WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. Jacob W.
Case No. D2016-1264
1. The Parties
The Complainant is Tata Sons Limited, Mumbai, India, represented by Anand & Anand, India.
The Respondent is Jacob W. of Sibu, Malaysia, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <tata.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 25, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2016. The Response was filed with the Center on July 13, 2016. On July 13, 2016 the Complainant requested permission to file a Supplement Filing. The Complainant filed a Supplemental Filing on July 13, 2016. The Respondent then made a similar request to reply to Complainant's filing. The Panel by a procedural order granted the Respondent permission whilst stating it would rule on admissibility of both the Complainant's and Respondent's Supplemental Filings in this decision. The Respondent files a Supplemental Filing on August 2, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 20, 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 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.
The Disputed Domain Name at the time the Complaint was filed resolved to a website with automatically generated links, largely to businesses associated with the Complainant. The website also indicated the Disputed Domain Name was for sale for USD 10,000.
The Disputed Domain Name was registered on August 2, 2015.
5. Parties' Contentions
The Complainant has filed an extremely lengthy Complaint with numerous supporting exhibits. It is not necessary to repeat it all in this decision. The salient points it makes are as follows.
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 Tata Group is India's largest corporate group. It had a turnover in excess of USD 100 billion in 2014/15, with 67% of this from businesses outside India. The Complainant has filed copies of numerous press articles from international publications showing it is extremely well known and respected.
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 Malaysia. It has very many domain names including the word "tata" (including for example <tata.com> and <tata.in>) and promotes its business via websites at those domain names.
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 various trademark cases and in many domain name cases brought before previous UDRP panels, details of which were provided. This indicates that the Complainant has a well known trademark and reputation.
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 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 Disputed Domain 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 Disputed Domain Name is offered for sale at the website to which it resolves for the exorbitant price of USD 10,000.
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 Disputed 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.
It is convenient to set out the substantive part of the Respondent's Response verbatim. It reads as follows:
"I would like to defense my domain name (tata.biz). My reasons are as follows:
1. I am from Malaysia and 'tata' is a just a common Malay word (Bahasa Melayu). Please visit http://prpm.dbp.gov.my/Search.aspx?k=tata to see the meaning of 'tata' in Malay . Please also see https://translate.google.com/#ms/en/tata to find out the meaning of tata in English.
2. I obtained tata.biz in open market. I did not backorder the domain nor win the domain in auction.
3. If tata.biz is so important to the Complainant, why didn't Complainant backorder or declare the trademark of 'tata' to the registrars in the first place?
4. The system for domain names registration operates on a first-come first-serve basis and anybody is entitled to obtain any domain name without proof of commercial use.
5. tata.biz is NOT developed yet!
6. 'tata' is still registrable in many new top level domains. For example, tata.store is available and the asking price is USD6500 at namecheap.com. Please search tata at namecheap.com and see the result."
6. Discussion and Findings
The admissibility of the Supplemental Filings needs to be determined. So far as the Complainant's Supplemental Filing is concerned the Panel declines to admit it save insofar as it relates to the meaning of the word "tata" in Malay. The other material it contains is largely repetitive or argumentative and could have been contained in the original Complaint. The material relating to the meaning of "tata" in Malay is admitted as this is a new issue raised by the Respondent. The Respondent's Supplemental Filing relates to this issue and is admitted.
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 has submitted detailed evidence that it is the owner of numerous registered trademarks consisting or including the word "tata".
The Panel holds that the Disputed Domain Name is identical to the TATA trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. It is well established that the specific top level of a domain name (in this case ".biz") does not typically 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.
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 TATA trademark. The Complainant has prior rights in the TATA trademark that 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. The Panel notes that the Respondent suggests "tata" is a word in Malay and (presumably) claims that amounts to a legitimate interest. The Panel does not accept this, but this issue is discussed further below in relation to bad faith. 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 TATA trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the TATA trademark, and the confusingly similar nature of the Disputed Domain Name to the TATA trademark, 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 business. The filed evidence establishes that the Complainant is on an international scale a very large and well known group of companies, which has been in business for many years under its name, which is very widely known. Leaving aside for one moment the Respondent's case as to the meaning of "tata" in Malay the evidence establishes that the name "Tata" is distinctive and has no other obvious meaning apart from in relation to the Complainant and its many businesses.
In reaching this conclusion the Panel has considered the various points the Respondent has made. The Panel notes firstly that the Respondent is silent as to whether or not he knew of the Complainant when registering the Disputed Domain Name. The Panel infers he most likely knew – even if he was not previously aware of the Complainant, the most cursory of Internet searches for the word "tata" would provide comprehensive details about the Complainant and its businesses. In the absence of any positive case from the Respondent the Panel infers that, at a minimum, the Respondent must have carried out some sort of search and become aware of the Complainant. Most of the supposed grounds the Respondent relies upon to justify his registration are based on a misconception of the nature and applicability of the Policy. In particular in this panel's opinion registration of domain names is not an unfettered "first come first served" system, and the fact that the Disputed Domain Name was available for the Respondent to register is not itself a defence. Similarly the fact that other domain names including the word "tata" can still be registered is irrelevant. It also does not matter that the Complainant had not itself registered the Disputed Domain Name – there is no obligation on a party to register every possible domain name which might be used in bad faith if adopted by another party.
That leaves one issue which merits consideration – the Respondent's claim he registered <tata.biz> because of its meaning in Malay. The Respondent originally annexed various dictionary entries which appeared to confirm that "tata" had some meaning in Malay. The Complainant in its Supplemental Filing disputed that the Respondent's explanation was true but did not appear to dispute that "tata" had some meaning in Malay. Accordingly the Panel by its Procedural Order sought further information and directed the Respondent to file a further explanation in this regard. The Respondent's Supplemental Filing set out various information on this issue, of which the following is most pertinent:
"tata means arrangement, event, order, system, method
biz means business, affair, work
The meanings of tata.biz in Malay can be translated as follow :
a. business/affair/work/event arrangement
b. business/affair/work event
c. put everything in order
d. a system or method"
The Respondent then went on to say:
"The respondent initially planned that tata.biz would be used for his web-based application project.
The project is halfway done but the respondent would like to show partial functionality of the applications. Tata.biz is currently locked by registrar. Therefore, the respondent had uploaded partial web-based application files to another Malay word domain - boleh.co. Boleh means can, able, capable in Malay.
The language used for planned tata.biz is in Malay. Thus, the respondent had added Google Translate Button so that the panelist and the complainant can see translated Malay words in English.
Please visit http://boleh.co
The slogan of tata.biz is
Kaedah Mengaturkan Penyertaan Yang Paling Mudah!
The Easiest Way To Arrange Entries!
The main idea is to add the entries in one go. The Admin may upload a filled Microsoft Excel file into online database (mysql). All the entries will be then arranged automatically right after the Excel file being uploaded. There is no more 'copy and paste' task to arrange all the entries. The participants will then be able to get all the needed information online."
The Panel has viewed the website at "www.boleh.co" (which comprises a single page in Malay, with a box for text entry and what may be some sort of search functionality). The Panel declines to undertake the further steps the Respondent envisages which are not clearly explained or understandable, as in any event it does not consider these necessary to reach its decision.
The Panel finds the Respondent's explanation unconvincing. Even assuming that the word "tata" does have the meanings in Malay the Respondent says, the Panel notes that: (1) the web project he describes was not in fact launched prior to this Complaint being filed; (2) the project description is very difficult to understand and it is not at all clear to whom it is directed or what it is supposed to do; (3) the supposed meaning of "tata.biz" in Malay seems very convoluted and hardly an easy or convenient way to refer to this project, whatever it is; (4) the Respondent has not produced any corroborating material which predates the Complaint and which clearly shows credible details of his plans for this project; (5) the Disputed Domain Name was used for a parking page and offered for sale on that page; and (6) even if the Respondent had independently decided <tata.biz> was a good name because of its meaning in Malay (which the Panel doubts for the preceding reasons) the Respondent must in any event have been or become aware of the Complainant and the strength of its trademark when he decided to register the Disputed Domain Name. At that point he could and should have selected a different name, rather than one which is identical to the Complainant's trademark.
So far as the subsequent use of the Disputed Domain Name is concerned the website operated by the Respondent at the Disputed Domain Name comprised a series of "click-through" links to businesses associated with the Complainant and other third party websites. The Respondent presumably earns "click-through" linking revenue as a result. The Panel infers the Respondent's website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click-through" traffic, and that traffic has been attracted because of the name's association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, 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 all 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, <tata.biz>, be transferred to the Complainant.
Nick J. Gardner
Date: August 8, 2016