WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. Imtiaz Kalwar
Case No. D2007-1924
1. The Parties
The Complainant is Tata Sons Limited, Mumbai, India, represented by Anand & Anand, Noida, India.
The Respondent is Imtiaz Kalwar, Springfield, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tatarealty.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2007. On December 27, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On December 27, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amendment to the Complaint on January 10, 2008. 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 January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Response was filed with the Center on February 3, 2008.
The Center appointed John Swinson as the sole panelist in this matter on February 12, 2008. 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.
Additional correspondence was exchanged between the Center, the Complainant and the Respondent between January 31 to February 1, 2008, and February 4 to February 5, 2008. The Panel has considered this correspondence and determined that it does not have any impact on the Panel’s decision.
4. Factual Background
The Complainant is the principal investment holding company of the Tata Group of companies.
The Tata Group is an Indian based business conglomerate, founded in the mid 19th century. The Tata Group currently comprises close to a hundred operating companies in seven different business sectors (being information systems and communications, engineering, materials, services, energy, consumer products and chemicals). Some of the more well known companies in the Tata Group are Tata Tea, Tata Motors and Tata Steel.
Tata Realty and Infrastructure is another company in the Tata Group, and is fully owned by the Complainant. According to a newspaper article from “The Time of India” published on February 19, 2007, Tata Realty and Infrastructure was at that time, “a newly created company”.
The disputed domain name website states that the page is parked free courtesy of GoDaddy.com. The majority of the sponsored listings appearing on the home page relate to real estate services. A small number of links relate to Tata Trucks and used cars.
The Whois record for the disputed domain name states that it was created on March 8, 2005.
5. Parties’ Contentions
The Complainant makes the following contentions:
The name Tata was adopted as early as 1917 and originates from the Complainant’s founder, Mr. Jamsetji Nusserwanji Tata. The name is therefore highly distinctive and is similar to an invented word. The name Tata has an excellent reputation and has been associated with the good and business of the House of Tata, which is the conglomerate of Tata companies. The TATA brand is extremely valuable and well known.
The Complainant has registered the trademark TATA in India in relation to various goods in a wide range of classes, and also in various other countries throughout the world, including the United States of America.
The Complainant has been continuously and consistently using the trademark TATA for its business activities.
Most companies in the Tata group use Tata as the initial part of their trade name, and that mark has become a source indicator of a diverse range of goods and services provided by the Complainant. The disputed domain name contains the Complainant’s trademark at the beginning of the name, and is therefore confusingly similar to the Complainant’s trademark.
The Complainant has been successful in several domain name cases brought before previous panels. This indicates that the Complainant has a well known trademark and reputation.
The Respondent does not have any rights or legitimate interests in the disputed domain name because the Respondent is not commonly known by the disputed domain name, and has not made any demonstrable preparations to use the disputed domain name to offer bona fide goods and services. There is no bona fide use of the website because the disputed domain name is currently parked on a page providing sponsored links.
The Respondent has not been licensed or otherwise authorized to use the TATA trademark by the Complainant.
The Respondent’s sole purpose in registering the name was to misappropriate the Complainant’s reputation and trademark. By parking the disputed domain name the Respondent is deriving a commercial benefit from misdirecting consumers and receiving a financial benefit from the sponsored links.
The Respondent registered the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s well known trademark at the time the domain name was registered. Further, the Respondent has not linked the disputed domain name to an active website, and as such the Respondent is deriving commercial benefit, misrepresenting itself as the Complainant and inducing Internet users to believe there is an association or affiliation between the Complainant and the Respondent.
The Respondent has engaged in typo squatting, which is also an act of bad faith.
The Respondent makes the following contentions:
The Tata component of the disputed domain name stands for “Trans American Trans Atlantic”. This is a very different name to the Complainant’s TATA mark (the Respondent does not deny that the Complainant has trademark rights in TATA).
The Respondent plans to conduct a realty business in the United States. The Complainant does not have a realty business in the United States.
The Complainant’s comments regarding the reputation in its TATA trademark, and the confusing similarity between the disputed domain name and the trademark, are irrelevant as the Respondent operates an entirely different business, under an entirely different name, in a different country.
The disputed domain name is not confusingly similar to the Complainant’s trademark, as there is the addition of the word “realty”. There is no intentional misspelling to try and confuse Internet users.
The Respondent has legal rights and legitimate interests in the disputed domain name because the Respondent proposes to conduct business under the name Trans Atlantic Trans American Realty (Tata Realty). The Respondent is not using Tata in the sense of the Complainant’s trademark, and therefore the Respondent does not require the Complainant’s authority to use Tata. The Respondent will not use Tata to promote its business.
The Complainant only established its real estate business in India in November 2007, which was two years after the disputed domain name Trans American Trans Atlantic Realty was registered.
The Respondent is willing to put a disclaimer on the disputed domain name website to redirect Internet users who were looking for the Complainant.
The disputed domain name was not registered and is not being used in faith. The page is currently parked free with the domain name Registrar until the website is finalized by the Respondent. The page will be finalized in the near future and the Respondent will make a bona fide offering of goods and services. The Respondent is not receiving any commercial benefit from parking the website, because the links are supplied by the Registrar.
The Respondent has not engaged in any typo squatting, as there has been no misspelling of words (intentional or otherwise).
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 provides that the Complainant must prove each of the following:
(i) that the disputed domain name 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 the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered a large number of trademarks in India over the word “tata”.
The Complainant has also registered TATA in several other countries, including the United States where the Respondent resides. See for example, registration No. 2929070 (for the word and image TATA) registered from March 1, 2005.
The Panel therefore finds that the Complainant has registered trademark rights in TATA. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s TATA trademark.
The disputed domain name contains the entirety of the Complainant’s trademark. It has been held in many prior panel 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” (see for example Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
The disputed domain name also contains the word “realty”, after the Complainant’s trademark. “Realty” refers to the provision of real estate services. This is a business that the Complainant is currently engaged in, since late 2007.
It has been well-established by previous panels that the addition of a generic term such as “realty” to a trademark does not necessarily eliminate the likelihood of confusion. There are many previous decisions which have found a domain name to be confusingly similar to a registered trademark where that name consists of the trademark coupled with a generic term. (See for example, Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727.)
As “realty” is a common word which describes the type of services being offered (and services which the Complainant also offers), the Panel finds that the disputed domain name is confusingly similar to the trademark TATA.
Accordingly, the first element has been met.
B. Rights or Legitimate Interests
It is common ground between the parties that the Complainant has not authorized or licensed the Respondent to use the TATA trademark. However the Respondent alleges that it does not require any authorization or license, because use of Tata in the disputed domain name refers to Trans American Trans Atlantic, and therefore the Respondent is or will be known by the disputed domain name. If this is the case, the Respondent will have satisfied paragraph 4(c)(ii) of the Policy.
The difficulty in this case is that the Respondent has failed to provide any evidence of its Trans American Trans Atlantic Realty business. A Google search of “Trans American Trans Atlantic Realty” does not return any results relating to the Respondent.
The response repeatedly refers to the Respondent “planning” or “proposing” to conduct business under this name. The Respondent has not provided any evidence of its plans or proposals (even at a very basic, preliminary stage) to use “Trans American Trans Atlantic Realty” as a business or trading name. It appears that the only step taken towards the creation of this business is the registration of the disputed domain name. As discussed further below, the website operating from the disputed domain name does not even contain the Respondent’s business name.
The Respondent has not provided evidence of any demonstrable preparations to use the disputed domain name for the bona fide offering of goods and services. If the Respondent had in fact decided on the Trans American Trans Atlantic Realty name at the time it registered the disputed domain name (in March 2005), it is reasonable to expect that the Respondent would by now have built a website, or registered a trademark, or at least been able to provide documents evidencing the future plans of the company (such as a business plan).
Without any such evidence the Panel is unable to conclude that the Respondent is known by 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, and the Respondent has failed to provide any evidence to the contrary.
Accordingly, the second element has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Firstly however, the Panel does not agree with the Complainant’s allegation that this is a case of typo squatting. This is because there is no obvious typographical error in the disputed domain name.
As mentioned above, the Respondent registered the disputed domain name in March 2005. The Complainant did not create its Realty and Infrastructure company until late 2007 (over two years later).
The question is whether it is reasonable to conclude that the Respondent had any knowledge of the Complainant and its trademark, at the time it registered the disputed domain name. If the Respondent did, it is possible that the Respondent registered the disputed domain name to intentionally attract Internet traffic from the Complainant’s website, for commercial gain.
Because of the fame and distinctiveness of the Complainant’s trademark and its use in the United States where the Respondent is located, the Panel believes it is reasonable to conclude that the Respondent had knowledge of the Complainant’s trademark at the time it registered the disputed domain name. At that time, the Complainant was a major conglomerate well known both in India and throughout the world and, given the wide variety of goods and services the Complainant was already immersed in, it would be reasonable to assume that the Complainant would also branch out into realty services. The Complainant already provided hotel and housing development services, to which realty services are closely linked.
Because the TATA trademark is extremely well known, it is likely that any Internet user with knowledge of the Complainant would believe the disputed domain name relates to a website of the Complainant dealing with realty services.
The Panel believes it is unlikely that the Respondent registered the disputed domain name for any reason other than to trade off the reputation of the Complainant’s trademark. If it had (i.e. for the purpose of the Trans American Trans Atlantic Realty business), it is reasonable to expect that the Respondent would have provided the Panel evidence of its business plans. It is also reasonable to expect that the Respondent would have built a website dedicated to this business, as the disputed domain name was registered almost three years ago.
The website is currently parked free courtesy of GoDaddy, Inc. Generally the situation with parking pages is that the owner of the domain name earns commission whenever an Internet user visits the website and clicks on a sponsored link. However, the Respondent asserts that it is not receiving any commercial benefit, because any revenue arising from hits on the sponsored links goes to the registrar and not the Respondent. Regardless of who is directly benefiting from the sponsored links, the website is currently displaying links to potential competitors of the Complainant in the realty industry. This may cause damage to the Complainant’s business if Internet users are confused as to the source of origin between the Complainant’s and Respondent’s websites.
The Panel therefore finds that the third element has been satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <tatarealty.com> be transferred to the Complainant.
Dated: February 20, 2008