The Complainant is Tata Motors Limited, India, represented by DePenning & DePenning, India.
The Respondent is liu lei, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 October 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email communication to the Parties in English and Chinese regarding the language of the proceeding. The Complainant filed an amended Complaint in Chinese on October 11, 2019, however, the Complainant also submitted a request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on October 18, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was November 7, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 8, 2019. On November 8, 2019, a third party’s email was received. The Center replied to the third party’s email on November 8, 2019, requesting the sender of the email to identify herself or himself and clarify her/his relationship (if any) to the Respondent. However, the Center did not receive any further communication from the third party. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on November 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. 4. Factual Background The Complainant is a company active in the automotive industry, headquartered in India. Since 1954, the Complainant has developed and manufactured a number of passenger and utility vehicle models in India. The Complainant has also expanded its business outside of India, both through exportation and through the establishment of subsidiaries and joint venture companies in countries such as the United Kingdom, Republic of Korea, Thailand, Spain, Bangladesh, Ukraine, Senegal and South Africa. One of the Complainant’s business lines is branded “TATA OK”, which is a business model whereby the Complainant certifies the quality of second hand vehicles put up for sale. The Complainant and its parent company Tata Sons Limited own a portfolio of trademark registrations for, respectively, TATA and TATA OK in India, e.g., for TATA: Indian trademark registration number 299110, applied on September 10, 1974 and remains active; and for TATA OK: Indian trademark registration number 1965647, applied on May 14, 2010 and remains active. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on October 29, 2018. The Complainant provides evidence that the disputed domain name directs to an active website, which contains the words for “welcome” in several languages and offers “IIS7 Internet information services”. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical to its trademarks for TATA OK, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are famous and well regarded in the automotive industry, and provides evidence of its marketing materials as well as a court judgment and prior UDRP panel decisions (e.g., Tata Motors Limited v. Vaidehi Jha, Freelancer,WIPO Case No. D2014-1244), which state that the Complainant and its TATA and TATA OK marks are well known. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, which offers “IIS7 internet information services”. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Panel notes that the Center received an email from a third party stating “this domain name has been held by us.” The Center requested this third party to clarify her/his relationship with the named Respondent. No further communication was received from this third party. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant stated in its Complaint that it could not know the language of the Registration Agreement until it filed the Complaint, and that it therefore filed such Complaint in English, requesting that the language of the proceeding be English. Upon confirmation by the Center that the language of the Registration Agreement was Chinese, the Complainant submitted an amended Complaint in Chinese on October 11, 2019. Given the language used in the Complaint and amended Complaint and the circumstances of this case, the Center accepted the Complaint as filed in English, the amended Complaint as filed in Chinese, invited the Respondent to file a Response in either English or Chinese, and appointed the present Panel, which is familiar with both English and Chinese. In considering the Complainant’s request that the language of the proceeding be English, the Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to review the Complaint in English and the amended Complaint in Chinese, and could also put forward arguments in either English or Chinese); the fact that the Complainant provides evidence that the disputed domain name resolved to an active webpage, containing text in several languages, including in English, so that the Panel concludes that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the merits The Policy requires the Complainant to prove three elements: (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. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has provided sufficient evidence that it has valid and sufficient rights in both the TATA and the TATA OK marks, based on the use and registration of the same as trademarks by, respectively, the Complainant and by Tata Sons Limited, of which the Complainant is an affiliate. As to the TATA OK mark, the Panel accepts that the Complainant has standing to also rely on this mark, in its capacity as a licensee and as a subsidiary of the trademark owner (i.e., Tata Sons Limited), see in this regard also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1: “a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” Moreover, as to identity or confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of only the TATA OK trademark, in which the Complainant owns rights. The Top Level Domain “.com” can be disregarded as a standard registration requirement, see WIPO Overview 3.0, section 1.11. Accordingly, the Panel rules that the disputed domain name is identical to the Complainant’s TATA OK trademarks, and the first element required by the Policy has been fulfilled. B. Rights or Legitimate Interests The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. To the contrary, the use of the disputed domain name, which is identical to the Complainant’s trademark, to mislead Internet users into visiting the website linked to the disputed domain name, offering “IIS7 internet information services”, shows the Respondent’s intention to divert consumers for commercial gain, by taking unfair advantage of the goodwill and reputation of the trademark TATA OK. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy. C. Registered and Used in Bad Faith Given the strong reputation and fame of the Complainant’s trademark, further confirmed by an earlier Indian court judgment as well as earlier UDRP panel decisions, adduced by the Complainant (e.g. Tata Motors Limited v. Vaidehi Jha, Freelancer,supra), the registration of the disputed domain name, which is identical to such trademark, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in TATA and TATA OK and uses these extensively. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name was linked to an active website, using a variety of languages, and offering “IIS7 internet information services”. The Panel rules that the use of the disputed domain name, which is identical to the Complainant’s mark, to direct Internet users to a website offering third party “internet information services”, is a clear case of bad faith use of the disputed domain name. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under the Policy. 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, Deanna Wong Wai Man
Sole Panelist
Date: December 9, 2019
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