Tata Sons Ltd. v. The Advanced Information Technology Association

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tata Sons Ltd. v. The Advanced Information Technology Asssociation

Case No. D2000-0049

1. The Parties

1.1 Tata Sons Ltd, Bombay House, 24, Homi Modi Street, Mumbai 400 024, India

(Complainant).

1.2 The Advanced Information Technology Association, 1/182, Haji Habib Building,

Dr.B.A.Road, Dadar, Mumbai 400 014, India (Respondent).

2. The Domain Name and Registrar

2.1 The Respondent is the registrant of the following domain name: <tata.org>,

registered with Network Solutions, Inc. (NSI).

3. Procedural History

3.1 The Complaint in this case was filed by e-mail on February 9, 2000 and

in hardcopy on February 22, 2000 with the WIPO Arbitration and Mediation Center.

3.2 The Center has found that the Complaint satisfies the formal requirements

of the Policy, Rules and Supplemental Rules, in accordance with the Rules for

Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy.

3.3 On February 11, 2000, the Center transmitted a request to NSI to verify

the following facts:

3.3.1 To confirm that a copy of the Complaint was sent to NSI by the Complainant,

3.3.2 To confirm that <tata.org> is registered with NSI,

3.3.3 To confirm that the entity identified in the present case as the Respondent

is the current registrant of the domain name,

3.3.4 To provide full contact details that are available in NSI's database

for the domain name registrant, technical contact, administrative contact and

billing contact, for the said domain name,

3.3.5 To confirm that the Uniform Domain Name Dispute Resolution Policy is

in effect in respect of the registered domain name,

3.3.6 To indicate the current status of the domain name.

3.4 Vide communication dated February 14, 2000, NSI informed the Center as

under:

3.4.1 That NSI is the Registrar of the domain name registration,

3.4.2 That M/s.Advanced Technology Association is the current registrant of

the <tata.org> domain name registration,

3.4.3 That the Registrant is:

TATA4-DOM

1/162 Haji Habib Bldg.,

Dr.B.A.Road

Dadar, Mumbai, Maha 400 014

India

Administrative Contact:

Jain, Pravin (PJ935)

[Contact details omitted]

Technical Contact, Zone Contact:

Sharma, Sanjay (SS1398)

[Contact details omitted]

Billing Contact:

Jain, Pravin (PJ935)

[Contact details omitted]

3.4.4 NSI's 4-0 Service Agreement is in effect

3.4.5 The domain name registration <tata.org> is on "Hold" status.

3.5 On February 23, 2000 the Respondent was notified of the Complaint filed

by the Complainant and opportunity was granted as per the Rules for filing of

a Response. This was done by e-mail, facsimile as also by courier service. The

Administrative Panel finds thathe WIPO Center has satisfied its notification

obligations under Rule 2(b).

3.6 No Response was received from the respondent. One e-mail was received from

the person shown above as "Technical Contact", viz., Mr.Sanjay Sharma

which reads as under:

"This is put on record that the domain is not owned by me as I am only the

technical contact for the same. It is owned by Pravin Jain …. Please review

the NIC code and it clearly states that the Administrative Contact is the sole

owner of the domain. Please refrain from sending any such letters or e-mails

to me as I am not in any way or form associated with the domain and its purpose."

3.7 The Center did not receive any response from the Respondent. In view of

this, the Center, on March 19, 2000 notified the Respondent of its default and

further informed the Respondent that the Administrative Panel would be appointed

as per the Rules.

3.8 On March 23, 2000 the Center appointed an Administrative Panel consisting

of a single member viz., Maninder Singh and this was notified to the Complainant

and the Respondent. The deadline for the decision of the Administrative Panel

was fixed as April 6, 2000.

3.9 The language of the administrative proceeding is English.

3.10 Till this date, no response has been received from the Respondent. The

Panel therefore rules that the Respondent has forfeited its right to file a

Response. The Respondent is proceeded ex-parte. Rule 5(e) which governs such

circumstances reads as under:

"(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."

3.11 The Panel finds that in the present case there are no exceptional circumstances

that exist and therefore the present dispute shall be decided on the basis of

the Complaint itself.

4. Factual Background

4.1 The Complainant is an Indian company existing under Indian laws. It is

the principal investment holding company of the Tata Group of Companies whose

turnover is more than US$9 Billion.

4.2 The word "TATA" is the trade mark, corporate name, house mark of the complainant

and its Group companies.

4.3 "TATA" is a rare Indian surname and was the surname of the founder of the

Complainant which was established in the year 1917.

4.4 The Complainant and its Group companies have interests in a diverse field

of activities including Automobiles, Energy, Chemicals & Pharmaceuticals,

Consumer Products, Publishing, Metal, Information Technology & Communications,

Finance etc.,

4.5 The Complainant is the registered proprietor of the trade mark TATA in

India. The earliest registration dates back to the year 1942. It is also registered

in other countries viz., Bangladesh, Brunei, Kuwait, Malaya, Nepal, Sabah, Sarawak,

Singapore and Pakistan.

4.6 The Respondent is the registrant of the domain name <tata.org> with

NSI.

5. Parties Contentions

5.1 The Complainant's contentions in brief are as under:

5.1.1 That the complainant is the exclusive owner of the mark/name TATA;

5.1.2 That the respondent has got the domain name "tata.org" registered in

its name but has not got the web site activated till date and therefore the

intentions of the Respondent are mala fide;

5.1.3 That if anyone proceeds to operate a website under the impugned domain

name, the same would result in confusion and users are likely to assume some

nexus, affiliation or endorsement by the Complainant with such a website;

5.1.4 That the Respondent has registered the impugned domain name for an illegal

benefit and the same constitutes misappropriation;

5.1.5 That Internet Users are likely to subscribe to the services of the impugned

website or to deal with the Respondent under the belief that it is an authorised

website of the complainant.

5.16 The Respondent has failed to submit its Response in the present case.

6. Discussion and Findings

6.1 From a reading of the complaint and the documents filed with it, it is

abundantly clear that the name/mark TATA is a "well-known" mark.

6.2 This is further established from various orders passed by courts in India

that have granted protection to the mark TATA.

6.3 The mark/name TATA is synonymous with quality products and the same signifies

a sense of reliability. Consumers from all classes of society consisting of

urban, rural, semi-urban etc., are familiar with the TATA mark/name. The word

TATA apart from being a rare surname has no obvious meaning and is entitled

to a very high degree of protection.

6.4 The founder of the TATA GROUP, popularly known as Mr. Jamsetji Tata, is

a world famous industrialist. In fact one British author, while referring to

this name says:

"…the name of one Parsi (a community) in particular has for many years been

famous from London to New York and Tokyo. That name is TATA."

1

6.5 The Respondent belongs to the same city as the Complainant. The Respondent

is obviously aware of the long-standing, enormous reputation of the name TATA

and has adopted an identical domain name. The Respondent has offered no explanation

as to how it adopted the word TATA as a domain name. The adoption of the domain

name, as is evident from the WHOIS Database filed with the complaint clearly

reveals that the domain name was registered approximately 3 years ago but the

same has not been activated till date. This is proof that the Respondent is

merely "hoarding" the said domain name. Even if a website under the said domain

name had been activated, in the present facts and circumstances, it would still

constitute dishonest adoption and misappropriation.

6.6 Moreover, the Complainant has successfully obtained orders from Courts

in India in relation to domain names wherein Courts have granted orders of injunction

against the defendants therein from using the domain names <tatagroup.com>,

<bodacious-tatas.com>, <jrdtata.com>, <ratantata.com>, <tatahoneywell.com>,

<tatateleservices.com>, <tatahydro.com>, <tatawestside.com>,

<tatatimken.com>. Though these disputes are still pending, they are prima

facie evidence of the recognition of the Complainant's rights in the TATA name/mark.

6.7 The Complainant has pleaded in its complaint as under:

• That potential customers would be induced to subscribe to the services of

the impugned web site or to deal in some matter with the Respondent/3rd

party believing them to be licensed or authorised by the Complainant;

• That potential customers would be induced to believe that the Respondent/3rd

party have some connection with the Complainant in terms of a direct nexus or

affiliation with the Tata Group of Companies;

• That potential customers would be induced to believe that the Respondent/3rd

party is carrying on activities that have been endorsed by the Complainant and

services that are sought to be offered by the respondents have the same level

of quality and reliability that is synonymous with the goods and services of

the Complainant companies.

6.8 The above circumstances, though not specifically pleaded, constitute "Use

in Bad Faith" as contemplated under Clause 4(b)(iv) of the Uniform Dispute Resolution

Policy.

6.9 In view of all the above mentioned facts and circumstances, it is found:

6.9.1 That the Respondent's domain name <tata.org> is identical to the

trade mark TATA in which the Complainant has rights;

6.9.2 That the Respondent has no legitimate interest in the domain name <tata.org>;

6.9.3 That the registration of the domain name "tata.org" is a "Bad Faith registration"

7. Decision.

7.1 The Panel decides that the Respondent's domain name "tata-org" should be

transferred to the Complainant.

Maninder Singh

Panelist

Dated: April 4, 2000

Footnotes:

1. "100 Great Modern Lives" published

for Odham Books by The Hamlyn Publishing Group Limited, edited by John Canning

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