The Complainant is Tata Motors Limited, India, represented by DePenning & DePenning, India.
The Respondent is Hunny Bindra, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2019, 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Center received an informal email communication from the Respondent on November 25, 2019. The Center notified the Parties on November 28, 2019, that it would proceed to panel appointment. The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 11, 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 an entity of the Tata Group and is a leading automobile manufacture of passenger and commercial vehicles. The Complainant uses the TATA trademark and its variants to market its products and services. In the present proceedings, the Complainant relies on two of its Indian registered trademarks, namely the TATA mark, in class 12 bearing registration number 299110, registered on September 10, 1974, and TATA INTRA trademark, in class 12 bearing registration number 3730778, registered on January 18, 2018. The Respondent registered the disputed domain name The Complainant states it was formerly known as Tata Engineering and Locomotive Company and started manufacturing commercial vehicles in 1954 with a 15 years collaboration agreement with Daimler Benz of Germany. The Complainant claims that it is India’s largest automobile company and is among the top five commercial vehicle manufacturers of the world. The Complainant states it has developed vehicles such as Tata Ace, India’s first indigenous light commercial vehicle, the Prima range of trucks, the Ultra range of international standard light commercial vehicles, Safari sport utility vehicle, Indica passenger car and Nano the world’s most affordable car. The Complainant states that it has been exporting its vehicles and has operations in the various countries including, the United Kingdom, the Republic of Korea, Thailand, Spain, and South Africa. Its vehicles are being marketed in several countries in Europe, Africa, Middle East, South Asia and South East Asia, and South America. It has franchisee / joint venture assembly operations in Bangladesh, Ukraine, and Senegal. The Complainant states its official website is at “www.tatamotors.com” The Complainant contends that it adopted the TATA INTRA trademark for its range of compact trucks. The Complainant states that Tata Sons Ltd. is the promoter of the major operating Tata companies and holds significant shareholding in these companies. The trademarks with TATA as a component that are used by various Tata companies, are under license from Tata Sons Ltd., the trademark TATA INTRA is one such mark that is held by Tata Sons Ltd. and is licensed to the Complainant. The Complainant requests for transfer of the disputed domain name on the grounds that: (i) the disputed domain name is identical or confusingly similar to trademarks in which it 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 by the Respondent. B. Respondent The Respondent did not submit a formal Response to the Complainant’s contentions but sent a very brief informal email communication to the Center on November 25, 2019. In that email, the Respondent has stated: “Dear sir The Policy under paragraph 4(a) the Complainant is required to establish three elements to obtain the remedy of transfer of the disputed domain name, these are: (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 lacks rights or legitimate interests in the disputed domain name; and (iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights. The Complainant has provided evidence of its registered trademarks for the TATA trademark and the TATA INTRA trademark, which satisfies the threshold requirement under the first element to establish the Complainant’s rights in the said trademarks. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). (Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of the Policy.) The trademark registration details for the TATA INTRA mark, shows the mark was “proposed to be used” at the time of filing the trademark application. The mark has been accepted by the trademark office and its registered trademark status establishes the Complainant’s use of the said mark in commerce and the Complainant’s rights in the mark. The disputed domain name contains the Complainant’s TATA trademark and the TATA INTRA trademark and is found to be confusingly similar to the trademarks in which the Complainant has rights. The first requirement under paragraph 4(a) of the Policy has therefore been fulfilled by the Complainant. B. Rights or Legitimate Interests The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate rights or legitimate interests in the disputed domain name. The Complainant has argued that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but uses it to redirect Internet users to third party sites through pay-per-click (“PPC”) links. The Complainant has further argued that the Respondent seeks to misappropriate the reputation associated with the Complainant’s mark by using the disputed domain name in this manner. The Complainant has also stated that it has no connection with the Respondent and has not authorized or licensed the Respondent to use its marks. The Respondent, in his email communication to the Center, does not claim any rights in the disputed domain name and has not provided any valid reasons or explanations that demonstrate rights or legitimate interests. The entire tone of the Respondent’s email is contrite, and as such, indicates the lack of the Respondent’s rights or legitimate interests in the disputed domain name. The reasonable inference under the circumstances, is that the Respondent has registered the disputed domain name to derive mileage from the Complainant’s trademarks, which does not support a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Further, the use of the disputed domain name to host PPC links does not represent a bona fide offering, particularly where such links capitalize on the reputation and goodwill of the Complainant’s mark or mislead Internet users. See section 2.9 of WIPO Overview 3.0. The Panel finds the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The second requirement under paragraph 4(a) of the Policy, has been fulfilled by the Complainant. C. Registered and Used in Bad Faith The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. The Complainant has demonstrated the TATA mark is well known and has relied on some previous cases to establish the fame associated with the mark. These cases are: Tata Motors Limited v. Vaidehi Jha, Freelancer,WIPO Case No. D2014-1244, and Tata Motors Limited v. dhanush pilo, pilokraft / Domain Admin,WIPO Case No. D2014-1955. The Panel finds based on the evidence filed by the Complainant, that the TATA trademark is a distinctive mark associated with the companies of the Tata group. Given the reputation associated with the TATA mark, and the fact that the Respondent is from India, it is reasonable to infer that the Respondent ought to have known of the Complainant’s rights in the mark and yet has registered the disputed domain name. The Complainant has established its prior adoption and use of the TATA INTRA trademark and the Respondent has registered the disputed domain name The disputed domain name is admittedly not being used by the Respondent. Passive holding or non-use of the disputed domain name supports a finding of bad faith, under the Policy when e.g.,: (i) the Complainant has demonstrated that its trademark is distinctive; (ii) the Respondent has failed to provide any explanation for actual or contemplated good faith use; and (iii) any future contemplated use of the disputed domain name by the Respondent which contains the trademark is likely to mislead the public as to its origin, source or affiliation. Refer to section 3.3 of WIPO Overview 3.0. The registration and the use of the disputed domain name therefore squarely falls under the scope of paragraph 4(b)(iv) of the Policy, which is to attract Internet users to the Respondent’s 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 website, and is recognized as bad faith registration and use of the disputed domain name under the Policy. The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered and is being 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 Harini Narayanswamy
I didn’t bought this domain to make any harm to the image of Tata Motors. And i don’t even use this domain i only bought this domain as a random domain. I don’t have any bad intention regarding TATA.” 6. Discussion and Findings
Sole Panelist
Date: December 25, 2019
Full & Egal Universal Law Academy