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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. Hasmukh Solanki
Case No. D2001-0974
1. The Parties
1.1 The Complainant is Tata Sons Limited, a company incorporated in India, with its registered office at Bombay House, 24 Homi Mody Street, Mumbai 400 001, India.
1.2 The Respondent is Hasmukh Solanki, an individual and a non-corporate, non-business entity. The address of the Respondent as contained in the domain name registration with CORE Internet Council of Registrars Whois database is 287/B, M. G. Road, Pune, Maharashtra 411 001, India. The administrative contact, technical contact and billing contact for the domain names registered by the Respondent is Hasmukh Solanki.
2. The Domain Names and Registrar
2.1 The domain names that are the subject of this Complaint are:
The Registrar of these domain names is CORE Internet Council of Registrars, World Trade Center II, 29 route de Pre-Bois, Geneva, Switzerland.
3. Procedural History
Issuance of Complaint
3.1 A Complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Cooperation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center ("the Center") on July 30, 2001. A hard copy of the Complaint together with annexures and the required fees were received by the Center on August 3, 2001. An Acknowledgment of Receipt of the Complaint was sent by the Center to the Complainant on the same day, that is, August 3, 2001.
3.2 A Request for Registrar Verification was sent to the Registrar on August 3, 2001. On August 7, 2001, the Registrar confirmed to the Center that it is the Registrar of the domain names <tataamex.com>, <tata-amex.com> and <amextata.com>, and indicated that the dates of registration of these domain names are August 4, 2000, January 16, 2001, and February 3, 2001, respectively. The Registrar also confirmed that the current registrant of these domain names is the Respondent, Hasmukh Solanki. According to the register of the Registrar the Administrative Contact, Technical Contact, Zone Contact and Billing Contact for the Respondent is also Hasmukh Solanki. The Registrar provided a postal and email address, and a telephone and a facsimile number, for the Contact. The Registrar also supplied the terms of the domain name service agreement between it and the Respondent. Section 2 of this Agreement states as follows:
"You agree to be bound by the current CORE Domain Name Dispute Policy ("Dispute Policy") which is incorporated into this Agreement by reference. The Dispute Policy can be found at http://www.corenic.org/dispute-policy. Any disputes regarding the right to use your domain name will be subject to the Dispute Policy."
3.3 The agreement also provides that the Respondent agrees to be bound by the Policy incorporated therein. However, the CORE Internet Council of Registrars informed the Center that they had not received a copy of the Complaint till that date. On August 7, 2001, the Complainant was informed by the Center that the Registrars have not received the Complaint, as of August 7, 2001. The Complainant confirmed having sent a copy of the Complaint to the Registrar on August 9, 2001.
Notification to Respondent
3.4 On August 10, 2001, the Center verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules. On the same day, that is, August 10, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding (including a copy of the filed Complaint), to both the postal and email addresses of the Respondent, and to the facsimile of the Respondent’s Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN by e-mail on the same date.
3.5 The Notification of Complaint and Commencement of Administrative Proceeding stated that the last date for sending the response by the Respondent to the Complainant and the Center is August 30, 2001. The Respondent was further informed that if his response is not received by that date, he will be considered in default. The Center will appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed response, but will have the discretion to decide whether to do so and, as provided for by Rules, paragraph 14, may draw such inferences from the default of the Respondent as it considers appropriate.
3.6 No response has been received by the Center from the Respondent. Having received no response from the Respondent within the specified time in the Notification of Complaint, on September 7, 2001, the Center issued to the Respondent a Notification of Respondent Default, copying the Complainant.
3.7 On September 12, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, namely, Dr. Vinod K. AGARWAL. The Administrative Panel was required to give the decision by September 26, 2001. However, in use of the prerogative under Rule 10(c), the time was extended up to October 1, 2001.
4. Factual Background
4.1 From the Complaint and the various Annexures to it, the Administrative Panel has found the following facts:
4.2 The Complainant is a large investment holding company. It is a part of a group of companies. The said group of companies have a total turnover of over US $ 9 billion. Its genesis was in 1868 when Jamsetji Nusserwanji Tata set up a private trading firm and a textile mill in Central India. Since its inception, the Complainant has been using the trademark TATA for its business activities. The other group companies have been traditionally engaged for over a hundred years in various business and industrial activities like textiles, steel, power, hotels, and automobile industries. They have now entered into the field of electronics, telecommunications, financial services, mutual funds, computer software, food processing, tea and publishing. The Encyclopedia Britannica mentions House of Tata as "… the nucleus of a vast industrial complex including not only textiles, steel and electronic power but also chemicals, agricultural equipment, trucks, locomotives and cement."
Complainant’s Trading Name and Trademarks
4.3 The Complainant is the registered proprietor of the trademark TATA in relation to certain goods in some classes in India. One of the joint venture companies promoted by the group companies is "Tata Finance Amex Limited". This joint venture between Tata Finance Limited and American Express International Inc., was incorporated in 1999 (precise date has not been given) and has been engaged since then in the business of foreign exchange and other money changing business. It is stated in the complaint that the Complainant has permitted this joint venture company to use the word "TATA" in its corporate name. A copy of such permission has not been filed. The Complainant is the proprietor of about 50 registrations in different countries including the applications filed for registration of its trademark TATA in over 30 countries (details of which are contained in Annexure F to the Complaint), The various trademark registrations and applications cover a wide range of goods and services.
Complainant’s Domain Names and Web Sites
4.4 The Complainant has a web site, www.tata.com. The group companies of the Complainant are the registrants of the following domain names containing the word "tata". This is only an illustrative list.
4.5 The Complainant has stated that its right over and use of the trademark TATA has been upheld by various Administrative Panels of the Center in the following cases:
a. Tata Sons Limited v. The Advanced Information Technology Association (WIPO Case No. D2000-0049), wherein the domain name <tata.org> was ordered to be transferred to them;
b. Tata Sons Limited v. D & V Enterprises (WIPO Case No. D2000-0479), wherein the domain name <bodacious-tatas.com> was ordered to be transferred to them.
c. Tata Sons Limited v. Ramadasoft (WIPO Case No. D2000-1713), wherein the domain names <tatapowerco.com>, <tatahydro.com>, <tatawestside.com>, <tatahoneywell.com>, <tatayodogawa.com>, <tatateleservices.com>, <tatassl.com>, < tatatimken.com>, <jrdtata.com>, <ratantata.com> were ordered to be transferred to them.
Thus, the trademark TATA is a well known mark as understood under Article 6 bis of the Paris Convention.
Respondent’s Identity and Activities
4.6 The Respondent is the registrant of the domain names:
The Registrar of these domain names is CORE Internet Council of Registrars Whois database. The Registrar has confirmed that the registrant of these domain names is the Respondent.
4.7 The postal address of the Respondent and its Contact, as contained in the Registrar’s registry, is Mr. Hasmukh Solanki, 287/B, M.G. Road, Pune, Maharashtra 411 001, India. Further, as per the Registrar’s register, the Respondent is an individual.
5. Relevant Provisions of the Uniform Policy
5.1 Paragraph 4(a) of the Uniform Policy sets out the three requirements which must be present for a proceeding to be brought against the Respondent under the Uniform Policy, and which the Complainant must prove in order to be able to obtain a remedy. It is as follows:
a. Applicable Disputes.
You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
5.2 Paragraph 4(b) of the Uniform Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The precise wording of this paragraph is as follows:
b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
5.3 It may be mentioned that circumstances specified in sub-paragraphs (i), (ii), and (iii) of paragraph 4(a) deal with the intention or purpose of domain name registration, the four circumstances in paragraph 4(b) are illustrative, and the existence of any of them, will be an instance of "registration and use of a domain name in bad faith".
5.4 Paragraph 4(c) of the Uniform Policy sets out circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, demonstrate the Respondent’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). The provisions of this paragraph are as follows:
"c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, In particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
6. Parties’ Contentions
6.1 The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute. In relation to element (i), the Complaint contends that the trademark TATA contained in the domain names <tataamex.com>, <tata-amex.com> and <amextata.com> is clearly identical with or confusingly similar to the various trademarks owned by the Complainant. Further that, these domain names violate both the trademark rights of the Complainant in TATA and the rights of American Express International Inc., (hereinafter referred to as American Express) in its trademark AMEX.
6.2 In relation to element (ii), the Complaint contends that the domain names <tataamex.com>, <tata-amex.com> and <amextata.com>, are variants of the combination of two trademarks, TATA and AMEX. The Complaint further contends that neither the Complainant nor the American Express have licensed or otherwise permitted the Respondent to use any of the trademarks, nor have they licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain names in issue. The sole purpose of the registration is to misappropriate the reputation associated with the Complainant’s trade mark TATA and the trade- mark AMEX. Further, neither the Respondent is known commonly by the name TATA/AMEX nor has he made any demonstrable preparations to use the impugned domain names in connection with a bona fide offering of goods/services. As on the date of filing the Complaint, the web sites were inactive.
6.3 Regarding the element at (iii), the Complainant contends that :
(a) the impugned domain names namely, <tataamex.com>, <tata-amex.com> and <amextata.com> were registered by the Respondent on August 4, 2000, January 16, 2001 and February 3, 2001 respectively. None of these websites had been activated by the Respondent till the date of filing the Complaint. Thus, "inaction" or "passive holding" of domain names amounts to "bad faith". In support of this contention, the Complainant has relied on the case of Telstra Corporation Ltd., v. Nuclear Marshmallows (WIPO Case No. D2000-0003) (A copy of the decision is available at Annexure L).
(b) the Respondent, being an Indian, is obviously well aware of the Complainant’s trade mark. This by itself suggests that his registration has been in bad faith. Further, there is a likelihood that actual or potential visitors to the Respondent’s web site, using the impugned domain names, will be induced to (a) believe that the Complainant has licensed its trade mark TATA to the Respondent or authorized the Respondent to register the impugned domain names; (b) believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Tata Group of Companies. Thus, the impugned domain names have been registered and are being used in bad faith.
6.4 The Respondent did not file a response to the Complaint.
7. Discussion and Findings
7.1 No response has been received from the Respondent till this date. The Administrative Panel therefore rules that the Respondent has forfeited his right to file a response to the Complaint. Thus, the case is covered by Rule 5(e) of the Rules which is as follows:
"5(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
7.2 The Administrative Panel finds that there are no exceptional circumstances present in this case and therefore the Administrative Panel proceeds to decide this dispute on the basis of the Complaint.
Identical or Confusingly Similar Domain Names
7.3 The present dispute pertains to domain names <tataamex.com>, <tata-amex.com> and <amextata.com>. The words used in the domain names are <tata> and <amex>. The relevant part of these domain names is <tata>. The Administrative Panel finds that this part of the domain names is identical to the numerous trademark registrations of the word <tata> held by the Complainant. In addition, the Administrative Panel finds that these domain names are confusingly similar to those trademark registrations.
Respondent’s Rights or Legitimate Interests in the Domain Names
7.4 The Respondent has not filed any response in this case. The Complainant has stated that the impugned domain names being variants of the combination of two extremely famous trademarks, TATA and AMEX, it is but evident that the Respondent can have no legitimate interest in such domain names. No other grounds establishing that the Respondent has no rights or legitimate interests in the domain names have been mentioned in the Complaint.
7.5 The Administrative Panel finds that the Complaint has been filed by Tata Sons Limited on behalf of and under the authority of Tata Finance Amex Limited and American Express International Inc. (the letters of authorization are annexed as annexures J and K to the Complaint). Tata Finance Amex Limited have not been joined as the Complainant. The Complainant is only the owner of the trademark TATA. It is not indicated whether AMEX is or is not a registered trademark. The joint venture in the name of Tata Finance Amex Limited is between Tata Finance Limited and American Express International Inc. The joint venture company was incorporated some time in the year 1999. The exact date and month have not been given. The Respondent registered the impugned domain names on August 4, 2000, January 16, 2001, and February 3, 2001, respectively, that is, almost after one to two years from the incorporation of the joint venture company. During all this period, the Complainant or the joint venture company did not feel the need or necessity to register these domain names. However, in view of para (i) above, and the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that nobody will use the word <tata> unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
7.6 According to the language used in paragraph 4(a)(iii), the Complainant has to prove registration in bad faith as well as use in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy. It can be seen that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.
7.7 The Administrative Panel finds that there is no evidence on record to establish that the Respondent conducts any commercial or non-commercial business activity. In view of the fact that the Complainant has numerous trademark registrations with the word <tata>, the Respondent would not be able to use the impugned domain names without giving an impression that the Complainant has licensed the said trademark TATA to the Respondent or authorized the Respondent to register them or that the Respondent has some connection with the Complainant. Further that, the Respondent, being Indian, must be fully aware of the Complainant’s trademarks. There is no evidence that these web sites are in the process of being activated. These findings, together with the finding that the Respondent has no rights or interests in the domain names, lead the Administrative Panel to conclude that the domain names <tataamex.com>, <tata-amex.com> and <amextata.com> have been registered by the Respondent in bad faith.
7.8 The next question is whether they are "being used in bad faith". Inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. The Administrative Panel in the case Telstra Corporation Ltd., v. Nuclear Marshmallows (WIPO Case No. D2000-0003) has given a positive finding. However, the Uniform Policy and the Uniform Rules do not provide that an Administrative Panel is bound by or required to follow precedents.
7.9 The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The Administrative Panel has come to the conclusion, keeping in view the following circumstances, that the passive holding of the domain names amounts to acting in bad faith.
(i) the trademark of the Complainant enjoys sound reputation and is well known in the business world in India and other countries. The Complainant has used the trademark TATA for a long time for various goods and services.
(ii) the Respondent has preferred not to provide any evidence whatsoever of any actual or contemplated good faith use by it of the domain names.
(iii) the Respondent is not commonly known by the domain names registered by him.
(iv) The Respondent has no relation or association with any of the words used in the domain names.
(v) The Respondent has not submitted any evidence of having taken any action for activating the impugned domain names.
8.1 The Administrative Panel concludes that :
8.2 The Respondent is the owner of the domain names
8.3 These domain names are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights.
8.4 The Respondent has no rights or legitimate interests in these domain names.
8.5 The Respondent has registered these domain names and is using them in bad faith.
8.6 The Administrative Panel allows the complaint of the Complainant in accordance with the Uniform Policy and the Uniform Rules. The Administrative Panel directs that the domain names <tataamex.com>, <tata-amex.com> and <amextata.com> be transferred to the Complainant.
Dr. V. K. Agarwal
Dated: September 25, 2001