WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. Randy Ulring
Case No. D2015-1066
1. The Parties
The Complainant is Tata Sons Limited of Mumbai, Maharashtra, India, represented by DePenning & DePenning, India.
The Respondent is Randy Ulring of Lakewood Ranch, Florida, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <tatatruck.com> (“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 22, 2015. On June 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 23, 2015, 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 verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2015.
The Center appointed Isabel Davies as the sole panelist in this matter on August 17, 2015. 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 the owner of registered trade marks for TATA in various forms in India and around the world dating back to 1992 in the areas of communications and information technology, engineering, materials, services, energy, consumer products and chemicals.
The Disputed Domain Name was registered on March 4 2004.
5. Parties’ Contentions
A. Complainant
That the Disputed Domain Name is identical or confusingly to a trade mark and service mark in which the complainant has rights
(Policy, paragraph 4(a)(i); Rules, paragraphs, 3(b)(viii), (b)(ix)(1))
The Complainant states that it is the promoter of the major operating Tata companies and holds significant shareholdings in these companies. The Tata Group of Companies consists of over 100 operating companies in seven business sectors: communications and information technology, engineering, materials, services, energy, consumer products and chemicals. The group has operations in more than 80 countries across six continents, and its companies export products and services to 85 countries. The total revenue of Tata companies, taken together, was USD 100.09 billion in 2011-12, with 58 percent of this coming from business outside India. Tata companies employ over 450,000 people worldwide.
Tata Motors Limited (Tata Motors) is among the top five commercial vehicle manufacturers in the world and India’s market leader in commercial vehicles and among the top three in passenger vehicles. It is also the world’s fourth-largest truck and bus manufacturer. Tata Motors, as one of the prominent players in the TATA group, began manufacturing commercial vehicles in 1954 with a 15-year collaboration agreement with Daimler Benz of Germany and has since expanded substantially internationally becoming a well known international company. The official website of Tata Motors Limited is at <tatamotors.com>.
The Complainant states that the word “tata” is the dominant and essential feature of the Complainant’s corporate name which connotes the distinctiveness, reputation, quality and goodwill acquired over scores of years. The word “tata” forms an important part of the corporate name of the Complainant and has been derived from the surname of its founder, Jamshedji Tata. The Complainant is the prior, original and bona fide adopter of the trade mark TATA.
Tata Motors has advertised its TATA trade mark through various forms of media such as print and electronic media, also through participation in the fairs and exhibitions etc. Tata Motors has spent substantial amount of money on the publicity of the TATA trade mark thus sustaining the extensive reputation existing in the market.
The Complainant states that the use of the keyword “tata truck” in any leading search engine throws up the web pages of Tata Motors among the leading hits and exhibits the results of a Google search.
The Complainant contends that, on account of extensive usage of the trade mark TATA, the said mark is identified solely and exclusively only with the Complainant and its group company Tata Motors and none other. Further, the TATA brand, has gained a huge customer base internationally and is identified, associated and recognized only with the Complainant and its group companies. Therefore, adoption and/or usage of TATA by others would amount to not only dilution of the Complainant’s rights over the distinct mark but also would result in confusion and deception by any unauthorized usages of others. The Complainant contends that such unauthorized usage of the Complainant’s mark TATA suffixed with a descriptive term “truck” as a domain name by others would also amount to infringement and passing off as the activity is nothing but cyber squatting.
That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
(Policy, paragraph 4(a)(ii); Rules, paragraphs, 3(b)(ix)(2))
The Complainant contends that the trade mark TATA has acquired both statutory right and Common Law rights. The Complainant relies on Indian Trade Mark registrations dating back to 1992 for the purpose of its Complaint.
The Complainant states that various judicial fora have upheld the Complainant’s and its Group of Companies trade mark right over the well known trade mark TATA and in this regard and relies on the following decisions:
Tata Sons Ltd. & Anr. v. Mr. Dharmendra, CS (OS) No. 2963/2011
Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432; 90 (2001). DLT 659
Tata Sons Ltd. v. Ramadasoft, WIPO Case No. D2000-1713
Tata Sons Limited v. TATA Telecom InclTata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671
Tata Tea Ltd v. Gem Lifts Ltd, WIPO Case No. D2000-1823
Tata Sons Ltd Vs mmt admin/Oktatabyebye.com, WIPO Case No. D2009-0646
Tata Sons Ltd Vs Deep Bhasin/PrivacyProtect.org, WIPO Case No. D2012-2188
The Complainant contends that the Respondent has not only adopted the well-known trade mark TATA, but has also suffixed the trade mark with the generic word “truck” , so that, apart from infringing on the Complainant’s established trade mark rights is also misrepresenting that he has been authorized as a dealer of TATA vehicles, contrary to the interest of the Complainant and opposing the public interest.
The Complainant submits that the Disputed Domain Name is nearly identical to the Complainant’s trade mark TATA and gives an impression that it is either associated with or authorized by the Complainant’s group company Tata Motors.
The Complainant contends that the Respondent has no right to and legitimate interests in the Disputed Domain Name and that the Respondent illegally and wrongfully adopted the well known trade mark TATA of the Complainant with the intention to create an impression of an association with the Complainant and its group company Tata Motors.
The Complainant further contends that the Respondent wrongfully and fraudulently adopted and registered the Disputed Domain Name in order to utilize the name and reputation attached to the TATA trade mark without having any rights thereto and in spite of having full knowledge of the extensive reputation associated with the TATA trade mark and the group company Tata Motors.
The Complainant states that neither it nor any entity belonging to the Tata Group of Companies has licensed or otherwise permitted the Respondent to use its TATA mark, nor has it permitted the Respondent to apply for or use any domain name incorporating the mark TATA.
It avers that the Disputed Domain Name clearly incorporates the well known trade mark TATA of the Complainant in its entirety and that such use of the Disputed Domain Name is considered evidence of bad faith registration and use under the UDRP.
It contends that the Disputed Domain Name incorporating the well known trade mark TATA in conjunction with the word “truck” will give the impression that the Disputed Domain Name is associated with the Complainant and its group company Tata Motors Limited. It states that the Complainant has no connection with the Respondent and that the Complainant has never permitted the Respondent to obtain the Disputed Domain Name.
The Complainant and its group company claim enormous presence on the Internet and ownership of various domain names consisting of the words “tata” and/or “truck” and gives details of many of these.
The Disputed Domain Name was registered and is being used in bad faith
(Policy, paragraph 4(a)(iii), 4(b); Rules, paragraphs, 3(b)(ix)(3))
The Complainant contends that the purpose and intent of the Respondent in adopting the Disputed Domain Name is to cash in on the name, fame, reputation, image and goodwill of the Complainant and Tata Group of Companies which have been built up assiduously over the last 100 years and that the Respondent is deceiving the public, by employing a domain name identical to the reputed mark TATA and by including the term “truck” gives an impression of being associated to the Complainant’s group company Tata Motors.
It contends that an innocent consumer is bound to be misled by the Disputed Domain Name and that this shows a manifest intention to commit a fraud to mislead innocent and gullible consumers by unfair and dishonest means.
It also avers that the use and existence of the Disputed Domain Name will cause damage and injury both to the Complainant’s business and to their reputation and goodwill. The Respondent has attempted to make a deliberate misrepresentation to the public at large and it cannot be a matter of mere coincidence. It is a deliberate attempt by the Respondent to derive unfair advantage and cause misrepresentation. The misrepresentation is bound to cause confusion and deception in the minds of the purchasing public.
The Complainant therefore submits that the registration of the Disputed Domain Name by the Respondent was made in bad faith and that members of the public and the trade would associate it with the Complainant and would get a wrong impression that the Respondent is associated with the Complainant resulting in confusion in the minds of the public and trade as to the source, sponsorship, affiliation or endorsement.
The Complainant states that the circumstances identified in paragraphs 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognizes circumstances that can be evidence that a domain name was registered and is being used in bad faith.
It contends that the particular circumstances of this case, which lead to this conclusion, inter alia are:
- The Complainant’s well known trade mark TATA has a strong reputation and is widely known, as evidenced by its substantial use throughout the world.
- The Respondent has merely adopted the Disputed Domain Name with the sole purpose to derive profit from the Pay-Per-Click links by exploiting the well-known status associated with the Complainant’s trade mark. The web-links to other e-commerce sites provided by the Respondent offer used commercial trucks for sale and other Tata cars for sale.
- Taking into account all of the above and the other facts and circumstances submitted in the Complaint, the Complainant submits that it is not possible to conceive any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate, such as the tort of passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under the trade mark law.
The Complainant states that it will not be able to effectively pursue its business plans in the Internet unless the registration of the Disputed Domain Name is held by the Complainant. The Complainant stands to lose financially and risk dilution of brand value associated with the mark TATA. It contends that the legitimate rights of the Complainant, to the transfer of the Disputed Domain Name bearing its well-known trade mark, TATA is also recognized and well settled by the earlier UDRP decisions.
In addition the Complainant evidences that the Respondent has created web pages similar to those of the Complainant and has uploaded pictures and information about the Complainant’s TATA vehicles. Further the Respondent’s website is redirected to e-commerce sites which offer on line booking of trucks across India.
Therefore, the Complainant submits, for the interest of justice and interest of public at large, the Disputed Domain Name ought to be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.
That the Disputed Domain Name is identical or confusingly similar to a trade mark and service mark in which the Complainant has right
(Policy, paragraph 4(a)(i); Rules, paragraphs, 3(b)(viii), (b)(ix)(1))
The Panel accepts that the Complainant is the promoter of the major operating Tata companies and holds significant shareholdings in the Tata Group of Companies which consists of over 100 operating companies in seven business sectors: communications and information technology, engineering, materials, services, energy, consumer products and chemicals. The Panel accepts that the group has operations in more than 80 countries across six continents, and its companies export products and services to 85 countries. The total revenue of Tata companies, taken together, was USD 100.09 billion in 2011-12, with 58 percent of this coming from business outside India. Tata companies employ over 450,000 people worldwide.
The Panel accepts that Tata Motors is among the top five commercial vehicle manufacturers in the world and India’s market leader in commercial vehicles and among the top three in passenger vehicles. It is also the world’s fourth-largest truck and bus manufacturer.
The Panel accepts that the word “tata” is the dominant and essential feature of the Complainant’s corporate name which connotes the distinctiveness, reputation, quality and goodwill acquired over scores of years and that the word “tata” forms an important part of the corporate name of the Complainant and has been derived from the surname of its founder, Jamshedji Tata. The Complainant is the original and bona fide adopter of the TATA trade mark.
The Complainant is the owner of registered trademarks for TATA in various forms in India and around the world dating back to 1992.
The Panel accepts that Tata Motors, one of the prominent players in the TATA group, began manufacturing commercial vehicles in 1954 with a 15-year collaboration agreement with Daimler Benz of Germany and has since expanded substantially internationally becoming a well known international company.
The Panel accepts that Tata Motors has advertised its TATA trade mark through various forms of media such as print and electronic media and through participation in fairs and exhibitions etc. Tata Motors has spent a substantial amount of money on the publicity for TATA trade mark sustaining the extensive reputation in the market.
The Panel accepts that, on account of extensive usage of the trade mark TATA, the mark is identified solely and exclusively with the Complainant including its group company Tata Motors and none other.
The Panel accepts that the adoption and/or usage of “tatatruck” by others would amount not only to dilution of the Complainant’s rights over the distinctive mark but also would result in confusion and deception by unauthorized use and that unauthorized use of the Complainant’s mark TATA suffixed with a descriptive term “truck” as a domain name would also amount to infringement and passing off.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s TATA trade marks.
That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
(Policy, paragraph 4(a)(ii); Rules, paragraphs, 3(b)(ix)(2))
The Panel accepts that the trade mark TATA has acquired both statutory and common law rights and that the Complainant has Indian Trade Mark registrations dating back to 1992 and various trade mark registrations around the world.
The Panel notes that various judicial fora have upheld the Complainant’s and its Group of Companies’ trade mark right over the well known mark TATA including the following decisions:
Tata Sons Ltd. & Anr. v. Mr. Dharmendra, CS (OS) No.2963/2011
Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432; 90 (2001). DLT 659
Tata Sons Ltd. v. Ramadasoft, WIPO Case No. D2000-1713
Tata Sons Limited v. TATA Telecom InclTata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671
Tata Tea Ltd v. Gem Lifts Ltd, WIPO Case No. D2000-1823
Tata Sons Ltd Vs mmt admin/Oktatabyebye.com, WIPO Case No. D2009-0646
Tata Sons Ltd Vs Deep Bhasin/PrivacyProtect.org, WIPO Case No. D2012-2188
The Panel accepts that the Respondent, by adopting the well-known trade mark TATA and also suffixing the trade mark with the word “truck”, is misrepresenting that he has been authorized as a dealer of TATA vehicles, contrary to the interest of the Complainant and the public, deliberately giving the impression that it is either associated with or authorized by the Complainant’s group company Tata Motors and utilizing the name and reputation attached to the TATA mark without having any rights thereto.
The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s extensive reputation.
The Panel accepts that neither the Complainant nor any entity belonging to the Tata Group of Companies has licensed or otherwise permitted the Respondent to use its TATA mark, nor has it permitted the Respondent to apply for or use any domain name incorporating the mark TATA.
The Panel accepts that the Disputed Domain Name clearly incorporates the well known trade mark TATA in its entirety and that such use of the Disputed Domain Name is evidence of bad faith registration and use under the UDRP.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith
(Policy, paragraph 4(a)(iii), 4(b); Rules, paragraphs, 3(b)(ix)(3))
The Panel finds that the purpose and intent of the Respondent in adopting the Disputed Domain Name was to cash in on the name, fame, reputation and image and goodwill of the Complainant and Tata Group of Companies which has been built up over the last 100 years and that the Respondent is deceiving the public, by employing the Disputed Domain Name which is confusingly similar to the reputed mark TATA and that by including the term “truck” gives an impression of being associated to the Complainant’s group company Tata Motors.
It accepts that an innocent consumer would be misled by the Disputed Domain Name and that this shows an intention to mislead innocent and consumers by unfair and dishonest means.
The Panel accepts that the use and existence of the Disputed Domain Name will cause damage and injury both to the Complainant’s business and to its reputation and goodwill. The Respondent is making a deliberate misrepresentation to the public at large and the Panel finds that this is not a matter of mere coincidence but a deliberate attempt by the Respondent to derive unfair advantage and make a misrepresentation which will cause confusion and deception in the minds of the trade and public. People would get a wrong impression that the Respondent is associated with the Complainant resulting in confusion in the minds of the public and trade as to the source, sponsorship, affiliation or endorsement.
The Panel accepts the Complainant’s evidence that the Respondent created web pages similar to those of the Complainant and uploaded pictures and information about the Complainant’s TATA vehicles. The Respondent’s website is redirected to e-commerce sites which offer on line booking of trucks across India but also links to other online sites marketing other brands than the Complainant’s. The Complainant has produced evidence of web links to other e-commerce sites provided by the Respondent which offer used commercial trucks for sale and other TATA cars for sale.
The Panel accepts that the Respondent has adopted the Disputed Domain Name to derive profit from the pay-per-click links by exploiting the Complainant’s trade mark.
The Panel accepts that the Complainant’s internet activities will be damaged by the Respondent’s use of the Disputed Domain Name and the Complainant will lose financially and risk dilution of brand value associated with the mark TATA.
The Panel finds that the Disputed Domain Name was registered and used in bad faith.
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 <tatatruck.com> be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: August 30, 2015