WIPO Domain Name Decision DIO2021-0004 for tatacommunications.io

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tata Sons Pvt. Ltd. v. Henri Benezra, Tata Computers LTD Case No. DIO2021-0004 1. The Parties

Complainant is Tata Sons Pvt. Ltd., India, represented Anand & Anand, India.

Respondent is Henri Benezra, Tata Computers LTD, Israel. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Gandi SAS (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on January 28, 2021.

The Center verified that the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 24, 2021. 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

Complainant is a corporate conglomerate founded in India more than 100 years ago. Complainant and its family of subsidiaries operate in numerous spheres of commerce, including tea, automobiles, textiles, steel, chemicals, energy, computers and software, telecommunications, financial services, and so forth. Complainant has offered its myriad goods and services to the public under the trademark TATA for more than a century. Complainant’s overall turnover for the year 2020 was USD 106 billion.

The TATA trademark, or a mark containing TATA plus other content, is registered in more than 100 countries, including Israel (Respondent’s country), such as Israel trademark registration 102201 for the figurative mark TATA, registered on April 15, 1997. Furthermore, Complainant has registered the trademark TATA COMMUNICATIONS in various jurisdictions, including the United States of America (“United States”), such as United States Registration No. 4135731 for the word mark TATA COMMUNICATIONS, registered on May 1, 2012.

Annexed to the Complaint is ample evidence that TATA is a well-known trademark.

Complainant also owns numerous TATA-formative domain names, including “www.tata.com”, “www.tata.in”, and “www.tatacommunications.com”.

One of Complainant’s many subsidiary companies is Tata Communications Limited. At Complainant’s website, “www.tatacommunications.com”, this company is described as a “Global Digital Ecosystem Enabler”. According to the Complaint, Tata Communications Limited “carries around 30% of the world’s [I]nternet routes and connects businesses to 60% of the world’s cloud giants and 4 out of 5 mobile subscribers”.

The Domain Name was registered on April 16, 2017. The Domain Name resolves to an essentially blank website. 5. Parties’ Contentions A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent

Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith. A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark TATA through widespread registration and use demonstrated in the record.

The Panel also concludes that the Domain Name is confusingly similar to the TATA mark. The Domain Name incorporates the TATA mark in its entirety and adds the descriptive term “communications”. This additional word does not prevent a finding of confusing similarity between the mark and the Domain Name, particularly since communications services are among those provided by Complainant.

Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Complainant has established a prima facie case that Respondent lacks rights or legitimated interests, and Respondent has not come forward to explain or prove any legitimate basis on which he registered the Domain Name. In addition, Respondent has not denied the allegation in the Complaint that Respondent was aware of Complainant’s TATA trademark at the time he registered the Domain Name.

Notably, Respondent also has not denied the allegation in the Complaint that, “in all probability,” Respondent in this case is the same party (also from Israel) that had registered the domain name in 2016. In the UDRP case Tata Sons Ltd. v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Accounting Tata Communications, Tata Communications Limited,WIPO Case No. D2017-1210, the panel found that the respondent had registered “www.tata-communications.com” in bad faith. In the Panel’s view, a party who is accused of being someone else who had previously been adjudged to have acted in bad faith would step forward and deny that accusation if it were untrue.

Furthermore, the Domain Name, comprising Complainant’s TATA trademark and identical to Complainant’s TATA COMMUNICATIONS trademark, carries a high risk of implied affiliation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.

Complainant has established Policy paragraph 4(a)(ii). C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration or use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section.

Given the clear renown and wide-ranging use of the TATA mark, including incorporation in Complainant’s domain name , which was registered well before the registration of the Domain Name, the Panel concludes that Respondent was more likely than not aware of Complainant’s well-known TATA mark when registering the Domain Name. Furthermore, the Panel’s finding, on the undisputed record and on a balance of probabilities, that Respondent here is the same party as had registered several years ago and was found in bad faith, supports the inference of bad faith in these circumstances.

The Panel also finds that Respondent has used the Domain Name in bad faith, within the concept of “passive holding” first articulated in Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. On the record here, and given the renown of the TATA mark and Complainant’s extensive communications services operation under that mark and featured at Complainant’s website “www.tatacommunications.com”, the Panel can conceive of no legitimate or good-faith use to which Respondent could put the Domain Name.

Complainant has established Policy paragraph 4(a)(iii). 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 be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: March 1, 2021

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