The Complainant is Tata Sons Private Ltd., India, represented by Anand & Anand, India.
The Respondent is Privacy Protect LLC, United States of America / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2020 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 amended Complaint on August 11, 2020. 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 September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2020. The Center appointed Ellen B. Shankman as the sole panelist in this matter on October 9, 2020. 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 date of the Domain Name registration was confirmed by the Registrar to be January 7, 2007. The trademarks TATA and TATA CONSULTANCY SERVICES serve as house-mark of the Complainant and TATA is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant is the owner of registrations for the word trademark TATA on the Trade Marks Registry of Intellectual Property India, including registration number 92645, registration dated February 16, 1944, in international class (IC) 9, covering “welding electrodes”; registration number 92648, registration dated February 16, 1944, in IC 30, covering “salts not falling in other classes”; and registration number 1236890, registration dated September 16, 2003, in IC 35, covering, inter alia, advertising, business and online retail services. The Complainant has provided evidence of ownership of registration in India of a number of device/design and word marks incorporating TATA. Complainant has listed ownership of registration of the word, and word and device/design, trademarks incorporating TATA in a substantial number of countries other than India. The Complainant has provided evidence that the TATA word, and word and device/design trademarks have been recognized as well-known under the laws of India. The trademarks predate the date of the Domain Name registration for a broad variety of goods and services. The Panel also conducted an independent search to determine that the Domain Names resolve to a page with an error message, and the website currently appears to be inactive. Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark, taken from the Complaint, have not been argued or rebutted by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant asserts that it is India’s largest industrial conglomerate with a long history going back at least to 1917. The Complainant asserts that because of its long-term use of the mark TATA over a wide geographical area, that mark has the status of a “well-known mark”. The Complainant asserts that it has vigorously defended its trademark rights in the mark TATA in the Indian courts and also by way of the UDRP procedures. The very extensive advertising efforts of the Complainant in relation to the mark TATA mean that the mark is exclusively associated with the Complainant. According to the Complainant the mark TATA, although representing the founder’s surname is also distinctive. The Complainant alleges that it owns rights in the trademark and service mark TATA based on common law and statutory rights, and as evidenced by registration in India and other countries. The Complainant, including its various affiliated companies, is India’s largest private sector employer, with a combined market capitalization of over USD 110 billion. The Complainant has registered and uses a substantial number of domain names incorporating the TATA trademark in connection with its various affiliated enterprises. The Complainant contends that the Domain Name is identical and confusingly similar to its TATA trademark, which includes their TATA CONSULTANCY SERVICES, by which mark the Complainant is also known. The Complainant argues that the Respondent lacks rights or legitimate interests in the Domain Name because: (1) the Complainant has not authorized the Respondent to use its trademark; (2) the Respondent may propose to offer the Domain Name for sale; (3) the Respondent’s use of the Domain Name is not bona fide because the Respondent is using the Domain Name to cause initial interest confusion; and (4) there is no plausible explanation for the Respondent to use the Domain Name since the Complainant has the exclusive right to use its trademark. The Respondent has received no authorization or consent from the Complainant to use its mark in any way or incorporate it in a domain name. The TATA trademark is exclusively used by the Complainant and its associated companies and there is no plausible explanation for the use of that term by the Respondent, the Complainant asserts. Further the Complainant asserts that the Respondent has constructive notice of the rights of the Complainant in the TATA trademark because of the latter’s widespread use, registrations and reputation of the mark. The Complainant asserts that there cannot be any doubt that the Respondent was aware of the reputation of the Complainant in the trademark TATA prior to the registration of the Domain Name. Even when the Domain Name resolved to a parking page with advertising links, and even where now the Domain Name resolves to an error page, the Respondent registered and is using the Domain Name in bad faith. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark TATA, in respect of a broad range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the words “consultancy services” adds to the confusion as the Complainant also is known by that name. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for TATA, as well as evidence of long-standing use of the TATA trademark in commerce in India. The Complainant has further provided evidence sufficient to establish that its TATA trademark is recognized as well-known in India. Further, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the terms “consultancy services” to the Domain Name does not change the recognizability of the trademark of the Complainant in the Domain Name. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”. Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. 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) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed 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 Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded that the Respondent deliberately registered the Domain Name incorporating the TATA brand, which is identical to Complainant’s trademark to create a misleading and fraudulent impression of association and confusion with the Complainant. The Panel finds that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic. In addition, it has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177. The Panel also finds that even though the Domain Name currently resolves to an inactive page, this does not preclude a finding of registration and use in bad faith where, as here: “[…] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). This is also consistent with section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Here, the Panel notes the reputation of the Complainant’s TATA trademark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the Respondent’s concealing its identity, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. Further, the Panel finds that the registration of the Domain Name with the use of two privacy services supports such an inference of bad faith. This is consistent with section 3.6 of the WIPO Overview 3.0, which states that: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.” In this case, no such inference was refuted by the Respondent. Further to the above, the Panel also notes the use of overlapping privacy services supports an inference of bad faith in these circumstances. See section 4.4.6 of the WIPO Overview 3.0. Given the above, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of 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 Domain Name Ellen B Shankman
Sole Panelist
Date: October 16, 2020
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