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In April, 2021, Tata Sons Private Limited
(“Complainant”) filed a complaint with
the WIPO’s (World Intellectual Property Organisation’s)
Arbitration and Mediation Center
(“Center”). The complaint was filed with
respect to a disputed domain name under the provisions of the
Uniform Domain Name Dispute Resolution Policy (“UDRP
Policy”), the UDRP Rules
(“Rules”) and the WIPO Supplemental
Rules of UDRP (“Supplementary
Rules”).
Before venturing into the merits and conclusion of the domain
dispute, it would be prudent for readers to first familiarise
themselves with WIPO’s UDRP Policy. The UDRP Policy provides a
legal framework for speedy resolution of domain name disputes
between a domain name registrant (i.e. the person or entity who
registers a domain name) and an infringing third party pertaining
to abusive or infringing domain registrations and use of an
Internet domain name in the generic top level domains or
“gTLDs” (e.g., .biz, .com, .info, .net,
.org etc.), and country code top level domains or
“ccTLDs” (e.g., .in, .co.uk, .ca) that
have adopted the UDRP Policy on a voluntary basis. Pertinently, any
person or entity in the world can file a domain name complaint
concerning a gTLD under the provisions of the UDRP Policy and
Rules. For disputes involving a domain name registered as a ccTLD,
the UDRP Policy can be invoked, provided that the concerned ccTLD
registration authority has voluntarily adopted the UDRP Policy.
In terms of Paragraph 4 (a) of the UDRP Policy, the UDRP
procedure is only available for disputes concerning abusive
registration of a domain name, which meet the following
criteria:
“(i) the domain name registered by the domain name
registrant is identical or confusingly similar to a trademark or
service mark in which the complainant (the person or entity
bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate
interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used
in bad faith”
The fundamental advantages of the UDRP Policy can be summarised
as follows: (1) as compared to instituting infringement proceedings
in court, the Policy typically provides a faster and more
economical mechanism to resolve domain name disputes (in usual
course, disputes are settled within 60 days); (2) the procedures
are relatively informal as compared to formal litigation; (3) the
decision-makers are experts in relevant fields of international
trademark law, domain name issues, electronic commerce, the
Internet and dispute resolution; and lastly (4) It is international
in scope as it provides one mechanism for resolving domain name
disputes regardless of where the registrar or the domain name
holder/ owner or the complainant are located.
Let us now revert to the complaint filed by Tata Sons Private
Limited, i.e. the Complainant. The Complainant being the principal
holding company of the Tata group needs no introduction for our
Indian readers and perhaps for anyone remotely familiar with
international business news and events. As many may know the
Complainant is the namesake of its founder Mr. Jamsetji Nusserwanji
Tata and the businesses of the Tata group span over multiple
international sectors including without limitation, iron and steel,
textile, power, automobiles, telecommunications and aviation, to
name a few.
The disputed domain name under question pertains to an English
and Tamil website for the brand “Taatas – The Premium
Quality Food Brand” through which “Taatas (Pvt.)
Ltd.” offers a wide range of agricultural products like
organic food, ghee and toddy wine, to its patrons in Sri Lanka. The
allegedly infringing website is owned and operated by a Sri Lankan
individual, Mr. Thobiyas Segaram Bernard Vasanthkumaar
(“Respondent”) through his
companies.
In the present dispute, the Complainant’s case is that the
disputed domain name “taatas.com”, is identical to the
Complainant’s well-known “TATA” trade and service
marks, and its website “”tata.com””. The
Complainant alleges that the disputed domain is being used by the
Respondent in bad faith and is a classic case of domain name
squatting and/or typo squatting. Brief summarizations of the
Complainant’s and Respondent’s submissions are noted below
for ready reference.
The Complainant’s Submissions:
- That the Complainant has statutory and common law rights in its
well-known trade and service mark, i.e. “Tata”; - The Complainant has trademark registrations of the mark,
“Tata”, in Sri Lanka; - That the TATA Group is one of the most popular and reputed
conglomerates of India and considering its geographical proximity
to Sri Lanka, the Respondent ought to have been aware of the
goodwill associated with and the well-known status the
“Tata” mark(s); - That users of the Respondent’s website may be induced to
believe that the Complainant has licensed and/or authorised
Respondent’s actions or that the Respondent is in some way
connected with the business of the complainant; - That the Respondent has no logical reasoning to adopt the
disputed domain name, other than based on numerology (as alleged by
the Respondent in its preliminary submission) which according to
the Complainant was a reason devoid of sense; and - That the Respondent adopted the Complainant’s mark and
added extra letters i.e. “a” and “s” with the
aim of escaping liability.
The Respondent’s Submissions:
- That the pronunciation of the respect domain names of the
parties are completely different and there is no chance that users
could land on the Respondent’s website on account of
typographical errors; - That the disputed domain name contains two additional letters
with a completely different font type and that the disputed domain
name does not use the mark “tata” in any manner; - That the Respondent adopted the disputed domain for
numerological reasons and the same has no dictionary meaning. The
Respondent further submitted that all his brand names have the
numerological value of 14 and the repetition of letters in a
business name is considered auspicious; - That the target customers and the businesses of the Respondent
and the Complainant are completely different and hence there is no
likelihood of confusion to be caused in the mind of an average
consumer; - That on a simple Google search for the term “Taatas”,
the Respondent’s company and its products are shown in the
first page of search results, and not that of the Complainant; - That the Respondent has been known by the name
“Taatas” since 2017, when he registered his company name
and thereafter registered the domain name under scrutiny, to match
the corporate name of his company, i.e. Taatas Global (Pvt.)
Ltd.; - That the Complainant has failed to provided satisfactory
evidence to establish its presence and use of its mark in Sri Lanka
and has referred to products which are wholly different when
compared to the Respondent’s products. He further submitted
that certain products/ services of the Complainant, such as Taj
Hotels are not even marketed under the mark “Tata”. Thus,
according to the Respondent there is no evidence on record to
establish use of the Complainant’s mark in Sri Lanka; - That the UDRP Policy is not to be used as a forum to adjudicate
upon civil disputes nor on aspects pertaining to trademark rights.
The Respondent further submitted that, the proceedings under the
UDRP Policy should strictly deal with cases of cybersquatting and
should not be used to resolve disputes between parties
vis-à-vis their respective trademark rights, which ought to
be outside the purview of the UDRP Policy; and - That the Complainant has failed to provide any cogent
justification or evidence to establish that the Respondent should
have been aware of the Complainant’s mark and its
reputation;
Findings
The UDRP Policy provides that a complainant must establish its
case with respect to the three criteria and elements laid down
under paragraph 4 (a) of the Policy as noted herein above.
Accordingly, the findings of the Center are enumerated below with
reference and adherence to paragraph 4 (a) of the policy:
i. Identical or Confusingly Similar Domain Name
The Panel appointed by the Center held that, contrary to the
Complainant’s submissions, whilst the disputed domain does
contain all the letters of the “Tata” mark, it also
contains addition letters i.e. an “a” inserted in the
middle and “s” added at the end. Accordingly on a
combined reading the Respondent’s domain is not identical to
the “Tata” mark. The Panel did note that the marks are
phonetically very similar.
The Panel further opined that, whilst the marks are not
identical, the disputed domain name is found to be confusingly
similar and thus the Complainant satisfied the first element of
paragraph 4 (a) of the UDRP Policy.
ii. Rights or Legitimate Interests
To determine the legitimate interests of the parties the Panel
considered the provisions under paragraph 4 (c) of the UDRP Policy,
which inter alia stipulates the circumstances (if found to exist by
the panel) which would demonstrate that the Respondent has no
legitimate rights or interest in the domain name. The said
circumstances noted under paragraph 4 (c) of the UDRP Policy as
reproduced herein below for ready reference:
(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 non-commercial
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.
On a consideration of the evidence on record vis-à-vis
the aforesaid, the Panel made the following findings:
- That the Respondent is not using the “Tata” mark nor
is it incorporated anywhere in the disputed domain name.
Furthermore, the respondent is using the name/ mark
“Taatas” as logo(s), which do not resemble any
“Tata” mark nor any derivatives thereof that were placed
on record by the Complainant. Accordingly, the Panel held that
nothing on the Respondent’s website gives an impression that
the same is owned, operated, affiliated or endorsed by the
Complainant. On the contrary, the Respondent’s company name
Taatas Global (Pvt) Ltd. is conspicuously displayed on the
Respondent’s website along with relevant contact
particulars; - That the Respondent’s products are dissimilar from the
products of the Complainant and/or the Tata Group; - Whilst arriving at its decision, the Panel positively
considered the following submissions of the Respondent:
- That the Respondent actively promotes its goods and services
online, under the mark “Taatas”; - Invoices bearing the “Taatas” logo submitted by the
Respondent to demonstrate that the Respondent has been making
domestic and foreign sales under its “Mark”, prior to the
Complaint - The Respondent’s application to the Sri Lankan excise
department, dated prior to the filing of the Complainant, whereby
the Respondent has sought the excise department’s approval to
use bottle labels bearing the words “Marketing by Taatas
Global (Pvt.) Ltd. www.taatas.com”
- That the Respondent actively promotes its goods and services
On the basis of the above, the Panel noted that the present
complaint does not amount to a case of domain name squatting, as
alleged by the Complainant, because there is sufficient evidence on
record to establish the Respondent’s bona fide offering of
goods and services under the domain “taatas.com”. The
Panel further noted that, in the present complaint the Panel is not
called upon to weigh in on the respective rights of the parties
vis-à-vis the trademarks and that in the Panel’s
considered view the same could be better adjudicated in a court
having competent jurisdiction. Furthermore, in light of the
aforesaid findings, the Panel did not deem it necessary to dwell
into the third element under paragraph 4 (a) of the UDRP Policy
i.e. Use in Bad Faith.
Conclusion
The Center’s finding that singular reliance on the fame of a
particular mark and mere averments as to the mark having a
well-known status without any cogent evidence to justify
allegations of bad faith adoption of a mark are not sufficient to
establish a case of cyber-squatting or domain name squatting. In
this classic David versus Goliath scenario, it is re-assuring to
see that a reputed brand’s reluctance or inability to tender
factual submissions and evidence, outweigh its fame and goodwill.
Whilst concluding its order, the Panel also noted that, the
Complainant may commence proceedings in a court having competent
jurisdiction, if the Complainant considers that it has valid
grounds to allege infringement of its trademark, and such
proceedings would unavoidably address the registration and use of
the impugned domain name. While there is presently no information
available in the public domain to confirm whether the Complainant
has instituted proceedings for trademark infringement, it would be
interesting to see if the unfavourable outcome of the present
complaint dissuades or in fact, urges the Complainant to do the
same.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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