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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tata Sons Limited v. tataconnect

Case No. D2006-0572

 

1. The Parties

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

The Respondent is tataconnect, San Diego, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tataconnect.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2006. On May 6, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 8, 2006, Go Daddy Software transmitted by email to the Center its verification response denying that DomainsByProxy.com is listed as registrant and confirming that tataconnect is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 12, 2006. The Center verified that the Complaint together with the amendment to 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 May 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2006. The Response was filed with the Center on June 5, 2006.

The Center appointed Johan Sjцbeck as the sole panelist in this matter on June 6, 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.

Procedural Issues

The domain name was registered to DomainsByProxy.com at the time when the Complainant filed the Complaint. DomainsByProxy.com allows domain name holders not to disclose their true identity for various reasons. After the Complaint was filed but before the formal commencement of the proceeding, DomainsByProxy.com informed that tataconnect was the true user of the domain name. Tataconnect filed a Response on June 5, 2006. Having all of the above in mind, the Panel finds that the Respondent in this proceeding is tataconnect.

 

4. Factual Background

The Complainant has based its Complaint on the TATA trademark in the United States with registration No. 789,432, dated May 11, 1965, and submitted evidence of the registration.

Furthermore, the Complainant has based its Complaint on the TATA trademark in the United States with registration No. 2,929,070, dated March 1, 2005 and submitted evidence of the registration.

The Complainant has provided copies of the relevant Whois search results and the Respondent has been confirmed by the concerned Registrar to be tataconnect, San Diego, California, United States of America. The Respondent registered the domain name <tataconnect.com> on July 23, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant in this proceeding, Tata Sons Ltd, is the principal investment holding company of the TATA Group of companies, which is India’s oldest and largest conglomerate, with a turnover that is over US$9 billion. In 1868 Jamsetji Nusserwanji Tata set up a private trading firm. The Complainant has been using the trademark TATA for its business activities in textiles, steel, power, hotels, automobiles, electronics, financial services, mutual funds, computer software, tea and telecommunications TATA has become a house mark of the TATA group and source indicator of the diverse goods and services that are provided by the group which sometimes is referred to as the HOUSE OF TATA. The TATA group has a large presence in the telecommunications field, including in Voice over Inter Protocol (VOIP).

The Complainant and its group companies have numerous websites including “www.tata.com”, “www.tatamotors.com”, “www.tatainfotech.com” and “www.tatachemicals.com”.

The HOUSE OF TATA is mentioned in the Encyclopedia Britannica 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.”

The Complainant is the registered proprietor of the trademark TATA in relation to various goods in various classes. The Complainant has provided an extensive list of trademarks registrations in India and numerous countries. The Complainant has submitted two copies of registration certificates for TATA in the United States of America: TATA with registration number 0789432, dated May 11, 1965 and TATA with registration number 2,929,070, dated March 1, 2005.

The Complainant has submitted a copy of a letter by the former Indian Prime Minister Mr. Atal Bihari Vajpayee dated July, 1998 in which he states: “It was the legendary late JRD Tata who brought in the concept of ‘brand name’ in the India mindset and the very word ‘Tata’ inspired confidence in any product or service offered to the consumer”.

The Complainant refers to eight previous UDRP proceedings with decisions in its favor and to various orders by the High Court of Delhi. The Complainant maintains that the mark TATA is a “well-known” mark as understood under article 6 bis of the Paris Convention.

The disputed domain name <tataconnect.com> is identical in part and confusingly similar as a whole to the trademark TATA in which the Complainant has rights. The addition of the generic term “connect” does not make the domain name dissimilar from the trademark. The Respondent’s use of the trademark will lead to confusion and dilution of the Complainant’s well known and famous trademark.

The sole purpose of the Respondent’s registration is to misappropriate the reputation associated with the Complainant’s trademark TATA. The Complainant has not authorized nor licensed the Respondent to register or use any domain name incorporating the trademark. The Respondent is not commonly known by the name TATA and the Respondent’s claim that it is a registered company is a false and empty claim. No legitimate rights can be inferred merely from the name given in the Whois contact and the same principle extends to the mere mention of an alleged name on the website which is clearly false.

Searches on Google for “Tata + Connect”, “Tata + voip” and “Tata + connect + voip” provide search results where the first two pages of search results relate to the Complainant and its group companies and no results relate to the Respondent.

Furthermore, the Respondent is attempting to claim a false legitimacy for operating the website by using the disclaimer “© Tata Communications USA ALL Rights Reserved” on the website. Tata Communications used to be a company belonging to the TATA group which was later consolidated with VSNL. The Respondent is not known as “Tata Communications” which is a false claim. This is further emphasized by the fact that search results for “Tata Communications” yields only results relating to the Complainant.

The Respondent is not making a legitimate non-commercial use of the domain name and the offering of services on its website is not bona fide due to the fact that the Respondent is trading on the fame and recognition of the Complainant’s well-known trademark in order to cause initial interest confusion and bait Internet users to accessing its website and thereafter luring them to use the Respondent’s service.

The Respondent appears to be conducting extensive business through the website to which the disputed domain name <tataconnect.com> resolves. The website has a number of options for making telephone calls via Internet, ie VOIP. The Respondent also sells the Complainant’s “prepaid mobile cards”. The fact that the Respondent sells TATA pre paid cards indicates that the Respondent is aware of the Complainant’s trademark TATA. It is evident that the Respondent has registered the domain name in order to disrupt the business of the Complainant and to prevent the Complainant from reflecting its trademark in a corresponding domain name.

On the Respondent’s website it is stated that “All corporate names, service marks, logos, trade names, trademarks, websites and domain names of Tataconnect (collectively “Marks”) are and shall remain the exclusive property of Tataconnect and nothing in these Terms of Service shall grant you the license to use such Marks”. Thus, the Respondent is trying to deceive Internet users by stating that the Respondent is the owner of the Complainant’s trademark TATA.

Furthermore, the Respondent is using the Complainant’s trademark TATA in the Meta tags found in the source code of the website, which is evidence of registration and use in bad faith.

After the Complaint was filed and served, the disputed domain name was transferred from DomainsByProxy.com to tataconnect in violation of Section 8(a) of the Policy. The Registrar and the Respondent have been trying to obstruct the course of the UDRP proceeding through “cyberflying”, which also is evidence of bad faith.

B. Respondent

The Respondent argues that it is a legitimate business without intention of cheating people by using the Complainant’s known trademark. The Respondent claims to be Telecomm and Technology Associates (TATA), a registered USA company doing business as “tataconnect.com”. The Respondent denies that the website contains any claim that it is part of or in any way related to TATA Group, TATA Sons or TATA India. The Respondent denies any prior knowledge of existence of TATA Group or TATA Sons. The Respondent argues that the Complainant is not involved with the same type of business as the Respondent and that the Complainant is not directly or indirectly affected by the Respondent’s use.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark TATA. The disputed domain name <tataconnect.com> incorporates the Complainant’s trademark in its entirety with the addition of the generic word “connect”.

The ability for such a generic word to distinguish the domain name from the trademark is limited and has little, if any, legal significance according to previous case law. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA.

Having the above in mind, the Panel concludes that the disputed domain name <tataconnect.com> is confusingly similar to the Complainant’s trademark TATA and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that he has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant has not licensed or otherwise consented to the Respondent’s use of its trademark TATA in connection with the disputed domain name <tataconnect.com> which is confusingly similar to the trademark. It has been argued by the Complainant that the Respondent is not commonly known by the name TATA and that the Respondent’s claim to be a registered company by the name “tataconnect.com” is a false and empty claim.

The Respondent, on the other hand, has claimed that it is “Telecomm and Technology Associates (TATA)”, a registered USA company doing business as “tataconnect.com”. On the website connected with the disputed domain name, the Respondent has a disclaimer stating “© Tata Communications USA All Rights Reserved”.

The Complainant has argued that the disclaimer is an attempt by the Respondent to claim a false legitimacy for operating the website because the TATA group used to own a company called “Tata Communications” before it consolidated with VSNL. The Complainant has not submitted any evidence indicating that the company “Tata Communications” used to be a company belonging to the TATA group.

On the other hand, the Respondent has not submitted any evidence at all demonstrating that the Respondent has a registered company with the name “TATA”, “Telecomm and Technology Associates “, “Tata Communications USA” or “tataconnect.com”. In addition to this, the Respondent has not provided the Panel with any evidence as to the rights or legitimate interests in the disputed domain name <tataconnect.com>. According to previous case law, no rights or legitimate interests can be inferred merely from the name, given by the Whois contact by the registrant of the alleged company. See for example Tata Sons Limited v Tatasky International Corporation, WIPO Case No. D2005-0783 regarding the domain name <tatasky.com>.

There is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The evidence submitted shows that the disputed domain name <tataconnect.com> is used for various online telecommunication services such as VOIP and that the website to which the domain name resolves offers “Tata prepaid” phone cards. The Complainant has argued that since the Respondent is selling “Tata prepaid” phone cards produced by the Complainant, it is evident that the Respondent is aware of the Complainant’s trademark TATA. The Respondent has not contested the claim that it is selling “Tata prepaid” phone cards produced by the Complainant.

Furthermore, the evidence submitted shows that the Respondent is using meta tags in the source code of the website to which the disputed domain name resolves, consisting of the trademark TATA and words such as “India calling cards” and “prepaid phone card for India”. Internet users searching for the Complainant’s trademark may therefore, as a result of the meta tags, be directed to the Respondent’s website.

The circumstances in the case before the Panel indicate that the Respondent has been aware of the Complainant’s trademark TATA and that the disputed domain name <tataconnect.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark TATA as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

There is no evidence in the case that refute the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <tataconnect.com> has been registered and used 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 <tataconnect.com> be transferred to the Complainant.

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Johan Sjцbeck
Sole Panelist

Date: June 20, 2006