WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. Tatasky International Corporation
Case No. D2005-0783
1. The Parties
The Complainant is Tata Sons Limited, Mumbai, India, represented by Anand & Anand, India.
The Respondent is Tatasky International Corporation, Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tatasky.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2005. On July 22, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 25, 2005, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient sent by the Center on August 1, 2005, the Complainant filed an amendment to the Complaint on August 5, 2005 via email and on August 11, 2005, in hardcopy. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2005.
The Center appointed Luca Barbero as the sole panelist in this matter on September 14, 2005. 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 a large investment holding company of the TATA group and is the registered proprietor of several trademark registration consisting in or comprising the sign TATA in relation to various goods and services, including the USA registration
n. 2929070 in classes 6, 9, 16 & 30.
The Respondent registered the domain name <tatasky.com> on July, 7 2005.
5. Parties’ Contentions
The Complainant points out that the name TATA was adopted as early as 1917, by its founder, Mr. Jamsetji Nusserwanji Tata and the name TATA has acquired an excellent reputation from the very beginning and down the decades. Since its inception, the Complainant has been using the trademark TATA for its business activities. The enterprises promoted by the Complainant and the TATA group have laid the foundations in the industrial core sectors, pioneering the textiles, steel, power, hotels and automobile industries in India. Today, the TATA group has a major presence in the fields of electronics, financial services, mutual funds, computer software, tea and telecommunications businesses.
The Complainant highlights that most of these companies use TATA as the initial part of their trade names, like Tata Motors, Tata Infotech, Tata Chemicals, Tata Consultancy Services and therefore TATA has become a house mark of the TATA group and source indicator of the diverse goods and services that are provided by the group.
The Complainant has recently entered into a Joint venture with Network Digital Distribution Services (NDDSL), a group company of (the owners of Sky TV) to provide Direct to Home (DTH) television services in India for which it has been granted license by the Government of India. The name of this joint venture company which presently is Space TV Limited is to be changed to TATA SKY LIMITED on account of the majority holding (80%) in the joint venture company being that of the Complainant. The press announcement regarding the renaming of this venture from Space TV to TATA SKY was made in the first week of July 2005, and was extensively reported by the print as well as online editions of newspapers and by web portals. The Panel was provided with copies and printouts of articles reporting the renaming of this joint venture as TATA SKY.
The Complainant is the registered proprietor of the trademark TATA in relation to various goods in various classes and the Panel was provided with a list of trademark registrations held by the Complainant in India and in several other countries in various classes.
The Complainant states that the disputed domain name <tatasky.com> includes the word TATA, and is identical in parts and confusingly similar as a whole to the well known and registered trademark and service mark TATA in which the Complainant has a statutory right as well as a right in common law, by virtue of long and continuous use and being the registered proprietor thereof in relation to a wide variety of goods and services ranging from steel, software and automobiles to telecommunications and chemicals.
Furthermore the Complainant underlines that the disputed domain name is also identical to the proposed trade name and company name of the Complainant’s joint venture company TATA SKY that is a tie up between the Complainant and Star Group.
According to the Complainant, the use of the word TATA in the initial part of domain name will be understood as a reference to the Complainant, because the registered and well-known trademark TATA is the relevant and conspicuous part of the disputed domain name and stands at the beginning of the combination of these two well-known trademarks. Thus, the Internet user not aware of the venture between the Complainant and the Star Group, is likely to associate the disputed domain name with the Complainant.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it was initially registered under the name of MIC, Closter, NJ, US providing a copy of the printouts of the database search conducted on July 7, 2005, to the Panel.
The Complainant, on attempting to register the domain name <tatasky.com>, became aware that the said domain name had already been registered by MIC. The Complainant thereafter initiated administrative proceedings against MIC and filed a complaint with the Center on July 21, 2005.
On July 25, 2005, the Center sent an e-mail as “Acknowledgement of Receipt of Complaint” to the Complainant, confirming the receipt of the complaint and informing about the allotment of a case number. This e-mail was copied to the e-mail address of the then registrant, MIC, i.e., firstname.lastname@example.org.
The Complainant emphasizes that on the very same day, i.e. July 25, 2005, the disputed domain name was transferred and the registrant details of this domain name were changed to “Tata Sky International Corporation”. As soon as the Complainant received this notification, an e-mail was sent to the Center on behalf of the Complainant on July 28, 2005, informing the Center that the WHOIS details of the disputed domain name had been changed since the filing of the complaint, thereby necessitating amendment of the complaint.
The Complainant underlines that the previous registrant MIC / Syed Hussein is a cyber squatter, who has registered several other domain names in similar circumstances, corresponding to well-known trademarks such as Telstra, Red Hat and others. After administrative proceedings were conducted, the transfer of such domain names was ordered by the Center as well as the National Arbitration Forum (NAF).
According to the Complainant, the transfer of the disputed domain name, on the very same day that the previous registrant, MIC / Syed Hussein received an acknowledgement of the complaint from the Center, clearly shows that MIC / Syed Hussein and the present Respondent are either one and the same or that they are acting in concert and are closely associated with one another and that it is a fraudulent transfer that has been done merely with a view to frustrate the administrative proceedings and the Complainant.
The Complainant emphasizes that the fact that the present Respondent is called “Tata Sky International Corporation” further shows the fraudulent attempt on the part or MIC/Syed Hussein and the present Respondent to bring in some guise of legitimacy to their registration of the disputed domain name after knowledge that the administrative proceedings have been initiated in respect of the domain name.
In view of the Complainant it is patently clear that while present Respondent has acquired the disputed domain name under name “Tata Sky International Corporation”, it is neither commonly known by this nor does it has any legitimate business or interest under this name and is merely a fraudulent attempt to bring in some guise of legitimacy to the registration of the disputed domain name. The Complainant provided to the Panel a copy of the print out of the search conducted on the Google search engine that shows no results for Tata Sky International Corporation.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the sole purpose of the registration is to misappropriate the reputation associated with the Complainant’s famous trademark TATA and its joint venture partner’s trademark SKY. Neither the Complainant nor Star Group has authorized or licensed the Respondent to register or use the disputed domain name or any trademark forming part of it. Furthermore, neither is the Respondent known commonly by the name TATA/SKY nor has he made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods/ services.
With reference to the circumstances evidencing bad faith the Complainant indicates that the disputed domain name <tatasky.com> has been offered for sale since the date of its registration on July 7, 2005, and also by the current Respondent. The Complainant points out that the previous registrant had offered the disputed domain name for sale on the same web page commenting that this further shows that the pervious registrant and the present Respondent are one and the same or are associated and are in concert with one another.
The Complainant informs the Panel that the previous registrant is a notorious cyber squatter with a number of WIPO and NAF decisions against him and therefore the contact details of the present Respondent, namely, “Tatasky International Corporation”, is clearly a fictitious name concocted by the previous registrant in order to bring in some guise of legitimacy/justification for having registered/acquired the domain name, having realized administrative proceedings had been initiated against him.
The previous registrant, MIC/Syed Hussein has registered the disputed domain name on July 7, 2005, immediately after the announcement in the press was made that the joint venture entered into between the Complainant and Star Group is to be renamed TATA SKY LIMITED. The timing of the previous registrant’s registration of this domain name, almost immediately after the announcement in the press of the renaming of the joint venture to TATA SKY, according to the Complainant clearly shows that the previous registrant registered the domain name merely with a view to capitalize upon the immense reputation and goodwill that already accrues and will accrue in the future to the trade name, trading style and service mark TATA SKY.
Furthermore, the Complainant emphasizes that the previous registrant has a pattern of registering domain names right after the announcement of takeovers and joint ventures - providing the Panel with some examples of prior decisions - and that the previous registrant has also registered <tatatetleygroup.com> and <tatatetleygroup.org>, later transferred to the Complainant’s group company with the decision Tata Tea Limited v. CPIC Net, WIPO Case No. D2003-0844 therefore had prior knowledge of the Complainant’s trademark.
The Complainant also highlights that there is a great likelihood that actual or potential visitors to the Respondent’s present web page or any future web page that is resolved to this disputed domain names, will be induced to believe that the Complainant and/or Star Group and/or the joint venture company formed by the Complainant and Star Group have licensed their trade mark TATA and/or the service mark and trade name TATA SKY, to the Respondent or authorized the Respondent to register the disputed domain name or believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Tata Group of Companies or the joint venture that is proposed to be called TATA SKY.
The Respondent did not reply to the Complainant’s contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(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 is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registration consisting in or comprising the sign TATA in relation to various goods and services including the USA registration n. 2929070 in classes 6, 9, 16 & 30.
It was well established in prior decisions that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to OKIDATA mark); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“buildingsociety” added to BRITANNIA mark); Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” found to be confusingly similar to the CHANEL mark).
In the present case the Respondent has added the word SKY, which also corresponds to a registered trademark of a company with which the Complainant has recently entered into a Joint venture.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks of the Complainant in accordance with paragraph 4(a)(i) of the Policy.
6.2. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that he has made 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 prior to the dispute; or
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Respondent to which the disputed domain name was transferred to, subsequent to the notification of a first complaint to the prior owner, did not provide the Panel with any evidence as to the right to use the alleged company name Tatasky International Corporation. Furthermore, the searches conducted by the Complainant on a search engine at the time of the filing of the amended complaint then updated by the Panel - in accordance with paragraph 10 (a) and 10 (b) of the Rules - did not show any results for “Tatasky International Corporation” also the time of the drafting of the present decision. Therefore, the Panel finds that no rights or legitimate interests can be inferred merely from the name, given by the who-is contact by the registrant of the alleged company.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance to paragraph 4(a)(ii) of the Policy.
6.3. Registered and Used in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ 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 your website or location or of a product or service on the holder’s website or location.
In light of the transfer of the disputed domain name which took place after the Complaint was notified to the prior domain name holder and in view of the fact that the present Respondent did not provide the Panel with any evidence as to the actual existence of the alleged company Tatasky International Corporation, the Panel shares the opinion expressed by the representative of the Complainant that the present Respondent is either one and the same entity or that the prior registrant and the present Respondent are acting in concert and are closely associated with one another.
Therefore, in the evalutation and the assessment of the circumstances evidencing bad faith in the present case, the Panel will also make reference to the prior registrant of the disputed domain name.
As to the bad faith at the time of the registration on July 7, 2005, the Panel notes that Mr. Syed Hussein – then administrative contact of the disputed domain name - has registered in the past, inter alia, also <tatatetleygroup.com> and <tatatetleygroup.org>, transferred with the decision Tata Tea Limited v. CPIC Net, WIPO Case No. D2003-0844; therefore the Registrant at the time of the registration had certain prior knowledge of the trademark TATA.
The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and has clearly engaged in a pattern of such conduct since it has also registered, besides <tatatetleygroup.com> and <tatatetleygroup.org>, also <euroliffe.com>, <lmeholdings.com>, <usolympicstore> <olivettitecnost.com> and others.
The Panel concurs with the views expressed in Olivetti S.p.A. v. Mr. Syed Hussain WIPO Case No. D2001-0326 concerning the registration of <olivettitecnost.com> that “another indication of Respondent’s bad faith is the fact that Respondent has already applied the same pattern of conduct in a similar case acting through a related company named CPIC Net (the relation between Respondent and CPIC Net is evidenced by the registration details at the Registrar): Shortly after the announcement of the merger of Time Warner Inc. and EMI Group plc., CPIC registered various domain names consisting of combinations of the two company’s marks with the intention to sell the domain names to the owners of the marks (See Time Warner Inc. and EMI Group plc. v. CPIC Net, WIPO Case No. D2000-0433). In that case, Respondent’s behavior was considered to be bad faith. In the present case, Respondent has applied the same strategy. He obviously engaged in a bad faith pattern of conduct in registering domain names in connection with announced mergers in order to sell these domain names afterwards to the involved companies.
As an additional circumstance evidencing bad faith, the Panel finds that also the very transfer to a forged entity with a company name consisting of or comprising the disputed domain name subsequent to the receipt of a Complaint in relation to the same domain name, is to be considered an indication of bad faith.
In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Panel decides that (a) the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that (b) the Respondent has no rights or legitimate interests in respect of the Domain Name and (c) that the Domain Name has been registered and used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name <tatasky.com> be transferred to the Complainant.
Date: September 28, 2005