WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Ltd. v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Accounting Tata Communications, Tata Communications Limited
Case No. D2017-1210
1. The Parties
The Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Accounting Tata Communications, Tata Communications Limited of Ramat Gan, Ha Merkaz, Israel, internally represented.
2. The Domain Name and Registrar
The disputed domain name <tata-communications.com> (the “Domain Name”) 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 22, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 28, 2017.
The Center verified that the amended 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 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. A communication was received from the Respondent by the Center on June 30, 2017. As the communication was received well before the due date for Response, the Center requested confirmation from the Respondent that the communication should be regarded by the Center as its complete Response. On July 3, 2017, the Respondent sent an email to the Center, requesting to add an annex to its Response (a trademark filling receipt issued by the Israeli Ministry of Justice).
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 25, 2017. 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.
On July 10, 2017, the Complainant sent an email informing the Center that it wished to file a reply to the Respondent’s communication. The Center informed the Complainant the same day that the Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent, with no express provision for supplemental filings by either party. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings, including further statements or documents from either Party. The Center stated that it would transmit any supplemental filings to the Panel, once it was appointed, for consideration. The Complainant filed a supplemental filing on July 10, 2017.
4. Factual Background
The Complainant is an Indian company headquartered in Mumbai. As detailed in the Complainant’s most recent financial report and its website at “www.tata.com”, it is the promoter and significant shareholder of the major operating companies of the Tata Group, a multinational conglomerate active in several industries, including textiles, iron and steel, automotive, telecommunications, power generation, aviation, financial services, information technology, outsourced data processing and customer support services, food and beverages, hotels, real estate, and retail, across India and globally. The group generates annual revenues of more than USD 103 billion, most of which comes from business outside India. Twenty-nine of its companies are listed on stock exchanges. The group’s companies use numerous websites in addition to the corporate website mentioned above, including one nearly identical to the Domain Name, “www.tatacommunications.com”, which is operated by an affiliate, Tata Communications Ltd.
Named after its founder, the Complainant has used its company name as a trademark since its inception in 1917. According to the Complaint, the family name is a rare name in India and was associated with the family’s business since 1868. The record includes numerous examples of media recognition of the TATA brand in India and internationally, as well as citations to publications delineating the history of the brand and its global reputation, which the Complainant mentions in support of its asserted common law rights in TATA as a well-known trademark and service mark. The Complainant holds numerous Indian trademark registrations for TATA and TATA-formative marks, and TATA is listed as a “well-known mark” in the online database published by the Indian Controller General of Patents Design & Trade Marks, based on judicial rulings. In addition, the Complainant holds numerous registered TATA-formative trademarks in more than 50 other countries, including the following in Israel:
ISRAELI REGISTRATION NO.
April 15, 1997
September 7, 2009
TATA CONSULTANCY SERVICES (standard characters)
209447, 209448, 209449, 209450
February 4, 2010
The Complaint provides little information about the Complainant’s affiliate Tata Communications Ltd (“Tata Communications”), but that company’s website at “www.tatacommunications.com” advertises the company as the world’s largest Tier-1 Internet network and a major provider of Ethernet and private networks, cloud services and data centers, web hosting, content delivery networks, and ancillary communications and security services. Tata Communications is part of the consortium that operates the submarine cable providing the Internet backbone connection between India, the Middle East, and Europe. Based on corporate press releases and contact information found on the company’s website and the Wikipedia article on the company, it appears that the firm does business in more than 200 countries, including Israel.
The Domain Name was registered on March 25, 2016, in the name of the first Respondent, an Australian domain name privacy service. After receiving notice of the Complaint, the Registrar identified the underlying registrant as “Accounting Tata Communications, Tata Communications Limited” of Israel, which is hereafter referred to as the Respondent. The Respondent is a limited company established and registered in Israel in 2015 to carry on “networks and telecommunications business”. The Respondent filed an application with the Israeli Ministry of Justice on January 28, 2016 to register TATA COMMUNICATIONS as a trademark. However, the Ministry’s online database shows that the Ministry issued a letter of refusal on May 22, 2017.
The Domain Name is used for the Respondent’s website advertising its domain name registration, website development, web hosting, cloud, data center, email, and security services, with contact information showing the Respondent’s offices in Israel. The website is available in English, Chinese, Russian, Indonesian, German, Spanish, Portuguese, and Turkish versions and appeals to customers located anywhere in the world, accepting payment in US dollars. Although the Respondent appears to target the market for individuals and small and medium businesses, several of its services (such as hosting, cloud, data center, and security) clearly compete with those offered by the Complainant. The website does not display any disclaimer of affiliation with the better known global enterprise Tata Communications Ltd.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its well-known TATA mark because it incorporates the mark in its entirety and adds the name of one of the Complainant’s affiliated companies. The Complainant denies giving permission for such use of its mark and contends that the Respondent has no rights or legitimate interests in the Domain Name and is targeting the well-known TATA mark in bad faith.
The Respondent submitted a letter and emails with attached documents and asked that they be considered as the Response in this proceeding. (The Panel notes that they are not accompanied by a certification of accuracy and completeness as required by the Rules, paragraph 5(c)(viii).) The Respondent contends that it has the right to use the “Tata Communications” name for its Israeli company and as a corresponding domain name and states that it has applied for an Israeli trademark for TATA COMMUNICATIONS. It denies copying the Complainant’s mark or products or creating confusion.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filing
While the Rules do not contemplate filings beyond the Complaint and Response, the Panel has discretion to accept such filings in exceptional circumstances. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The Panel does not find such exceptional circumstances here. The Complainant’s reply does not present newly discovered evidence. The Panel notes that the disposition of the Respondent’s trademark application appears in the official trademark database and, indeed, occurred before this proceeding commenced and should have been taken into account by the Respondent as well as the Complainant in their respective pleadings.
B. Identical or Confusingly Similar
The Complainant indisputably holds TATA and TATA-formative trademarks in India, Israel, and other jurisdictions. The Domain Name incorporates this mark in its entirety and adds the English dictionary word “communications”. The Panel does not find that the addition of the word “communication” avoids confusing similarity, especially in these circumstances, where the Complainant’s affiliate is named TATA Communications Ltd, offers communications services globally, and operates a website that has an identical domain name save for the lack of a hyphen.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 3.0, section 1.2. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies any association with the Respondent. The Respondent claims a legitimate interest in the Domain Name based on the following sequence of events: sometime in 2015, the Respondent was incorporated in Israel to carry on network and telecommunications business. They have submitted no evidence in the proceeding concerning advertising or sales related to that business; there is only the Respondent’s website itself and the trademark application for the trademark TATA COMMUNICATIONS filed before the Israel Patent Office on January 28, 2016. The Respondent then registered the Domain Name on March 25, 2016. Based on archived screen shots from the Internet Archive’s Wayback Machine, it appears that the Respondent has been using the Domain Name for its website since at least May 2016. The trademark application was recently denied, apparently based on the Complainant’s existing Israeli trademark registrations.
The Panel finds that the Respondent has not acquired trademark rights but has been known commercially by a name corresponding to the Domain Name and has been using the Domain Name in connection with commercial service offerings. However, under paragraph 4(c)(i) of the Policy, those offerings expressly must be bona fide, and any claim of rights or legitimate interests under paragraph 4(c)(i) or 4(c)(ii) of the Policy may be undermined if the use of the Domain Name is abusive of third-party trademark rights. See WIPO Overview 3.0, section 2.15. If the record supports an inference that the Respondent’s company name and Domain Name were selected to take advantage of the Complainant’s trademark, the fact that the Respondent was making money under that name would not serve to establish “rights or legitimate interests” in the Domain Name for UDRP purposes. Therefore, the Panel will address that issue jointly with the question of bad faith in the following section.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The letter submitted as a Response asserts a legitimate interest in developing “our own infrastructure, products, and marketplace” and targeting “corporates as well as private users” as a market, differentiating it from the Complainant’s market. The Respondent claims it was registered in Israel, purchased the Domain Name from an accredited provider, and applied for an Israeli trademark. It suggests that there is no confusion and asserts (incorrectly) that the Complainant’s trademark rights are “not covered in Israel”.
The Respondent’s letter is revealing for what it does not say. It does not deny the Respondent’s prior awareness of the Complainant, the Complainant’s TATA marks, the Complainant’s Tata Communications affiliate and its competing business, or the website used by that business at “www.tatacommunications.com”. The Respondent must have been aware of the Complainant’s website at that domain name, which exactly corresponds to the Respondent’s company name. It was presumably why the Respondent had to settle for the more awkward, hyphenated form of the Domain Name, <tata-communications.com>. The Respondent’s letter also relies on the Respondent’s Israeli trademark application without mentioning that the application had been rejected more than a month earlier, because of the Complainant’s trademark rights in Israel. And, tellingly, the Respondent’s letter never offers a reason why the Respondent chose the name “Tata” for its communications company and for the Domain Name. “Tata” is not descriptive. It is not a Hebrew or English dictionary word (other than a locution for “goodbye”). But it just happens to be the mark associated with one of the world’s largest communications companies, offering some of the same services that the Respondent was set up to offer online to a global audience.
On this record, the Panel considers it more likely than not that the Respondent’s principals selected the company name, and thereafter the Domain Name, with the Complainant’s TATA mark in contemplation, using the Domain Name for a commercial website that competes with the offerings of the Complainant’s affiliate Tata Communications Ltd within the meaning of paragraph 4(b)(iv) of the Policy. That cannot be considered an exercise of rights or legitimate interests in the Domain Name, and it reflects bad faith in the registration and use of the Domain Name for purposes of the Policy.
The Panel concludes that the second and third elements of the Policy have been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tata-communications.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: August 9, 2017