ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Tata Sons Private Ltd. (TSPL), Tata Unistore Limited (TUL) v. Lazy SK, Lazy Case No. D2024-2360 1. The Parties The Complainants are Tata Sons Private Ltd. (TSPL) and Tata Unistore Limited (TUL), India, represented by Anand & Anand, India. The Respondent is Lazy SK, Lazy, India. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2024. On June 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2024, 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 sent an email communication to the Complainant on June 13, 2024, 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 June 17, 2024. 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 June 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2024. The Respondent sent an email communication to the Center on June 17, 2024. No formal response was filed. On June 19, 2024, the Complainant requested to continue with the proceeding. Accordingly, the Center commenced the panel appointment process on July 17, 2024. The Center appointed Maninder Singh as the sole panelist in this matter on July 25, 2024. 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.
page 2 4. Factual Background The Complainants are Tata Sons Private Ltd. (TSPL) and Tata Unistore Limited (TUL). The Complainant No. 1, TSPL was established in the year 1917 and is the promoter and principal investment holding company of various TATA companies. The TATA Group is engaged in various kinds of business which includes aviation, textiles, iron and steel, power, chemicals, hotels, automobile industries, computers and computer software, electronics, telecommunications, financial services, mutual funds, insurance, beverages, broadcasting, aerospace and defence, digital ecommerce, retail, etc. The Complainants and its Group companies i.e., the TATA Group conduct business not only in India, but also in various countries across the globe. The Complainants are the owners and proprietors of the well-known and registered trademarks and word marks TATA, TATA CLIQ, CLIQ. The Complainant No. 1, being the holding company of the TATA Group of companies, is the registered owner and proprietor of the mark TATA, TATA CLIQ and permutations/combinations thereof and has licensed the Complainant No. 2, TUL to use the said trademarks. These include Indian Trademark Registration No. 92655 registered on February 16, 1944 and the Indian Trademark Registration No. 3217961 registered on March 23, 2016. The Complainant No. 2 is a part of the TATA Group and is engaged in the business of ecommerce dealing in products such as apparel, footwear, electronics, accessories, kids fashion, home furnishing, jewellery, toys, beauty etc. The Complainant No. 2, launched its e-commerce platform, “www.tatacliq.com” on May 26, 2016. The Complainant No. 2 owns and operates the domain and website “www.tatacliq.com”. The Respondent has registered the disputed domain name on May 16, 2024. The disputed domain name takes the visitor to a webpage where the Registrar has put it on sale. 5. Parties’ Contentions A. Complainant Since its inception in 1917, the Complainant No. 1 has been continuously and consistently using the trademark and trade name TATA, which is a rare patronymic name possessing the distinctiveness of an invented word, for its own business activities and those of companies promoted by it. The use of the trademark and name TATA by the Complainants’ predecessors in business dates back to 1868. The Complainants are part of TATA group of companies. Tata group of companies is headed by the Complainant No. 1 which owns the trademark registration for well-known trademark TATA. The TATA Group is engaged in various kinds of business such as consultancy services, selling and manufacturing vehicles, steel products, chemicals products, consumer products, watches, electricity, hospitality services, communications, financial and electronics. The Complainant No. 1, TSPL, its group companies, subsidiaries as well as the companies promoted by it collectively comprise of over 100 major operating companies. There are about 29 publicly listed Tata companies with a combined market capitalization of about USD 300 billion (INR 24 trillion) as on March 31, 2023. The TATA name has been respected in India for over 150 years for its adherence to strong values and business ethics. The Complainant No. 2, TUL is a part of the TATA Group and is engaged in the business of ecommerce dealing in products such as apparel, footwear, electronics, accessories, kids fashion, home furnishing, jewellery, toys, beauty etc. The Complainant No. 2, launched its e-commerce platform, “www.tatacliq.com” on May 26, 2016 across its website, mobile site and mobile apps (Android & iOS). TATA CLiQ is the flagship digital commerce initiative of the Tata Group. The Complainant No. 2 owns and operates the domain and website “www.tatacliq.com”, which is an online marketplace for various reputed national and international brands. The Complainant No. 2 also owns a premium and luxury fashion and lifestyle destination called
page 3 TATA CLIQ LUXURY and it houses a wide range of premium apparel and accessories for men and women on the website “www.luxury.tatacliq.com”. The Complainant owns and operates a separate mobile App called TATA CLIQ PALETTE and website “www.palette.tatacliq.com”, to offer personalised beauty products to customers. The Complainants are also the registered proprietor and prior user of the device/logo. The Complainant No. 2 has been permitted to use the mark TATA and TATA CLIQ by the Complainant No. 1 through a trademark license agreement. The Complainant No. 2 does business through its domains www.tatacliq.com, “www.palette.tatacliq.com” and “www.luxury.tatacliq.com”. The disputed domain name is identical or confusingly similar to the trademarks in which the Complainants have rights: - The Complainants contend that the disputed domain name is identical to the registered and well-known trade/service mark of the Complainants i.e., TATA and TATA CLIQ and in which the Complainants have overwhelming common law as well as statutory rights. The disputed domain name is confusingly similar to the Complainants’ current domain names / websites at “www.tata.com”, “www.tatacliq.com”, “www.palette.tatacliq.com” and “www.luxury.tatacliq.com”. - The Complainants also contend that the use of the word TATA, CLIQ and TATA CLIQ would be understood as a reference to the Complainants. Usage of a descriptive suffix of “fashion” along with the well-known trademark TATA CLIQ of the Complainants is a scheme to mislead general public and make malicious gains at the expense of the reputation built by the Complainants over the years. - The Complainants further contend that incorporating of a trademark in entirety in a domain name is sufficient in establishing confusing similarity. The Complainants place reliance on WIPO decision in Magnum Piering Inc v. The Mudjackers, WIPO Case No. D2000-1525. The Respondent has no rights or legitimate interests in the disputed domain name: - It is the Complainants’ contention that the Respondent has no rights / legitimate interest in the disputed domain name as this is classic case of domain squatting. - The Complainants contend that if one keys-in the disputed domain name, she / he will be directed to a webpage where the Registrar has put the disputed domain name on sale. Further, even on the WhoIs page of the disputed domain name, a message appears stating that the domain name is for sale. - The Complainant also contends that the Respondent is simply squatting on the disputed domain name and not making and legitimate commercial use of the same and at the same time putting the said domain name on sale so that the Complainants may be forced to purchase it at an unfair and exorbitant price. - The Complainants have not licensed or otherwise permitted the Respondent to use their registered and well-known trade / service marks TATA, CLIQ and TATA CLIQ or to apply for any domain name incorporating the said trade / service marks. Bad faith registration and use of the disputed domain name by the Respondent: - The Complainant contends that the malafides of the Respondent is clear from the fact that post filing of the instant Complaint, the Respondent addressed an email dated June 17, 2024 offering to sell the domain for USD 10,000. The Complainant contends that this is a clear indicative of the fact that the Respondent is well aware of the trademark rights of the Complainants and this is a classic case of domain squatting. - The Complainants also contend that the Respondent has registered the disputed domain name in bad faith. The Complainants contend that the Respondent has not made any legitimate commercial use of
page 4 the disputed domain name. The Respondent has rather gone ahead and put the disputed domain name on sale. - The Complainants contend that the Respondent had constructive notice of the Complainants’ rights in the trade/service marks TATA, CLIQ and TATA CLIQ by virtue of the Complainants’ widespread use and reputation worldwide and global registrations. The Complainant in this regard places reliance on WIPO decisions in Research In Motion Limited vs. Privacy Locked LLC/ Nat Collicot, WIPO Case No. D2009-0320, SembCorp Industries Limited vs. Hu Huan Xin, WIPO Case No. D2001-1092. The Complainants contend that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent had not submitted its proper and formal response to the Complaint. However, through an email dated July 17, 2024, the Respondent has sought to transfer the disputed domain name to the Complainants at USD 10,000. Post Panel Appointment, on July 25, 2024, the Respondent submitted an informal response by email. The Respondent has not rebutted the Complainant’s contention that the disputed domain name is identical or confusingly similar to the Complainant’s domain name incorporating the Complainant’s registered trademarks TATA, CLIQ or TATACLIQ. Rather, the Respondent contends the following: - that the disputed domain name was registered with the intention of creating a distinct and legitimate fashion-related website. - that it was not registered with the intent to misappropriate the well-known trademarks of the Complainants. The term “tatacliqfashion” was chosen for its unique and creative potential within the fashion industry and not to mislead or confuse consumers. - that the Respondent has rights and legitimate interest in the disputed domain name because the Respondent has invested time and resources into the development of a fashion e-commerce platform. The website is intended to provide unique fashion products and services. - that it has a legitimate interest in using the domain name to build a business distinct from the Complainants’ offerings, focusing on niche fashion segments. The domain name was selected without any intent to infringe upon or exploit the complainants' trademarks. - that the disputed domain name is not being used in bad faith and the intention of the Respondent has always been to develop a legitimate business platform. - that the disputed domain name’s current status indicating it is for sale, was an inadvertent action and not a reflection of his intent to cybersquat or extort money from the Complainants. - that the disputed domain name was not registered in bad faith. The awareness of the TATA brand did not influence the Respondent’s decision to register the disputed domain name. The purpose of registering the disputed domain name was purely entrepreneurial, aiming to create a unique brand identity within the fashion industry. - that the Respondent has not engaged in any activities to tarnish or unfairly benefit from the reputation of the TATA brand. - that the Respondent is in the process of developing the website to offer exclusive fashion products. Efforts have been made to ensure that the branding and marketing strategies for disputed domain name are distinct and independent of the Complainants. This includes a unique logo, brand messaging, and product offerings.
page 5 6. Discussion and Findings For this Complaint to succeed in relation to the disputed domain name, the Complainants are required to prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 It is well accepted that the first element functions primarily as a standing requirement. The standing test (or the threshold test) for determining confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In the present complaint, the Complainant No. 1 has trademark registrations for the word TATA, TATA CLIQ and various combinations therein in many jurisdictions including India. The Complainant has established its rights in the above trademarks, both by virtue of its many trademark registrations and through continuous use of all the registered trademarks over many years has earned a good name and reputation in its field. The Complainants have shown rights in respect of the trademark TATA and TATA CLIQ for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds it useful to refer to the decision in the case of AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017, holding that: “In numerous UDRP decisions, panels have found that the fact that a domain name incorporates a complainant’s registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of paragraph 4(a) of the Policy.” The Panel finds that the entirety of the marks TATA and TATA CLIQ is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “fashion”, may bear on assessment of the second and third elements, the Panel finds the addition of the term “fashion” does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 6 The Panel observes that the Respondent is in no way related to the Complainants or their business activities. The Respondent is neither an agent of the Complainants, nor does he carry out activities for the Complainants. There is also no evidence that the Respondent is commonly known by the disputed domain name. The marks TATA and TATA CLIQ indisputably vest in the Complainants and the Complainant Group as evidenced by various statutory registrations, secured by the Complainants and the Complainant Group. The Panel rejects the Respondent’s contention that it has invested time and resources into the development of a fashion e-commerce platform. Having reviewed the available record and the Respondent’s offer to sell the disputed domain name, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel observes that there is virtually no possibility that the Respondent was unaware of the Complainants’ trademark, its existence or presence in the market. In the present case, the Panel notes that the Respondent has registered and used the disputed domain name to deceive Internet users into believing that the disputed domain name is operated or authorized by the Complainants, and to attract Internet users by creating a likelihood of confusion with the TATA and TATA CLIQ trademarks for commercial gain. In the facts of this case, it is apparent that there has not been any bonafide on the part of the Respondent in registering the disputed domain name. The Respondent is apparently aware and conscious of the reputation of the registered trademarks of the Complainants and the name and reputation enjoyed by the Complainants. The fact that the Respondent has straight away offered for sale the disputed domain name, would also contribute to establishing the absence of bonafide on the part of the Complainant in its registration. The Panel finds no merit in the Respondent’s contention that the disputed domain name was registered with the intention of creating a distinct and legitimate fashion-related website or that it was not registered with the intent to misappropriate the well-known trademarks of the Complainants. The Panel disagrees with Respondent’s contention that the term “tatacliqfashion” was chosen for its unique and creative potential within the fashion industry and not to mislead or confuse consumers as it incorporates the Complainants’ well-known TATA and TATA CLIQ marks entirely. Due to the presence and fame of the Complainants in India and over the world, the Panel finds the Respondent’s argument implausible. The Panel observes that the Respondent is squatting on the disputed domain name and not making any legitimate commercial use of the same and at the same time putting the said domain name on sale so that the Complainants may be forced to purchase it at an unfair and exorbitant price, and from the Respondent’s email on June 17, 2024, that price was set at USD 10,000. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
page 7 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. /Maninder Singh/ Maninder Singh Sole Panelist Date: August 8, 2024
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