WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tata Sons Ltd. v. Edwin Antony

Case No. D2018-1300

1. The Parties

The Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand and Anand, India.

The Respondent is Edwin Antony of Lucknow, Uttarakhand, India.

2. The Domain Name and Registrar

The disputed domain name <tatagroupcareers.info> 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 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, 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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2018.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 24, 2018. 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, a leading business conglomerate of India. The Complainant is the proprietor of the TATA trademark, which is derived from the surname of its founder Jamsetji Nusserwanji Tata. The trademark has been used by the Tata Group for more than a century and it has acquired the status of a “well-known” trademark in India.

The Respondent registered the disputed domain name <tatagroupcareers.info> on April 4, 2018. The disputed domain name resolves to a web page that prominently displays the TATA logo and the title of the page is: “Welcome To Interview Registration Panel - Tata Group”. The webpage invites people to apply by paying an amount as security deposit through PAYTM (an Indian digital ecommerce payment platform). At the bottom of the webpage, the Complainant’s office address has been displayed by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant states the Tata Group is India’s largest private sector employer. It has over 100 major operating companies, 29 of which are listed on stock exchanges. Its combined market capitalization is about USD 144.79 billion as of March 28, 2018 and it has a shareholder base of about 4 million. The Tata companies employ over 690,000 people worldwide and are respected for adhering to strong values and business ethics. The Complainant states that the turnover for its group was about USD 100.39 billion in 2016-17, 64 percent of which is from its businesses outside India.

The Complainant asserts that the Tata Group has laid the foundation for core industries in India, such as textile, iron and steel, power, chemicals, hotels and automobile industries. The group diversified into the areas of computer, computer software, electronics, telecommunications, financial services, mutual funds, tea, aviation and retail business. Names of major Tata companies are: Tata Steel, Tata Motors, Tata Consultancy Services, Tata Power, Tata Chemicals, Tata Global Beverages, Tata Teleservices, Titan, Tata Communications and Indian Hotels. The Complainant states that it owns a host of reputed brands which are internationally recognized. The Complainant adds that Brand Finance, a consultancy firm of the United Kingdom of Great Britain and Northern Ireland, has declared the Complainant’s multi brand portfolio as the most valuable in India.

The Complainant states it has used the TATA mark since its inception in 1917 and the mark has also been used by its predecessors in business since 1868. It is a registered proprietor of the mark in several classes in numerous jurisdictions, and the mark has become a household name due to its continuous and extensive use. Over one hundred of its group companies, numerous philanthropic bodies and autonomous public institutions of its group have “Tata” as part of their name. The Complainant has filed evidence of its group company names, trademark registrations for the TATA mark and its formative marks and evidence of its being acknowledged as a “well-known mark” by the Indian Trade Marks Registry. The Complainant has additionally referred to its extensive advertisements and promotions, its vast online presence, numerous domain name registrations featuring the mark, and several court orders and UDRP decisions in its favor.

The Complainant states the disputed domain name contains the entire TATA mark and resolves to a one-page website that displays the Complainant’s Tata logo, (the T within a circle device) and its registered office address. The Complainant argues that the use of its trademark, logo and address by the Respondent is with an intention of creating confusion to bait unwary Internet users who are urged to deposit money into their PAYTM wallet. The Complainant states the Respondent has misappropriated its well-known TATA trademark and has used it in the disputed domain name and on its website for duping unwary people in the manner described.

The Complainant requests for transfer of the disputed domain name based on the three elements of paragraph 4(a) of the Policy: that the disputed domain name is identical or confusing similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) the Policy, a complainant must establish three elements to obtain transfer of the disputed domain name, these are:

(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 lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has submitted evidence of its registered trademark rights in the TATA mark. The Panel also notes the long list of domain name decisions and court orders that have recognized the Complainant’s rights in the mark. On the basis of the evidence filed in these proceedings, the Panel finds the Complainant has submitted adequate material to establish its rights in the TATA trademark.

The Respondent has created the disputed domain name by combining the TATA mark, with the words “group” and “careers”. It is a well-established norm that the addition of words to a trademark would not prevent a finding of confusing similarity under the first element. The Panel accordingly finds the disputed domain name consisting of the TATA trademark with the words “group” and “careers”, is confusingly similar to the TATA trademark.

The Complainant is found to have successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has submitted that the Respondent is neither affiliated with the Complainant nor has any authorization or permission to use the TATA trademark to register the disputed domain. The Complainant has also argued that the disputed domain name has been registered and is being used to cause initial interest confusion to bait Internet users, and there is no other plausible explanation for the Respondent’s use of the TATA mark in the disputed domain name.

The Respondent is in default and has not come forward to rebut the allegations in the Complaint. The Panel finds the Respondent is not known by the mark and the reasonable inference that can be drawn from circumstances discussed, is that the Respondent has made unauthorized use of the TATA mark to benefit from the reputation and goodwill associated with the mark.

On the basis of the overwhelming evidence on record that establishes the fame of the TATA mark, and the fact that the Complainant’s TATA trademark rights precede the registration of the disputed domain name by several decades, it gives rise to the inference that there can be no actual or contemplated good faith use of the disputed domain name by a party not authorized to use the trademark. The Panel finds that the manner in which the TATA mark is used by the Respondent is not bona fide use or good faith use. On the contrary, such use, is deceptive use of the mark by the Respondent, which does not justify finding rights or legitimate interests in favor of the Respondent’s use of the disputed domain name.

The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, as required under the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

The Complainant has argued that the disputed domain name was registered and is being used in bad faith by the Respondent who had constructive notice of its well-known mark. The Panel finds that the Respondent was aware of the Complainant’s trademark. First, because the Complainant has prior rights in the mark and has adopted and the used the mark extensively for more than a century before the Respondent registered the disputed domain name. Second, it is inconceivable that the Respondent, who resides in India could have been unaware of the TATA mark and the Complainant’s rights in the mark. Third, the website to which the disputed domain name resolves, prominently displays the Complainant’s logo, which is associated with the Complainant and it also displays the registered office address of the Complainant, which indicates the Respondent’s knowledge of the mark being associated with the Complainant. The Panel finds that the Respondent has registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in the well-known TATA mark and the goodwill associated with the mark.

The webpage to which the disputed domain name resolves displays the following content:

“Welcome To Interview Registration Panel -Tata Group

Tata is one of the world’s largest private-sector employers. The Tata companies together employ over 660,000 people

APPLY NOW

Dear Applicant,

(Please provide all correct information)

Note: - You have to deposit a Registration Fee of Rs. 550/- (If you are selected or rejected, In both condition this registration amount will be refund back to you at the same day of interview, it is a security deposit as assuring your presence on the interview date and venue, & for reserving your seat)” (sic).

The webpage provides instructions for paying the amount through PAYTM. At the bottom of the webpage, the Complainant’s office address has been displayed by the Respondent. In the Panel’s considered view, the Respondent has targeted the Complainant’s TATA mark by displayed the Complainant’s registered office address in a bid to deceptively mislead Internet users to believe that the website is sponsored, endorsed or affiliated with the Complainant. Misleading users in this manner, with an intention to bait unwary Internet users to deposit money into the Respondent’s PAYTM wallet based on the fame and reputation associated with the Complainant’s mark is recognized as bad faith use under the Policy.

Such use of the disputed domain name squarely falls under the scope of paragraph 4(b)(iv) of the Policy, which is to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, which is recognized as bad faith use under the Policy. The Panel therefore finds the Respondent’s registration and use of the disputed domain name <tatagroupcareers.info> is in bad faith.

The Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered in bad faith and is being 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 <tatagroupcareers.info> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: August 7, 2018