WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Motors Limited v. Tata Hbx
Case No. D2021-0205
1. The Parties
The Complainant is Tata Motors Limited, India, represented by DePenning & DePenning, India.
The Respondent is Tata Hbx, India.
2. The Domain Name and Registrar
The disputed domain name <tatahbx.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 January 25, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2021, 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 January 26, 2021, 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 January 28, 2021.
On January 26, and 27, 2021, the Center received email communications from the Respondent confirming that it is the owner of the disputed domain name and claiming that the disputed domain name is not being used fraudulently.
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 January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Center received further email communications from the Respondent on February 8, 2021, however, the Respondent did not submit a formal response. Accordingly, the Center informed the Parties that it was proceeding to panel appointment on February 22, 2021.
The Center appointed Maninder Singh as the sole panelist in this matter on March 3, 2021. 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.
The Complaint along with its annexures was transmitted to the panelist. Subsequent thereto, an email from the Respondent dated March 3, 2021, was forwarded by the Center. This email contains a cryptic one-line statement on behalf of the Respondent: “Okay i am agree. Please contact me on call”.
4. Factual Background
The Complainant is one of India’s largest automobile companies, with consolidated revenues of USD 34 billion in 2019-2020. The Complainant is among the top five commercial vehicle manufacturers in the world. The Complainant is one of India’s market leaders in commercial vehicles and among the top four in passenger vehicles. The Complainant is also one of the world’s largest truck and bus manufacturers. The Complainant belongs to the Tata Group of Companies. The Complainant owns Indian Trademark No. 299110 for TATA, registered on September 10, 1974, designating goods and services in International Class 12.
The Respondent registered the disputed domain name on November 30, 2020. It resolves to a pay-per-click (“PPC”) website with links associated with the automobile industry and an offer for sale of the disputed domain name.
5. Parties’ Contentions
The Complainant, formerly known as Tata Engineering and Locomotive Company, began manufacturing commercial vehicles in 1954. It has, since, developed Tata Ace, India’s first indigenous light commercial vehicle; the Prima range of trucks; the Ultra range of international standard light commercial vehicles; Safari, India’s first sports utility vehicle; Indica, India’s first indigenously manufactured passenger car; and the Nano, the world’s most affordable car.
The Complainant has operations in the United Kingdom, the Republic of Korea, Thailand, Spain and South Africa through subsidiaries and associate companies. The Tata Motors commercial and passenger vehicles are being marketed in several countries in Europe, Africa, the Middle East, Asia, Asia, and Latin America. It has franchisee/joint venture assembly operations in Bangladesh, Ukraine and Senegal. The official website of the Complainant is “www.tatamotors.com”.
The Complainant has launched a new generation of cars viz. “Tiago”, “Hexa”, “Tigor”, “Nixon”, “Harrier”, “Zest”, etc. One such vehicle is a “Micro SUV” scheduled to be launched in 2021 as “TataHBX”. The “TataHBX SUV” is claimed to have been showcased at the Auto Expo 2020. This vehicle has attracted reviews and has been written about extensively by car enthusiasts in various third party portals. The images and video clips of the “TataHBX” vehicle also circulate extensively on online platforms and social media.
The word “tata” forms an important part of the corporate name of the Complainant and other companies belonging to TATA Group of Companies. The word “tata” was adopted as a trademark and has been extensively used in respect of the products and services manufactured and rendered by the companies belonging to TATA Group of Companies. The Complainant and its associated companies are the registered proprietors of various trademarks containing the word “tata”. The said trademarks are registered in different classes and the earliest registrations date back to the year 1951.
The TATA Group of Companies including the Complainant use the trade name “tata” on their letterheads, printed materials, goods, services etc. The word “tata”, which forms part of the corporate name of the Complainant and other companies belonging to TATA Group of Companies, connotes the distinctiveness, reputation, quality and goodwill acquired over several years and is understood as connoting an association with the iconic TATA Group.
In view of the celebrated status of the mark TATA, the associated reputation has percolated to other TATA variants. Hence, the adoption and/or usage of TATAHBX by others would amount to not only dilution of the Complainant’s right over the mark TATA, but would also result in misuse of the trademark for individual benefit and is liable to be prevented in the Court of Law.
Tata Sons Ltd is the promoter of the major operating Tata companies and holds significant shareholdings in these companies. Tata companies are commonly referred to as the Tata Group of Companies and the Chairman of Tata Sons Ltd is referred to as the Chairman of the Tata Group of Companies. The trademarks with “tata” as a component are used by various Tata companies (including the Complainant herein) under a license from Tata Sons Ltd.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant submits that the trademark TATA has acquired both statutory rights and common law rights. For the present Complaint, the Complainant relies on the above-mentioned Indian Trademark No. 299110.
The Complainant also submits that various judicial forums have upheld the Complainant’s and its Group of Companies trademark right over the well-known mark TATA and in this regard the Complainant draws attention of the Panel to the decision of the Delhi High Court in Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432; 90 (2001) DLT 659.
The Complainant further submits that prior UDRP panels have also upheld the trademark rights of the Tata group in the following decisions:
The Complainant contends that the trademark TATAHBX is nothing but a variant of the well-known trademark TATA and has therefore naturally acquired the status of a well-known mark. The word “tata” expressed on any particular product/service connotes and denotes distinct reputation, eminence and goodwill associated with the quality of products manufactured, marketed and serviced and otherwise dealt with by the Complainant and its group of companies.
The Complainant asserts that the Respondent has no right to and legitimate interest in the disputed domain name <tatahbx.com>. The Respondent illegally and wrongfully adopted the well-known trademark TATA of the Complainant with the intention to create an impression of an association with the Complainant.
The Complainant contends that the Respondent wrongfully and fraudulently adopted and registered the disputed domain name <tatahbx.com> in order to utilize the reputation attached to the TATA or TATAHBX trademarks without having any rights thereto and in spite of having full knowledge of the Complainant’s iconic stature in India, and internationally.
The Complainant submits that the Respondent is trying to encash on the goodwill and reputation associated with the trademark TATA, although the Respondent has no connection with the Complainant and the Tata Group of Companies.
The Respondent has no rights or legitimate interests in respect of the disputed domain name:
It is the Complainant’s contention that the Respondent has no rights or legitimate interests in the disputed domain name <tatahbx.com> for the following reasons:
- the Respondent has not made any legitimate offering of goods or services under the marks TATA or TATAHBX through the disputed domain name;
- the disputed domain name resolves to a website which displays, aside from PPC links, an offer to the Internet users to purchase the disputed domain name. The Respondent is offering the disputed domain name for an escalated price thereby gaining monetary benefit and riding on the goodwill and reputation of the Complainant;
- the sole purpose of the Respondent maintaining the registration for the disputed domain name would be to misappropriate the reputation of the Complainant’s trademark TATA and monetize on the disputed domain name.
The disputed domain name was registered and is being used in bad faith:
The Complainant asserts that it is stated in various precedents that domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act.
The Respondent did not reply to the Complainant’s contentions. The only communications received from the Respondent are mentioned above in section 3 of this Decision.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has furnished evidence that it has trademark rights in the mark TATA.
The Panel finds that disputed domain name <tatahbx.com> incorporates the Complainant’s registered trademark in its entirety.
The Panel, therefore, concludes that the disputed domain name <tatahbx.com> is confusingly similar to the trademark in which the Complainant has rights.
The Complainant has therefore succeeded in establishing the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
Noting the facts and arguments set out above, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. From the evidence placed on record, the Panel further finds that TATA is a well-known brand, not only in India, but it has significant presence in various other countries.
The disputed domain name was registered by the Respondent in November 2020 and resolves to webpage containing PPC links related to cars. On the other hand, the webpage to which the disputed domain name resolves, also offers to the end users to purchase the disputed domain name.
The Panel finds that the Respondent is offering the disputed domain name for sale and using it for PPC links to gain monetary benefit by riding on the goodwill and reputation of the Complainant. Such an intent on the part of the Respondent also gets indicated by its email dated March 3, 2021.
The Panel has no doubt that registration of disputed domain name by the Respondent is not bona fide.
In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has nothing to prove its bona fide use of the disputed domain name as the Respondent has not submitted any rebuttal of the Complainant’s contentions.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel has no hesitation in holding that being fully aware of the commercial value and significance of the Complainant’s trademark TATA and incorporation thereof in a domain name, the Respondent has registered the disputed domain name <tatahbx.com> to take commercial advantage of it by riding over the substantial goodwill and reputation of the Complainant in the disputed domain name.
The Panel observes that the disputed domain name has been registered by the Respondent subsequent to the Complainant’s relevant trademark and domain name registrations and is being used in bad faith. In this regard, the Panel would also like to refer to the following observations made in:
(i) Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001, holding that a respondent could not ignore the existence of a well-known trademark at the time of registering a domain name; and
(ii) Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, holding that when a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”.
The use of the disputed domain name to resolve to a webpage containing PPC links related to the Complainant’s industry and offer it for sale, further supports the Respondent’s bad faith.
The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <tatahbx.com> be transferred to the Complainant.
Date: March 12, 2021