith registration under the Policy. In support of the said claim, the Complainant places reliance on previous UDRP decisions of Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768, and The Nasdaq Stock Market, Inc. Vs Vidudala Prasad,WIPO Case No. D2001-1493.
In relation to paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name . The Complainant states that the Respondent has not made any legitimate offering of goods or services under the name or mark TATA Altroz through the disputed domain name. The Complainant contends that the sole purpose of the Respondent registering the disputed domain name was to misappropriate the reputation of the Complainant’s name or trademark “TATA Altroz”.
Lastly under paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that it has been upheld in various precedents that domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. The Complainant contends that business transactions are primarily being carried out only through Internet addresses rather than street addresses post boxes or faxes and hence argues that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act. B. Respondent
The Respondent in the present proceedings did not file its Response within the stipulated period and the deadline for the same expired on July 27, 2019. The Respondent, despite being notified of the said default by the Center, has submitted a Response with Annexes to the Center on October 6, 2019 as a rebuttal to the allegations of the Complainant.
The Panel observes that paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the Complaint. Paragraph 14(a) of the Rules however is to be counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case. Taking into consideration all the attendant circumstances of the instant case and in light of the fact that the Response and the accompanying Annexes had been submitted by the Respondent before a final decision was issued by the Panel, in order to ensure completeness of record as well as procedural fairness, the Response, and the accompanying Annexes, have been duly considered by the Panel.
Brief arguments of the Respondent as is set out from its Response and the accompanying Annexes is as under:
i. The Complainant does not have any in rights the name/mark “Altroz” or “TATA Altroz” as it lacks trademark registrations for the same.
ii. The word “tata” is a common word used daily, the dictionary meaning of which is goodbye and consequently the Complainant cannot claim exclusive rights.
iii. The website hosted on the disputed domain name is inactive and is not necessarily fatal to the Complainant.
iv. The Respondent is not a business competitor of the Complainant in any way and the Complainant has not furnished any proof in support of the same. 6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy.
The Panel has perused the entire correspondence exchanged between the Center, the Complainant and the Respondent and notes that the Respondent, until about October 6, 2019, made no attempt to respond directly to the allegations of the Complaint or articulate any legitimate reason for its registration of the disputed domain name or even counter the charge that the Respondent has registered and used the disputed domain name in bad faith. On the contrary, the Panel observes that the Respondent initiated settlement talks with the Complainant, which could not fructify into a settlement as there was no agreement between the Parties on the critical action concerning the disputed domain name, i.e., its transfer to the Complainant or its cancellation.
The Panel notes that the initial deadline for the Respondent to submit its Response was on July 23, 2019. The Respondent submitted a request for extension of the Response due date, which was granted by the Center under paragraph 5(b) of the Rules. The Panel therefore duly considered whether the Respondent’s email dated September 13, 2019 seeking another extension of time for submitting its Response should be considered or not. Under Rules 10(a) and (d), this determination is solely within the discretion of the Panel.
The Panel notes that as the said email had been sent by the Respondent on the same day that the present proceedings, as detailed under section 3 of this Decision, had been reinstituted by the Center, and the Panel had been appointed. Since the Panel had begun any substantive review of this matter, it was appropriate to consider the said email.
The Panel therefore found no extraordinary or compelling reasons for extending the time for the Respondent to submit its Response as it would have been unfair to the Complainant, who was expecting an expedited resolution of domain name dispute pursuant to the Rules. The said fact was duly communicated to the Respondent by the Center on October 4, 2019. The Respondent thereafter on October 6, 2019 submitted a late Response and accompanying Annexes as a rebuttal to the Complainant’s allegations.
Although the Panel did not find any exceptional circumstances justifying the belated submission of Response and the accompanying Annexes by the Respondent in the facts of the instant case, the Panel has still reviewed the same to ensure procedural fairness and completeness of record, pursuant to the general powers and responsibilities of the Panel set out in paragraph 10(b) of the Rules.
Under paragraph 4(a) of the Policy, the Complainant must prove, each of the following three elements required under by a preponderance of evidence:
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. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), section 1.2.1).
The Complainant has furnished evidence of its rights in the trademark TATA. The trademark TATA has been registered in favor of the Complainant under trademark registration No. 299110 in class 12 in India since September 10, 1974, well before the Respondent had registered the disputed domain name on February 22, 2019. Valid and subsisting trademark registrations constitute prima facie evidence of ownership, validity and the exclusive right to the use the said trademarks in connection with the stated goods and services.
The Panel notes that previous UDRP panels have recognized the rights of the Complainant and the TATA Group of Companies in the trademark TATA (Annex 7 to the present Complaint).
In addition, according to the information furnished by the Complainant, it is the registrant of a large number of domain names comprising the trademark TATA in various jurisdictions across the globe including India. The Panel observes that most of the said domain names had been registered by the Complainant much prior to the date of registration of the disputed domain name.
The Panel notes that the disputed domain name incorporates the Complainant’s registered trademark TATA in its entirety. Further, the disputed domain name also contains the name of the Complainant’s new generation hatchback vehicle named “ Altroz”which is all set for a formal market launch shortly. The Panel notes that the said vehicle has been written about in the media where it is referred as “TATA Altroz”, given that it originates from the Complainant and belongs to the Tata Group of Companies (see Annex 5 to the present Complaint).
The Complainant owns various domain names comprising the name “Altroz” such as , and , and the Panel observes that that the date of registration of these domain names is February, 11, 2019, which predates the date of registration of the disputed domain name on February 22, 2019.
Though the Complainant has not furnished proof of the date of registration of its domain names comprising the trademarks TATA, TATA MOTORS, and “Altroz”, the Panel has independently visited the Internet in order to obtain additional light on the matter, which power of the Panel has been read into paragraph 10(a) of the Rules by several UDRP decisions. See, Société des Produits Nestlé SA v. Telmex Management Services,WIPO Case No. D2002-0070; and InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076).
The Respondent has relied on extracts of records of the Indian Trademark Registry, filed as Annexes 1 and 2, to contend that the Complainant does not have trademark registrations for “Altroz” or “Tata Altroz”. The Panel has reviewed the Annexes as well as has independently verified the online records of the Indian Trademark Registry.
The Panel notes that the Complainant’s trademark Applications for “Altroz” (Trademark Application no. 4077883 in Class 12 applied on February,5, 2019), and “TATA Altroz” (Trademark Application no. 4096629 in Class 12 applied on February, 22, 2019) have been examined and office objections raised to the same by the Trademarks Registry, replies to which have been filed by the Respondent and which matters are accordingly listed for show cause hearings before the Trademark Office.
Specifically, the Panel notes that the trademark TATA is also included in the “List of Well-Known Trademarks” appearing on the website of the Indian Trademark Registry Office, which also recognizes the rights of the TATA Group of Companies in the said trademark and accordingly the Panel holds that the reliance by the Respondent on Annexes 1 and 2 is devoid of any merit.
In any event, numerous UDRP decisions have recognized that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Oki Data Americas, Inc. v. the ASD, Inc,WIPO Case No. D2001-0903 and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Further, WIPO Overview 3.0, section 1.11, states that generic Top-Level Domain (“gTLD”) indicators (e.g.,“.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test.
This Panel therefore concludes that since the registered trademark TATA of the Complainant is recognizable within the disputed domain name, coupled with the name “Altroz”, an invented word over which the Complainant clearly has common law rights, by virtue of having adopted it at a prior point in time, registered domain names such as , , and , and that the disputed domain name is confusingly similar to the Complainant’s registered TATA trademark.
The Panel accordingly finds that the requirement of paragraph 4(a)(i) of the Policy stands satisfied to the effect that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests:
Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent lacks rights or legitimate interests in the disputed domain name.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”.
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain name by proving any of the following circumstances:
i. before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has perused the Response and the accompanying Annexes furnished by the Respondent and on the basis of material produced by the Complainant and the Respondent as well as its independent Internet searches has arrived at the following conclusions:
The Complainant is the registered proprietor and owner of the trademark TATA in respect of which has accrued in the Complainant’s favor, long prior to the Respondent’s registration of the disputed domain name on February, 22, 2019. The Complainant’s new generation hatchback vehicle “Altroz” currently awaiting formal launch, is popularly referred to as “TATA Altroz”, being closely associated with the Complainant and enjoys popularity amongst car enthusiasts and in the trade, even before actual market launch. The Complainant also owns several domain names comprising the trademark TATA as well as the name “Altroz”, the date of registration of all of which predates the date of registration of the disputed domain name on February 22, 2019.
The Respondent’s name as per the information disclosed by the Registrar is one “kt kt” located in Tirupati, India, and is not commonly known by the names “tata” or “tata altroz”.
The Panel has duly perused Annex 3 as has been submitted by the Respondent with its Response contending that “ta-ta” is an English word, the dictionary meaning of which means goodbye and that consequently the Complainant cannot claim exclusive rights on it. As regards the said submission, the Panel notes that it has been established that the Complainant belongs to the globally Tata Group of Companies, all constituent companies of which use “Tata” as a part of their corporate name and are engaged in providing a diverse range of goods and services under the trademark TATA. The earliest trademark registration for TATA in favour of the Complainant dates back to the year 1974. The Complainant has also furnished proof of its statutory rights in the trademark TATA dating back to the year 1974.
In light of the prior adoption, use and registration of the mark TATA by the Complainant, the reliance placed by the Respondent on Annex 3 of the Response does serve to establish a legally sustainable defense in the Respondent’s favour. The Respondent accordingly appears to be a cybersquatter who has registered the disputed domain name comprising the Complainant’s registered trademark TATA, and the name of the Complainant’s vehicle, popularly referred to as “TATA Altroz”, to encash upon the goodwill and reputation associated with the same by creating a misimpression of association with the Complainant and the Tata Group of Companies. The Panel notes that the Respondent has not provided evidence that the disputed domain name is used in connection with the dictionary meaning. On the contrary, the disputed domain name is being used to trade off the Complainant’s trademark rights. Accordingly, paragraph 4(c)(ii) of the Policy is inapplicable to the dispute.
It is apparent from the record that the Respondent had not been licensed or permitted by the Complainant and/or any entity belonging to the Tata Group of Companies to either use the name or trademark “TATA Altroz” or TATA, or apply for or use any domain name incorporating the said name/registered trademark of the Complainant.
The disputed domain name at the time of filing of the instant Complaint resolved to a website featuring third party sponsored listings PPC links and was commercial in character. According to the Complainant, the website hosted on the disputed domain name was directly linked to various sites promoting the “TATA Altroz” vehicle. The Panel has reviewed the extract of the website hosted on the disputed domain name attached as Annex 2 to the Complaint and observes that while the said extract does contain third party sponsored listings/PPC links, no further proof has been furnished by the Complainant to demonstrate that the said links were directly linked to sites promoting the “TATA Altroz” vehicle. Notwithstanding, the said fact, given that sponsored links/PPC links were featured on the website hosted on the disputed domain name, the said website is clearly commercial and is not inactive as has been stated by the Respondent in its Response. Accordingly, paragraph 4(c)(iii) of the Policy is inapplicable to the dispute.
Section 2.9 of the WIPO Overview 3.0 sets out that while applying paragraph 4(c) of the Policy, UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s trademark or otherwise mislead Internet users. In the opinion of the Panel, the Respondent has registered the disputed domain name only to confuse Internet users by capitalizing on the reputation and goodwill accruing to the trademark TATA. The contention of the Respondent that it is not a business competitor of the Complainant or that the Complainant has not furnished any proof in support of the same is therefore of no consequence.
The Panel finds no evidence of use or demonstrable preparations to use the disputed domain name by the Respondent in connection with a bona fide offering of goods or services that would warrant the registration of the disputed domain name (paragraph 4(c)(i) of the Policy). The Respondent further has not been found by the Panel to be making a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to the Policy, bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that Section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a registered and widely known trademark, by an unaffiliated entity can itself create a presumption of bad faith.
Previous UDRP panels have consistently found that it ought to be presumed that the Respondent had constructive notice of the Complainant’s trademark if it is shown by the Complainant to be well known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain name. See, The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
In the backdrop of the Complainant’s extensive use, widespread business activities and trademark registrations for the mark TATA coupled with large scale media coverage of the Complainant’s vehicle popularly called “ TATA Altroz” in India, where the Respondent is apparently domiciled, it is highly unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark TATA as well as “Tata Altroz” vehicle.
From a perusal of Annex 2 to the Complainant, it also appears that the third party sponsored listings/PPC links featured on the website hosted on the disputed domain name are automatically generated.
Particularly with respect to “automatically” generated PPC links, section 3.5 of the WIPO Overview 3.0 makes it clear that a respondent cannot disclaim responsibility for content appearing on the website associated with the disputed domain name (nor would such links ipso facto vest the Respondent with rights or legitimate interests in the disputed domain name). The fact that such links are generated by a third party or the fact that the Respondent itself may not have directly profited, would not preclude a finding of bad faith. See, SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497.
Further, when a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see Owens Corning v. NA, WIPO Case No. D2007-1143 and McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353.
It is apparent that the disputed domain name has been registered only to derive benefit from or create an impression that the same is associated, sponsored, affiliated or endorsed by the Complainant, which is false and misleading. The website operated by the Respondent at the disputed domain name comprises a series of “click through” links to other third-party websites.
The Respondent has registered and is using the disputed domain name in bad faith to usurp upon the goodwill, reputation and fame accruing to the trademark TATA of the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the conditions stipulated under paragraph 4(a)(iii) of the Policy also stand 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.
Shwetasree Majumder
Sole Panelist
Date: October 14, 2019
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