WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TATA AIG General Insurance Company Ltd v. David Wascher
Case No. D2016-1187
1. The Parties
The Complainant is TATA AIG General Insurance Company Ltd of Mumbai, India, internally represented.
The Respondent is David Wascher of Fort Mill, South Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tataaig.com> (the “Disputed Domain Name”) is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name and the domain name <tataaiginsurance.com>. On June 17, 2016, the Registrar for the Disputed Domain Name transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 14, 2016 the registrar for the domain name <tataaiginsurance.com> transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name <tataaiginsurance.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2016 providing the registrant and contact information disclosed by the registrars, and inviting the Complainant to submit an amendment to the Complaint or to file a separate Complaint for each domain name with a different Respondent. The Complainant submitted an email communication to the Center on June 27, 2016 stating it wished to proceed only as to the Disputed Domain Name.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 22, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (Hereinafter both referred together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 21, 2016. 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 registered as a company under the applicable laws of India and is engaged in the business of general insurance. It is a general insurance company in India. It is a joint venture between two established conglomerates namely the Tata Group and American International Group, Inc (AIG).
The Disputed Domain Name was registered on October 10, 2007. It does not resolve to an active website.
5. Parties’ Contentions
The Complainant’s case is as follows.
The Complainant combines the Tata Group's pre-eminent leadership position in India and AIG's global presence as the world's leading international insurance and financial services organization. The Complainant started its operations in India on January 22, 2001. It provides insurance solutions to individuals and corporate. It offers a complete range of general insurance products including Motor Insurance, Health Insurance, Home Insurance, Travel Insurance, Lifestyle Insurance as well as several specialized financial lines.
So far as the Tata Group is concerned 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. The TATA brand is extremely valuable and well known.
So far as AIG is concerned AIG is a leading international insurance organization with operations in more than 130 countries and jurisdictions. AIG companies serve commercial, institutional, and individual customers. In addition, AIG companies are leading providers of life insurance and retirement services around the world.
The Complainant is the owner of the trademark TATA AIG registered with the Trade Marks Registry in India since 2003 and has made continuous use of the said trademark to carry on its business of general insurance. The Complainant has expended considerable time, effort and money in advertising, promoting and selling products / insurance policies under the brand name “Tata AIG” and the Complainant’s mark has been widely publicized in the market. TATA AIG is also the holder of following domain names in India –<tataaiginsurance.in>; <onlinetataaig.in>; <tataaiggeneralinsurance.com>; <tataaigmediprime.com>; <onlinetataaig.com>; and <tatageneral.com>.
The Disputed Domain Name is identical to the Complainant’s trademark.
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 Disputed Domain Name which is being passively held by the Respondent and does not resolve to an active website.
The Respondent has not been licensed or otherwise authorized to use the TATA or TATA AIG trademarks by the Complainant.
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.
The Respondent did not reply to the Complainant's contentions
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel adopts the approach set out in paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s evidence shows it to be the proprietor of Indian registered trademark no 1256495 registered on December 22, 2003 (the “TATAAIG trademark”). That appears to be a stylized representation of the words “Tata AIG Insurance”. The Panel concludes the Disputed Domain Name is similar to this trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031.
It is well established that the specific top level of the domain name (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TATAAIG trademark. The Complainant has prior rights in the TATAAIG trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the TATAAIG trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the TATAAIG trademark, and the confusingly similar nature of the Disputed Domain Name to the TATAAIG trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The Respondent passively holds the Disputed Domain Name. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 2.0 at paragraph 3.2 as follows: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.
In this case the highly distinctive nature of the Complainant’s TATAAIG trademark leads the Panel to conclude the registration and use are in bad faith. The Panel cannot conceive of any credible use for the Disputed Domain Name that does not involve an attempt to trade off the Complainant’s reputation and this must have been apparent to the Respondent when registering the Disputed Domain Name. It does not matter that the Respondent has not as yet used the Disputed Domain Name for such a purpose. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. Accordingly, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <tataaig.com> be transferred to the Complainant.
Nick J. Gardner
Date: August 4, 2016