WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tata Sons Private Ltd. v. Registration Private, Domains By Proxy, LLC / Anirudh Sharma, company

Case No. D2019-1212

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Anirudh Sharma, company, India.

2. The Domain Name and Registrar

The disputed domain name <tata-groups.com> 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 May 28, 2019. On May 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 4, 2019, 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 7, 2019.

The Center verified that the Complaint together with 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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 16, 2019. 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, Tata Sons Private Ltd, located in Mumbai, India is a body corporate, established in the year 1917 and is the promoter and principal investment holding company of the Tata Group of companies. The Complainant represents its own and the interests of all the Tata Companies, as also the image and reputation of the trade name and trademark TATA.

The Complainant claims to have been using the trade name and trademark TATA since its inception in 1917. The business of the Complainant, its affiliates and subsidiaries carry out operations in India and worldwide across a number of industries, including textiles, steel, energy, automobile manufacturing, electronics, communications and finance.

The Complainant also owns trademark registrations for the word TATA and its various permutations and combinations thereon in over 100 countries including India. The Complainant has attached a list containing its worldwide registrations for the trademark TATA as Annexure P to the Complaint.

The Complainant is the registered proprietor and owner of TATA in various classes before the Trade Mark Registry, India, including Registration No. 92645 dated February 16, 1944, Registration No. 92648 dated February 16, 1944, and Registration No. 1236890 dated September 16, 2003 for the word mark TATA. Lists of the trademark registrations of the Complainant in India comprising the word mark TATA in various classes before the Trademark Registry of India have also been attached as Annexure Q to the Complaint.

The Complainant’s trademark TATA has been declared as a well-known trademark by the Trade Mark Registry, India and evidence in support of this has been attached as Annexure R and Annexure S to the Complaint.

The Complainant, its affiliates and subsidiaries are the registrants of various domain names and websites containing the trademark TATA, including the domain name <tata.com> that has been registered since 1996. Extracts from WhoIs for some of the domain name registrations of the Complainant Group are attached as Annexure-U to the Complaint. Numerous court orders and UDRP panel decisions have acknowledged the rights of the Complainant in the trademark TATA.

The Respondent has registered the disputed domain name <tata-groups.com> on March 28, 2019 according to the concerned Registrar’s WhoIs records. The disputed domain name resolves into a website which displays a message instructing users to download the “TATA Application” for applying for jobs online. The said website also bears the registered trademark TATA of the Complainant. Though the webpage of the website hosted on the disputed domain name <tata-groups.com> asks a user to download the “TATA application”; there does not, at the current moment, appear to be an application that can be downloaded. An extract of the relevant webpage hosted on the disputed domain name has been attached as Annexure C to the Complaint.

The Complainant states that it has witnessed several instances of fake job offerings (where fraudsters lure unsuspecting and innocent members of public by sending them fake job interview invitations and asking for money under the pretext of security deposits for such fake job interviews). In order to combat this menace, it has put up a disclaimer on its website informing the public about such scams. A copy of the said disclaimer available at the link: “https://www.tata.com/careers/job-disclaimer-notification” has been attached as Annexure- AAE to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <tata-groups.com> incorporates the word TATA, identical to its well-known trademark in which it has overwhelming common law rights as well as statutory rights on account of trademark registrations, coupled with long, continuous and interrupted use. The Respondent by registering the disputed domain name has attempted to create an association with the Complainant’s online service under the name and trademark TATA. The Complainant states that if any user searches for the Complainant’s service online as TATA, they will be taken to the Respondent’s disputed domain name and the webpage hosted on the same which enhances the possibility of inevitable confusion and is definitive proof of the Respondent’s mala fides.

The Complainant asserts that being the legitimate owner of the trademark TATA, it is solely entitled to use the same in relation to its products and services including the incorporation of said trademark as a part of domain names.

The Complainant further contends that the website hosted on the disputed domain name also displays the registered trademark TATA of the Complainant to show an affiliation with the Complainant and the Tata Group of companies. The Complainant argues that the Respondent with a mala fide intent used its trademark TATA as a part of the disputed domain name to free ride upon its reputation, attract greater viewer traffic to the Respondent’s website and to passoff the Respondent’s services and products as that of the Complainant by deceiving unsuspecting and innocent members of public.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and has adopted the Complainant’s trademark/trade name to create confusion in the minds of the general public and portray its association with the Complainant.

The Complainant argues that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The Complainant states that it would be held responsible for any loss that may be caused to unsuspecting Internet users on account of the fraudulent activities of the Respondent which in turn would dilute and tarnish its trademark TATA.

The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark TATA or to apply for any domain name incorporating the said trademark. The Complainant argues that the Respondent is not making a bona fide offering of goods or services through the disputed domain name and that the same was registered by the Respondent solely with the ulterior motive to make unjust gains by duping unsuspecting and innocent members of the public through its recruitment scam and depriving the Complainant of its legitimate rights of registering an identical domain name.

The Complainant contends that the disputed domain name <tata-groups.com> has been deliberately acquired by the Respondent because it was aware of the commercial value and significance of the trademark TATA.

The Complainant asserts that the Respondent is using the Complainant’s well-known trademark TATA as a part of the disputed domain name in order to cause initial interest confusion and bait Internet users into accessing its website hosted on the disputed domain name <tata-groups.com> and to coerce the Complainant to buy the Respondent out in order to avoid confusion and dilution of its goodwill as is inevitable owing to the Respondent’s fraudulent and infringing activities.

The Complainant contends that by virtue of widespread use, global registrations and reputation worldwide of the trademark TATA, the Respondent ought to have constructive notice of the Complainant’s rights in the trademark TATA. The Complainant states that such knowledge on the part of the Respondent is an indicator of its bad faith.

The Complainant also refers to previous UDRP panel decisions to argue that registration of a domain name incorporating a well-known trademark of which the Respondent must reasonably be aware is itself proof of bad faith.

B. Respondent

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

6. Discussion and Findings

The Respondent did not file any response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant has to still establish each of the three elements required by paragraph 4(a) of the Policy:

I. the disputed domain name is identical 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 respect of the disputed domain name; and

III. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar:

The Panel finds that the Complainant has provided more than satisfactory evidence that it has numerous trademark registrations for the word trademark TATA across several jurisdictions. The Panel also takes note that the Complainant has also furnished detailed evidence of the long-standing use and the goodwill of the TATA trademark in India. The Complainant to demonstrate its rights in the trademark TATA has relied on the following:

i. Various newspaper and magazine articles, advertisements and promotional material featuring its trade name/trademark TATA.

ii. Numerous domain name registrations owned by the Complainant, its affiliates and subsidiaries incorporating its trademark TATA.

iii. Printout of the list of well-known trademarks and copy of a pamphlet issued by the Trade Marks Registry, India acknowledging the Complainant’s trademark TATA as a well-known trademark.

iv. Orders from Indian courts as well as decisions of previous UDRP panels recognizing and protecting the Complainant’s rights in the trademark TATA.

On the basis of the evidence filed in the present proceedings, the Panel stands satisfied that the Complainant has both statutory rights and common law rights in the trademark TATA and that said trademark has been recognized as a well-known trademark in India.

The Panel observes that the disputed domain name <tata-groups.com> completely incorporates and subsumes the registered and well-known trademark TATA of the Complainant. Previous UDRP panels have ruled that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark.

The mere addition of the term “groups” to the disputed domain name does not in any way affect its confusing similarity with the Complainant’s trademark TATA. The Panel holds that the addition of a hyphen to the disputed domain name also does not avoid the confusing similarity with the Complainant’s trademark. (See Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214).

The WIPO Overview 3.0 , section 1.11 states that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and may be disregarded under the first element confusing similarity test.

In view of the above, the Panel concludes that the disputed domain name <tata-groups.com> is confusingly similar to the Complainant’s trademark TATA. Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy stands satisfied.

B. Rights or Legitimate Interests:

The second element under paragraph 4(a) of the Policy requires the Complainant to establish on a prima facie basis that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark TATA by virtue of both statutory registrations and common law use, which rights have accrued in the Complainant’s favour long prior to the Respondent’s registration of the disputed domain name on March 28, 2019. The Panel also observes that the Complainant owns domain name registrations comprising the trademark TATA which also pre-date the date of registration of the disputed domain name by the Respondent.

The Complainant contends that it is neither connected to the Respondent nor has licensed or otherwise authorised him to use the trademark TATA or to apply for any domain names incorporating the said trademark. The Panel notes that there is no evidence indicating that the Respondent is commonly known either by the disputed domain name or the name “Tata”. The Respondent has therefore failed to assert any such rights or legitimate interests in the disputed domain name. (See ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).

The Respondent has not made a bona fide offering of goods or services or a noncommercial use of the disputed domain name and has not demonstrated any effort to use the disputed domain name for legitimate purposes. According to the evidence presented by the Complainant (Annexure C to the Complaint), the disputed domain name <tata-groups.com> resolves into a website which displays a message instructing users to download an application for applying for TATA jobs online. The said website also bears the registered trademark TATA of the Complainant to show the Respondent’s affiliation, association and connection with the Complainant and the TATA Group of companies. Although the homepage of the website hosted on the disputed domain name <tata-groups.com> instructs the user to download the TATA application, which in fact is not available for download, for its contents to be reviewed, the threshold for demonstrating a bona fide offering of goods and services is not met by the Respondent.

The Panel determines that the Respondent has registered the disputed domain name for the purpose of exploiting the reputation of the Complainant’s trademark TATA to attract traffic to its website and to ultimately pass off its services as those of the Complainant, thereby creating deception and confusion in the minds of unsuspecting and innocent members of public. The Respondent, in the opinion of the Panel, is simply squatting upon the name of TATA in the disputed domain name to falsely create a nexus, association and affiliation with the Complainant.

The Panel, therefore, finds that the Complainant has made out a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

As the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. (See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

The manner in which the TATA mark is used by the Respondent is not a bona fide use. On the contrary, such use is a deceptive use of the mark by the Respondent, which does not justify finding rights or legitimate interests in favour of the Respondent’s use of the disputed domain name. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith:

In order to prevail under the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii).

The Complainant has produced credible evidence that it owns numerous domain names which incorporate its registered and well-known trademark TATA including the domain name <tata.com> which has been registered since 1996. Further it has been successfully highlighted by the Complainant that it is the proprietor of registrations for the trademark TATA in India from as early as 1944 which pre-dates the date of registration of the disputed domain name on March 28, 2019. The Panel finds that the said fact is indicative of the Respondent’s bad faith in registering the disputed domain name <tata-groups.com>.

(See Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Panel finds it clear that the Respondent had the Complainant’s trademark rights in mind at the time of registration of the disputed domain name on account of the following:

i. The Complainant has prior rights in its registered and well-known trademark TATA and has adopted and used the trademark extensively for more than a century in India.

ii. That the Respondent resides in India where the Complainant, its affiliates and subsidiaries carry out widespread operations in India across a number of industries and domain names.

iii. The website to which the disputed domain name resolves, prominently displays the Complainant’s trademark TATA and also offers an option to Internet users to download a TATA application for applying for jobs online.

The Panel finds that the Respondent had registered the disputed domain name <tata-groups.com> in bad faith as it was aware of the commercial value and significance of the mark TATA. The Respondent has targeted the Complainant’s trademark TATA by using it as a part of the disputed domain name and by displaying it on the website hosted on the disputed domain name in a bid to deceptively mislead Internet users to believe that the website is sponsored, endorsed or affiliated with the Complainant.

The Panel notes that the acts of the Respondent have restrained the Complainant from exercising its legitimate right of registering the disputed domain name that incorporates its trademark TATA. Further it is not lost on the Panel that the Respondent may either sell the disputed domain name to a third party at an arbitrary and astronomical price in future or by its fraudulent activities coerce the Complainant into purchasing the disputed domain name at an exorbitant price or even make the currently unavailable application available for download, therefore compounding the confusion in the minds of Internet users. Accordingly, the Panel finds the Respondent registered and used the disputed domain name in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel holds that the Complainant has discharged the burden of proof under paragraph 4(a)(iii) of the Policy.

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 <tata-groups.com> be transferred to the Complainant.

Shwetasree Majumder
Sole Panelist
Date: July 30, 2019