WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Motors Limited v. Registration Private, Domains By proxy, LLC / Kteja B
Case No. D2017-0880
1. The Parties
The Complainant is Tata Motors Limited of Mumbai, Maharashtra, India, represented by DePenning & DePenning, India.
The Respondent is Registration Private, DomainsByProxy, LLC of Scottsdale, Arizona, United States of America / Kteja B of Tirupati, Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <tatatigor.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 2, 2017. On May 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, 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 May 15, 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 a first amended Complaint on May 17, 2017 and a second amended Complaint on May 19, 2017. On May 19, 2017, the Center received an email communication from the Respondent.
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 May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. Prior to this, the Respondent was informed that if his response was not received by that date, he would be considered in default and the Center will proceed to appoint an Administrative Panel to review the facts and to decide the case. The Respondent did not submit a response. Accordingly, the Center notified the Parties of the commencement of Panel Appointment Process on June 14, 2017.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on June 22, 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.
4. Factual Background
In the present case, the Complainant is known as Tata Motors Limited, a company incorporated according to the laws of India. Previously the Complainant was known as Tata Engineering and Locomotives Company. The Complainant started manufacturing commercial vehicles in India in the year 1954 in collaboration with M/s Daimler Benz of Germany. 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, etc. The Complainant is among the top five commercial vehicle manufacturers in the world.
The Complainant is also operating in the United Kingdom of Great Britain and Northern Island, South Korea, Thailand, Spain and South Africa through subsidiaries and associate companies. Tata Motors commercial and passenger vehicles are being marketed in several countries in Europe, Africa, the Middle East, South Asia, South East Asia and South America. It has franchisee / joint venture assembly operations in Bangladesh, Ukraine and Senegal.
The Complainant unveiled the TIGOR /TATATIGOR Sedan Segment vehicle in the 12th Auto Expo 2017, held in Geneva in the month of March 2017.
The Complainant is the owner of trademark TATA registered in India in 1978 (registration No. 299110) as well as in other countries. Tata Sons Limited (an affiliate of the Complainant) is the owner of the trademark TATATIGOR, application filed on August 26, 2016, registered in India in 2017 (registration No. 3345831). The said registrations are in class 12 for vehicles.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
In relation to element (i), the Complainant contends that the word “tata” forms an important part of corporate name of the Complainant and other companies belonging to the TATA Group of Companies. In respect of business carried on by the Complainant and its associated companies, their products and services have come to be associated by the consumers, the members of the public and international and domestic business houses exclusively with the TATA Group of Companies.
The word TATA is the registered trademark of the Complainant. The said trademark TATA of the Complainant is registered in various other countries of the world. 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 proprietor of various trademarks containing the word TATA. The said trademarks are registered in different classes and the earliest valid registration dates back to the year 1974.
By virtue of prior adoption, long and continuous use and extensive publicity and promotion, the trade name and trademark TATA have acquired tremendous goodwill and enviable reputation worldwide amongst the consumers and public in general. Thus, they are associated by the business houses and public exclusively with the Complainant and their businesses, services and products.
The Complainant has further stated that the use of the keyword TIGOR in any leading search engine throws up the web pages of the Complainant reflecting the various versions of the TIGOR car including TATATIGOR. Printout of the search results procured from the famous search engine “www.google.com” are annexed to the Complaint as Annexure - E.
The Complainant contends that the disputed domain name entirely incorporates the well-known trademark TATA. The registration of the domain name <tatatigor.com> by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant’s trademark rights in the TATA trademark. Thus, the intention of the Respondent is to create confusion in the market and business circles.
In relation to element (ii), the Complainant contends that the Complainant’s trademark TATA has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion.
Further that, the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use their trademark or to apply for or use the domain name incorporating the trademark and that nobody would use the word TATA unless seeking to create an impression of an association with the Complainant.
The act of the Respondent constitutes infringement/passing off of trademark of the Complainant. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that there were no legitimate rights or interests of the Respondent in the domain name.
In support of its contentions, the Complainant has relied on the decisions in the case of Gulshan Khatrí v. Google Inc O.M.P(COMM 497/2016; Tata Motors Limited. v. Vaidehi Jha WIPO Case No. D 2014-1244; F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D 2009-0323.
Regarding the element (iii), the Complainant contends that the domain name was registered in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant.
The purpose and intent of the Respondent in adopting the disputed domain name <tatatigor.com> is to cash-in on the name, fame, reputation and image and goodwill of the Complainant and Tata Group of Companies which has been built up assiduously over the last 100 years. In other words, the Respondent has registered and is using the disputed domain name in bad faith with the mala fide intention to dupe, cheat and fraudulently attract Internet users into believing that the Respondent is associated with the Complainant and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.
Therefore, the registration and use of the disputed domain name by the Respondent was in bad faith and the requirement of Paragraphs 4(a)(iii) and 4(b) of the Policy read along with the paragraph 3(b)(ix)(3) of the Rules, has been established.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
A. Identical or Confusingly Similar
As per the WhoIs information, the Respondent has created the disputed domain name <tatatigor.com> on February 09, 2017. Its expiry date is February 09, 2018.
According to the information submitted by the Complainant, the Complainant is the owner of trademark TATA in India (registration No. 299110) as well as in other countries. The Application of the Complainant and of Tata Sons Limited (another company of the Complainant) for the registration of the trademark TATATIGOR is pending in India. The said registrations are in class 12.
The present dispute pertains to the domain name <tatatigor.com>. The Complainant possesses a large number of other domain names with the word “Tata”. The Complainant is also the owner of trademark TATA. Most of these domain names and the trademark have been created by the Complainant much before the date of creation of the disputed domain name <tatatigor.com> by the Respondent. The disputed domain name is very much similar or identical to other domain names and the trademark of the Complainant.
Therefore, the Panel finds that the disputed domain name <tatatigor.com> is confusingly similar or identical to the trademarks of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. Moreover, the Respondent has used a privacy service under the denomination “Registration Private, DomainsByProxy, LLC”. The Complainant has not authorized the Respondent to use the name and their trademark TATA or TATATIGOR. Further no information is available whether the Respondent has filed any application for the registration of the mark “TATATIGOR” anywhere in the world.
It is evident that the Respondent can have no legitimate interest in the disputed domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating the trademark of the Complainant and that nobody would use the word TATA or TATATIGOR unless seeking to create an impression of an association with the Complainant. Further, the Respondent’s display of the webpage when considered in its entirety does not constitute bona fide offering of goods and services.
Based on the default and the evidence in the Complaint, the Panel finds that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on its web site or location.
The Complainant contends that the domain name was registered or acquired by the Respondent primarily for the purpose of carrying on some of the business competitive to the Complainant. The disputed domain name is being used with the intent to deceive the members of the public deliberately and intentionally, with a view to trade upon and encash on the name, fame, reputation, image and goodwill acquired by the Complainant and its associated Companies.
It is a systematic attempt by the Respondent to derive unfair advantage, wrongful commercial gains and to mislead the general public. The Respondent is not making a noncommercial or fair use of the disputed domain name.
This and the other evidence submitted by the Complainant leads to the presumption that the disputed domain name <tatatigor.com> was registered and used by the Respondent in bad faith.
The Panel concludes that the registration of the disputed domain name amounts to the registration and use of the domain name in bad faith. Paragraph 4(a)(iii) of the Policy is satisfied.
In the light of the foregoing reasons, namely, that the disputed domain name is confusingly similar to the trademark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tatatigor.com> be transferred to the Complainant.
Vinod K. Agarwal
Date: July 4, 2017