WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Ltd. v. Gina Kilindo, Tata Agro Holding Ltd.
Case No. D2014-0152
1. The Parties
Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand & Anand, India.
Respondent is Gina Kilindo, Tata Agro Holding Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <tataagro.biz>, <tataagro.com>, <tataagro.net> and <tataagro.org> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On January 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Following notification from the Center by emails dated February 13 and February 14, 2014 of the need for amendments to the Complaint to meet requirements regarding acceptance of mutual jurisdiction and disclosure of ongoing court proceedings, Complainant submitted amendments to the Complaint on February 14 and February 17, 2014, respectively.
The Center verified that the Complaint together with the amendments to 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 Respondent of the Complaint with the amendments, and the proceedings commenced on February 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 12, 2014. 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 the owner of registrations for the word trademark TATA on the Trade Marks Registry of Intellectual Property India, including registration number 92645, registration dated February 16, 1944, in international class (IC) 9, covering “welding electrodes”; registration number 92648, registration dated February 16, 1944, in IC 30, covering “salts not falling in other classes”; and registration number 1236890, registration dated September 16, 2003, in IC 35, covering, inter alia, advertising, business and on-line retail services. Complainant has provided evidence of ownership of registration in India of a number of device/design and word marks incorporating TATA. Complainant has listed ownership of registration of the word, and word and device/design, trademarks incorporating TATA in a substantial number of countries other than India. Complainant has provided evidence that the TATA word, and word and device/design trademarks have been recognized as well-known under the law of India.
Complainant has long been involved in the agricultural sector in India, including through activities in the agricultural chemical and seed sectors (through its affiliated company Rallis India, Ltd.), and through an agricultural implement manufacturer that appears to have been operating since 1925 under the name Tata Agrico, with commercial website at “www.tataagrico.com”. Other affiliates of the Tata group involved in agriculture include Tata Chemicals Limited which, inter alia, operates Tata Kisan Centres that provide various products and services for farmers; and Tata Power that is involved in promoting sustainable agricultural practices.
Complainant, including its various affiliated companies, is India’s largest private sector employer, with a combined market capitalization of over USD 110 billion. Complainant has registered and uses a substantial number of domain names incorporating the TATA trademark in connection with its various affiliated enterprises.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to the Internic WhoIs database, the disputed domain names were all created on July 31, 2013.
Respondent has used the disputed domain name <tataagro.com> to direct Internet users to a website that incorporates a distinctive TATA device mark (stylized “T” within an oval), and the TATA word trademark accompanied by the term “Agro”. On that website, Respondent has offered investment products, referring to itself as “TATA AGRO HOLDING”. That website has displayed a testimonial from a person stated to be the CEO of “TATA AGRO HOLDING”, who Complainant claims is in fact a senior officer of a subsidiary of Complainant that is involved in investments and listed on two public securities exchanges in India. The website under <tataagro.com> includes photographs of this executive used without his knowledge or consent, and includes a forged replica of his signature according to Complainant. The other disputed domain names inter alia, have directed Internet users to pay-per-click (PPC) webpages that include a number of “TATA” combination terms, including, for example, “TATA Finance”, “TATA Motors” and “TATA Mutual Funds”. Complainant indicates these terms have linked Internet users to providers of goods and services competing with those of Complainant. Some changes have been made to the content of these listings since Complainant initiated proceedings against Respondent in the Delhi High Court in India.
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark and service mark (hereinafter “trademark”) TATA based on common law and statutory rights, and as evidenced by registration in India and other countries. Complainant argues that the trademark TATA is well-known in India and other countries.
Complainant contends that the disputed domain names are identical and confusingly similar to its TATA trademark, particularly as the disputed domain names combine a term that identifies a line of business in which Complainant has long-standing presence.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant has not authorized Respondent to use its trademark; (2) Respondent may propose to offer the disputed domain names for sale; (3) Respondent’s use of the disputed domain names is not bona fide because Respondent is using the disputed domain names to cause initial interest confusion; and (4) there is no plausible explanation for Respondent to use the disputed domain names since Complainant has the exclusive right to use its trademark.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) Complainant’s trademark is well-known and Respondent must have known of Complainant’s trademark when it registered the disputed domain names; (2) Respondent was aware of the commercial value of Complainant’s trademark and related domain names when it registered the disputed domain names and sought to take unfair advantage of that commercial value; (3) the website established by Respondent at the disputed domain name <tataagro.com> used Complainant’s well-known device mark, Complainant’s slogan (i.e. “Leadership with Trust”), fraudulently stated that a senior officer of Complainant was Respondent’s CEO, and provided bank account information for Respondent (pursuant to an on-line chat initiated by Complainant’s representative), all indicating that Respondent was intending to defraud Internet users; (4) Respondent registered and is using the disputed domain names to prevent Complainant from registering its trademark in corresponding domain names; (5) Respondent’s registration of Complainant’s well-known trademark in the disputed domain names is sufficient in itself to constitute bad faith; and (6) Respondent has used Complainant’s trademark on the websites associated with <tataagro.biz>, <tataagro.net> and <tataagro.org> to falsely suggest that Respondent is involved in the businesses associated with its trademark, and has directed Internet users to goods and services competing with those of Complainant, taking unfair advantage of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration and in the Complaint. Respondent did not reply to email notification. The express courier delivery service engaged by the Center reported that the Complaint was successfully delivered to the address in the British Virgin Islands (including signed acknowledgment of delivery). The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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 and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word trademark TATA on the Trade Marks Registry of Intellectual Property India (see Factual Background, supra), as well as evidence of long-standing use of the TATA trademark in commerce in India. Respondent has not challenged Complainant’s assertion of rights in the TATA trademark in India. The Panel determines that Complainant owns rights in the trademark TATA in India.1
Complainant has further provided evidence sufficient to establish that its TATA trademark is recognized as well-known in India.
Each of the disputed domain names, <tataagro.biz> <tataagro.com> <tataagro.net> and <tataagro.org> directly incorporates Complainant’s TATA trademark. Each of the disputed domain names also adds the term “agro”, which is a combining term that refers to agriculture.2 The combination of Complainant’s distinctive trademark with a term referring to a line of commerce with which Complainant has long been associated does not materially diminish the confusing similarity between the disputed domain names and Complainant’s trademark. Because of the association with Complainant’s line of commerce, the addition of the term “agro” results in disputed domain names that are confusingly similar to Complainant’s TATA trademark. The addition of the generic Top-Level Domain (gTLD) suffixes “.biz”, “.com”, “.net” and “.org” does nothing to ameliorate potential Internet user confusion in the present context. The Panel determines that the disputed domain names are confusingly similar to Complainant’s TATA trademark.
The Panel determines that Complainant has established rights in the TATA trademark, and that the disputed domain names are confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in Section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not responded to the Complaint, and has not affirmatively provided any ground on which it might establish rights or legitimate interests in the disputed domain names. Respondent has used the disputed domain name <tataagro.com> to misrepresent itself as Complainant in an apparent effort to defraud Internet users, and has used the disputed domain names <tataagro.biz>, <tataagro.net> and <tataagro.org> in connection with PPC webpages that include multiple references to Complainant’s trademark combined with terms that might be expected to be associated with Complainant and its businesses, without Complainant’s authorization. These webpages also appear to have provided links to competitors of Complainant.3> These uses do not affirmatively establish rights or legitimate interests in the disputed domain names. The Panel does not find any grounds of rights or legitimate interests on the part of Respondent otherwise to be facially apparent. Respondent has not rebutted Complainant’s prima facie showing of lack of rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that each of the disputed domain names “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith.” Among those circumstances are: “by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain names that incorporate Complainant’s distinctive trademark. It has used one of those disputed domain names, <tataagro.com>, to direct Internet users to a website that manifestly is intended to have the appearance of a website sponsored or operated by Complainant, including by using the identity of one of Complainant’s senior officers without consent. Respondent’s website under the disputed domain name <tataagro.com> appears intended to induce Internet users to transmit funds to Respondent using the pretense of Complainant’s involvement. Respondent has not attempted to defend or justify this conduct. Respondent has registered and is using Complainant’s trademark intentionally for commercial gain to attract Internet users to Respondent’s website by creating confusion with Complainant’s mark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Such registration and use is in bad faith.
Respondent has used the disputed domain names <tataagro.biz>, <tataagro.net> and <tataagro.org> to direct Internet users to webpages that use Complainant’s trademark in multiple instances in combination with terms likely to be associated with Complainant and its businesses. According to Complainant, those combination terms are linked to other sites offering goods and services competitive with those of Complainant. In all events, Respondent has not been authorized to use Complainant’s trademark on these webpages so as to suggest Complainant’s association with Respondent and its websites. Particularly in view of the way that Respondent has used the disputed domain name <tataagro.com>, the Panel is satisfied that Respondent registered and is using the disputed domain names <tataagro.biz>, <tataagro.net> and <tataagro.org> in bad faith for commercial gain to create a confusing and false impression that Complainant is the source, sponsor, affiliate or endorser of Respondent’s websites associated with <tataagro.biz>, <tataagro.net> and <tataagro.org>. There is nothing about Respondent’s conduct to suggest good faith.
They Panel determines that Respondent registered and is using the disputed domain names <tataagro.biz>, <tataagro.com>, <tataagro.net> and <tataagro.org> in bad faith within the meaning of the Policy.
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 names <tataagro.biz>, <tataagro.com>, <tataagro.net> and <tataagro.org> be transferred to Complainant.
Frederick M. Abbott
Date: March 27, 2014
1 Complainant has also provided evidence of registration of word, and word and design/device, trademarks in India and other countries. Because the establishment of rights in the word mark in India are adequate for the Panel to make a determination in this proceeding, the Panel need not consider Complainant’s additional trademark rights.
2 See, e.g., “agro- combining form 1. denoting fields, soil, or agriculture: agronomy. [from Greek agros field]” Collins English Dictionary – Complete and Unabridged, at “www.thefreedictionary.com/agro-”, Panel visit of March 25, 2014.
3 Complainant’s printouts of the webpages incorporating its trademark did not specifically include the linked pages showing the competitive offerings referred to in its Complaint. A Delhi High Court interim injunctive order annexed to the Complaint (Tata Sons Limited v. Kilindo & ORS, High Court of Delhi, CS(OS) No. 46/2014), January 6, 2014 refers to the linking alleged by Complainant, and to printouts. However, printouts showing the results of click-through do not specifically accompany the Complaint. On the basis of the Court order, the Panel has indirect support for Complainant’s allegation regarding the webpages associated with clicking-through on links. In all events, the Panel would find that Complainant has established a lack of rights or legitimate interests on the part of Respondent on the basis of the extensive use of Complainant’s trademarks on Respondent’s websites whether or not there were links to third-party providers of goods or services.