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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tata Sons Limited v. Domaincar

Case No. D2006-0285

 

1. The Parties

The Complainant is Tata Sons Limited, Mumbai, India, represented by Anand & Anand, India.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Name and Registrar

The Disputed Domain Name <tatatel.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2006. On March 7, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On March 8, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response [confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.] The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2006.

The Center appointed Keita Sato as the sole panelist in this matter on April 5, 2006. 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 in this administrative proceeding is Tata Sons Limited, which is a company duly incorporated under the Indian Companies Act, 1913, having its registered office in Mumbai, India. It is the principal investment holding company of the Tata Group of companies, which is a well-known conglomerate. The name of Tata is based on the founder’s name Mr. Jamsetji Nusserwanji Tata, and does not have a meaning in common English. The Tata Group has a major presence in the fields of electronics, financial services, mutual funds, computer software, tea and telecommunications business, and most of these companies belonging to Tata Group, which is collectively referred to as the House of TATA, use “TATA” as the initial part of their trade names, like Tata Teleservices Limited. The Complainant has many trademark registrations for “TATA” and “A TATA PRODUCT” (some stylized). For example, in India the Complainant has registered “TATA” for class 8 (agricultural tools and implements of the smaller kind and hand tools etc.), class 9 (welding electrodes), class 19 (coal tar), class 4 (benzol), class 30 (salts not falling in other classes), class 2 (red oxide of iron used as pigments for paints), class 5 (Glycerine etc.), class 13 (explosive substances), class 6 (pig iron and ferro-manganese), class 12 (railway wheels etc.), class 3 (soaps etc.), class 31 (oil cakes), class 1 (chemical products, cement and masonry preservatives), class 7 (machine tools and parts thereof), class 12 (locomotives, tractors), class 19 (cement, fire-proof cement coatings etc.), class 14 (time and timing clocks, watch bands etc.), class 9 (electronic apparatus and instruments being gods), and class 24 (textile piece goods). Further, the Complainant has registered a trademark including the word “TATA” in various jurisdictions, like Argentina (class12, registration number 2234350), UK (class 9 of registration number 2211590, class 12,16 &30 of RN 2204858A, and class 12,16 & 30 of RN 2204858B), China, France, Germany, Australia, Russia, Saudi Arabia, Singapore and Spain. The TATA Tea Limited Corporation, which is a member company of the Tata Group operated by the Complainant, registered “TATA” for class 30 at the principal registry in the United States of America. Also, the Complainant or the Tata Group operates its website under the domain name <tata.com>. The Tata Teleservices Limited of the Tata Group operates its website under “www.tataindicom.com”.

The Respondent in this administrative proceeding is Domaincar, a company in Panama according to the Whois database operated by DSTR Acquisition VII, LLC. The Respondent registered the Disputed Domain Name on June 12, 2003, through DotRegistrar.com.

 

5. Parties’ Contentions

A. Complainant

The Complainant objects to the registration of the Disputed Domain Name by the Respondent, because the Respondent’s activities fall within the conditions of paragraph 4(a). Firstly, the Disputed Domain Name is identical in parts and confusingly similar as a whole to the registered trademark and service mark TATA in which the Complainant has a statutory and common law rights. Secondly, the Complainant alleges that it is but evident that the Respondent can have no legitimate interest in the Disputed Domain Name, since a conspicuous part of the Disputed Domain Name is a trademark TATA. Further, the sole purpose of the registration is to misappropriate the reputation associated with the Complainant’s trademark TATA. Thirdly, the Complainant asserts that the Disputed Domain was registered and is used by the Respondent in bad faith. Given the fame and world renown of the TATA mark, the Respondent clearly knew or should have known of the Complainant’s registration and use of this mark prior to registering the Disputed Domain Name. The Complainant also alleges that the Respondent has prevented the Complainant from using the <tatatel.com> domain name in connection with its services in providing information to its viewers about communication services provided by Tata Teleservices Limited. Thus, the Respondent’s actions were undertaken in bad faith, primarily for the purpose of disrupting the Complainant’s business, thereby preventing the Complainant from making use of its own marks, and attempting to mislead Internet users as to the “source, sponsorship, affiliation, or endorsement” of the Respondent’s website, by means of initial interest confusion. This Complainant’s conclusion of bad faith registration and use is supported by the fact that no plausible explanation exists as to why Respondent selected the TATA mark and TATATEL as part of its domain name other than to trade on the goodwill of the marks.

Because of these reasons, the Complainant requested the transfer of the Disputed Domain Name.

B. Respondent

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

 

6. Discussion and Findings

As noted above, although the Center has taken reasonable efforts to bring the dispute to the Respondent’s attention and to enable the Respondent to be heard, there has been no Response. In these circumstances, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.See, Sierra Health Styles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020, The Sutton Corporation v. Spiral Matrix, WIPO Case No. D2006-0167.

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:

i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complaint has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii) that the Domain Name has been registered and is being used in bad faith.

The Panel deals with each of these requirements in turn.

A. Identical or Confusingly Similar

The Disputed Domain Name consists of three parts, namely “tata”,“tel”, and “.com”. The last part “.com” is a postfix indicating top-level domain, that cannot be recognized as a principal part. A prior panel has held that, if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words for the purpose of the Policy. It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. See Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See also Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark). In this context, the Domain Name <tatatel.com> is confusingly similar to the Complainant’s trademark, since the Domain Name <tatatel.com> incorporates the entire trademark “TATA”, in which the Complainant has rights, and the generic term “tel” normally recognized as “telephone” which only describes a business operated by the Tata Teleservice Limited of the Tata Group. Tata Teleservices Limited is a member of Tata Group whose holding company is the Complainant.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s TATA mark.

B. Rights or Legitimate Interests

The Complainant has not authorized or licensed the Respondent to register or use the Disputed Domain Name or any trademark forming part thereof. The Respondent is neither commonly known by the name TATATEL nor has he made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods/services. The Respondent’s website <tatatel.com> gets directed to a web page with sponsored links and has no other bona fide use of the website. A previous panel held that the directing of Internet traffic to the Respondent’s website and the potential confusion of affiliation with other “sponsored links” and “related websites” cannot consider the use of the domain names to be legitimate non-commercial or fair use. See, Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383. None of the elements shown in paragraph 4(c) of the Policy has been proven by the Respondent. Paragraph 4(c) states:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Policy paragraph 4(b) sets forth four non-exclusive criteria for the complainant to show bad faith registration and use of a disputed domain name:

(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location of a product.

According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the Domain Name has been registered and is being used in bad faith as specified in paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under the UDRP (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; see also section 2 of the Policy) that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. Reviewing the material, the Panel reasonably finds that it is unlikely that the Respondent would have registered the Disputed Domain Name without having been aware of the Complainant’s trademark (See, Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, Liseberg AB v. Administration Local Management Technical, WIPO Case No. D2003-0864). The word “TATA” is quite unique and fanciful, and the Complainant’s mark is represented world wide. The Internet based free encyclopedia “wikipedia” refers to the Complainant company group(http://en.wikipedia.org/wiki/Tata_Group). Although the Complainant has no trademark registration in Panama, which is the location of the Respondent, the Complainant has registered its trademark in various countries as mentioned above under paragraph 4. In addition, the Respondent has not submitted its response. Therefore, the Panel believes that the Respondent registered the Disputed Domain Name in bad faith.

This also leads the Panel to the conclusion that the Respondent used the Disputed Domain Name in order to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links. Even if Internet users would realize that the Respondent’s website is not connected to the trademark owner, the Respondent is likely to profit from their initial confusion, since they may still be tempted to click on sponsored links. In plural previous UDRP decisions it has been established that the use of trademarks to divert Internet users, thereby obtaining click-through commissions, is use in bad faith (see e.g. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589); Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623).

Accordingly, the Panel finds that the Respondent has registered and has used the Disputed Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tatatel.com> be transferred to the Complainant.


Keita Sato
Sole Panelist

Dated: April 19, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0285.html

 

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