Tata Sons Ltd.
v.
The Advanced Information Technology Association
[Indexed as: Tata Sons v. Advanced Information Technology Association]
[Indexed as: Tata.org]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0049
Commenced: 23 February, 2000
Judgment: 4 April, 2000
Presiding Panelist: Maninder Singh
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Hoarding - Bad faith registration Use in Bad Faith Legitimate interest Famous names Proper names Indian law Well-known mark
Complainant is the registered proprietor of the trade mark TATA in
India since 1942 and other countries. Complainant is an Indian company
existing under Indian laws whose turnover is more than US$9 Billion.
Respondent is the registrant of the domain name tata.org with Network Solutions,
Inc.
The mark/name TATA is synonymous with quality products and the same
signifies a sense of reliability. Consumers from all classes of society
consisting of urban, rural, semi-urban etc., are familiar with the TATA
mark/name.
"TATA" is a rare Indian surname and was the surname of the founder
of the
Complainant. The founder of the TATA GROUP, popularly known
as Mr. Jamsetji Tata, is a world famous industrialist. In fact one British
author, while referring to this name says:
".the name of one Parsi (a community) in particular has for many
years been
famous from London to New York and Tokyo. That name is TATA." 1
Till this date, no response to the complaint has been received from
Respondent. The Panel therefore rules that Respondent has forfeited its
right to file a Response. Respondent is proceeded ex-parte. The dispute
shall be decided based on the complaint in accordance with rule 5(e).
Held, Name Transferred to Complainant.
Since Respondent belongs to the same city as Complainant, Respondent is obviously aware of the long-standing, enormous reputation of the name TATA and has adopted an identical domain name. The domain was adopted 3 years earlier but has not been activated to date. This is proof that Respondent is merely "hoarding" the said domain name.
Moreover, Complainant has successfully obtained injunction orders
from Courts in India in relation to domain names and defendants who have
tried to use the name tata. Though these disputes are still pending,
they are prima facie evidence of the recognition of Complainant's rights
in the TATA name/mark.
Respondent's domain name <tata.org> is identical to the trade
mark TATA in which the Complainant has rights. Respondent has no
legitimate interest in the domain name <tata.org>; and the registration
of the domain name "tata.org" is a "Bad Faith registration."
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26,1999
Panel Decision referred to
--
Singh, Panelist: -
1. The Parties
1.1 Tata Sons Ltd, Bombay House, 24, Homi Modi Street, Mumbai 400 024,
India (Complainant).
1.2 The Advanced Information Technology Association, 1/182, Haji Habib
Building, Dr.B.A.Road, Dadar, Mumbai 400 014, India (Respondent).
2. The Domain Name and Registrar
2.1 The Respondent is the registrant of the following domain name: <tata.org>, registered with Network Solutions, Inc. (NSI).
3. Procedural History
3.1 The Complaint in this case was filed by e-mail on February 9, 2000
and in hardcopy on February 22, 2000 with the WIPO Arbitration and Mediation
Center.
3.2 The Center has found that the Complaint satisfies the formal requirements
of the Policy, Rules and Supplemental Rules, in accordance with the Rules
for Uniform Domain Name Dispute Resolution Policy and the Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy.
3.3 On February 11, 2000, the Center transmitted a request to NSI to
verify the following facts:
3.3.1 To confirm that a copy of the Complaint was sent to NSI by the
Complainant,
3.3.2 To confirm that <tata.org> is registered with NSI,
3.3.3 To confirm that the entity identified in the present case as
the Respondent is the current registrant of the domain name,
3.3.4 To provide full contact details that are available in NSI's database
for the domain name registrant, technical contact, administrative contact
and billing contact, for the said domain name,
3.3.5 To confirm that the Uniform Domain Name Dispute Resolution Policy
is in effect in respect of the registered domain name,
3.3.6 To indicate the current status of the domain name.
3.4 Vide communication dated February 14, 2000, NSI informed the Center
as under:
3.4.1 That NSI is the Registrar of the domain name registration,
3.4.2 That M/s.Advanced Technology Association is the current registrant
of the <tata.org> domain name registration,
3.4.3 That the Registrant is:
TATA4-DOM
1/162 Haji Habib Bldg.,
Dr.B.A.Road
Dadar, Mumbai, Maha 400 014
India
Administrative Contact:
Jain, Pravin (PJ935)
[Contact details omitted]
Technical Contact, Zone Contact:
Sharma, Sanjay (SS1398)
[Contact details omitted]
Billing Contact:
Jain, Pravin (PJ935)
[Contact details omitted]
3.4.4 NSI's 4-0 Service Agreement is in effect
3.4.5 The domain name registration <tata.org> is on "Hold"
status.
3.5 On February 23, 2000 the Respondent was notified of the Complaint
filed by the Complainant and opportunity was granted as per the Rules for
filing of a Response. This was done by e-mail, facsimile as also by courier
service. The Administrative Panel finds that the WIPO Center has satisfied
its notification obligations under Rule 2(b).
3.6 No Response was received from the respondent. One e-mail was received
from the person shown above as "Technical Contact", viz., Mr.Sanjay Sharma
which reads as under:
"This is put on record that the domain is not owned by me as I am only
the technical contact for the same. It is owned by Pravin Jain
. Please
review the NIC code and it clearly states that the Administrative Contact
is the sole owner of the domain. Please refrain from sending any such letters
or e-mails to me as I am not in any way or form associated with the domain
and its purpose."
3.7 The Center did not receive any response from the Respondent. In
view of this, the Center, on March 19, 2000 notified the Respondent of
its default and further informed the Respondent that the Administrative
Panel would be appointed as per the Rules.
3.8 On March 23, 2000 the Center appointed an Administrative Panel
consisting of a single member viz., Maninder Singh and this was notified
to the Complainant and the Respondent. The deadline for the decision of
the Administrative Panel was fixed as April 6, 2000.
3.9 The language of the administrative proceeding is English.
3.10 Till this date, no response has been received from the Respondent.
The Panel therefore rules that the Respondent has forfeited its right to
file a Response. The Respondent is proceeded ex-parte. Rule 5(e) which
governs such circumstances reads as under:
"(e) If a Respondent does not submit a response, in the absence of
exceptional circumstances, the Panel shall decide the dispute based upon
the complaint."
3.11 The Panel finds that in the present case there are no exceptional
circumstances that exist and therefore the present dispute shall be decided
on the basis of the Complaint itself.
4. Factual Background
4.1 The Complainant is an Indian company
existing under Indian laws. It is the principal investment holding company
of the Tata Group of Companies whose turnover is more than US$9 Billion.
4.2 The word "TATA" is the trade mark,
corporate name, house mark of the complainant and its Group companies.
4.3 "TATA" is a rare Indian surname and was
the surname of the founder of the Complainant which was established in
the year 1917.
4.4 The Complainant and its Group companies
have interests in a diverse field of activities including Automobiles,
Energy, Chemicals & Pharmaceuticals, Consumer Products, Publishing,
Metal, Information Technology & Communications, Finance etc.,
4.5 The Complainant is the registered proprietor
of the trade mark TATA in India. The earliest registration dates back to
the year 1942. It is also registered in other countries viz., Bangladesh,
Brunei, Kuwait, Malaya, Nepal, Sabah, Sarawak, Singapore and Pakistan.
4.6 The Respondent is the registrant of the
domain name <tata.org> with NSI.
5. Parties Contentions
5.1 The Complainant's contentions in brief are
as under:
5.2 That the complainant is the exclusive owner
of the mark/name TATA;
5.3 That the respondent has got the domain
name "tata.org" registered in its name but has not got the web site activated
till date and therefore the intentions of the Respondent are mala fide;
5.4 That if anyone proceeds to operate a website
under the impugned domain name, the same would result in confusion and
users are likely to assume some nexus, affiliation or endorsement by the
Complainant with such a website;
5.5 That the Respondent has registered the
impugned domain name for an illegal benefit and the same constitutes misappropriation;
5.6 That Internet Users are likely to subscribe
to the services of the impugned website or to deal with the Respondent
under the belief that it is an authorised website of the complainant.
5.7 The Respondent has failed to submit its
Response in the present case.
6. Discussion and Findings
6.1 From a reading of the complaint and the documents filed with it, it
is abundantly clear that the name/mark TATA is a "well-known" mark.
6.2 This is further established from
various orders passed by courts in India that have granted protection to
the mark TATA.
6.3 The mark/name TATA is synonymous with quality
products and the same signifies a sense of reliability. Consumers from
all classes of society consisting of urban, rural, semi-urban etc., are
familiar with the TATA mark/name. The word TATA apart from being a rare
surname has no obvious meaning and is entitled to a very high degree of
protection.
6.4 The founder of the TATA GROUP, popularly known as Mr. Jamsetji
Tata, is a world famous industrialist. In fact one British author, while
referring to this name says:
"
the name of one Parsi (a community) in particular has for many years
been famous from London to New York and Tokyo. That name is TATA." 1
6.5 The Respondent belongs to the same city as the Complainant. The
Respondent is obviously aware of the long-standing, enormous reputation
of the name TATA and has adopted an identical domain name. The Respondent
has offered no explanation as to how it adopted the word TATA as a domain
name. The adoption of the domain name, as is evident from the WHOIS Database
filed with the complaint clearly reveals that the domain name was registered
approximately 3 years ago but the same has not been activated till date.
This is proof that the Respondent is merely "hoarding" the said domain
name. Even if a website under the said domain name had been activated,
in the present facts and circumstances, it would still constitute dishonest
adoption and misappropriation.
6.6 Moreover, the Complainant has successfully obtained orders from
Courts in India in relation to domain names wherein Courts have granted
orders of injunction against the defendants therein from using the domain
names <tatagroup.com>, <bodacious-tatas.com>, <jrdtata.com>, <ratantata.com>,
<tatahoneywell.com>, <tatateleservices.com>, <tatahydro.com>,
<tatawestside.com>, <tatatimken.com>. Though these disputes are still
pending, they are prima facie evidence of the recognition of the Complainant's
rights in the TATA name/mark.
6.7 The Complainant has pleaded in its complaint as under:
· That potential customers would be induced to subscribe to
the services of the impugned web site or to deal in some matter with the
Respondent/3rd party believing them to be licensed or authorised by the
Complainant;
· That potential customers would be induced to believe that
the Respondent/3rd party have some connection with the Complainant in terms
of a direct nexus or affiliation with the Tata Group of Companies;
· That potential customers would be induced to believe that
the Respondent/3rd party is carrying on activities that have been endorsed
by the Complainant and services that are sought to be offered by the respondents
have the same level of quality and reliability that is synonymous with
the goods and services of the Complainant companies.
6.8 The above circumstances, though not specifically pleaded, constitute
"Use in Bad Faith" as contemplated under Clause 4(b)(iv) of the Uniform
Dispute Resolution Policy.
6.9 In view of all the above mentioned facts and circumstances, it
is found:
6.9.1 That the Respondent's domain name <tata.org> is identical
to the trade mark TATA in which the Complainant has rights;
6.9.2 That the Respondent has no legitimate interest in the domain
name <tata.org>;
6.9.3 That the registration of the domain name "tata.org" is a "Bad
Faith registration"
7. Decision
7.1 The Panel decides that the Respondent's domain name "tata-org"
should be transferred to the Complainant.
Footnotes:
1. "100 Great Modern Lives" published for Odham Books
by The Hamlyn Publishing Group Limited, edited by John Canning
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