Tata Sons Limited v. Net Prosol / Renjith R. [2004] GENDND 654 (3 May 2004)

The Complainant is Tata Sons Limited of Mumbai, India, represented by, Mr. Pravin Anand of Anand & Anand, New Delhi, India.

The disputed domain name <tatainfocom.com> is registered with Direct Information Pvt Ltd. dba Directi.com, Mumbai, India.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2004. On January 30, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On January 31, 2004, Direct Information Pvt Ltd. dba Directi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2004. 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 February 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2004.

Two Supplemental filings were submitted by the Complainant, one on February 16, 2004, and the other on April 5, 2004.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 19, 2004. 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.

At the outset, the Panel takes up the procedural aspect of the supplemental filings made by the Complainant as a preliminary issue.

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Under Paragraph 12 of the Rules, the Panel can request either of the Parties for further statements or documents. The question whether a Party, on its own volition, can submit a supplemental filing has been the subject of discussion by Panelists. In the instant case, the Complainant has filed two additional submissions and has cited earlier Panel decisions in this regard. ¹

It is instructive to quote the learned Presiding Panelist Alan. L. Limbury's reasoning in Toyota Jidosha Kubushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. [WIPO Case No. D2000-0802]:

".., this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel's general powers conferred by Rule 10, particularly having regard to the panel's duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case. If a respondent raises matter which the complainant could not have been expected to have addressed in its complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules.

The Rules should not be so interpreted as to require the panel to refuse unsolicited material and then invite the submission of the same material under Rule 12 in order to achieve fairness."

The Panel agrees with the above reasoning in as much as Paragraph 12 of the Rules should not be interpreted in a manner that would disallow any additional submissions or evidence which have not specifically been sought for by the Panel. It is for the Panel to decide, based on the circumstances of the case, whether it would it be a travesty of justice to disallow uninvited supplementary submissions under Paragraph 12, read with Paragraph 10(b).

The spirit of the Rules allows the word `request' in Paragraph 12 to be understood as `mandate,' or `authorize,' whereby the Panel can mandate or authorize, in its sole discretion, further statements or documents from either of the Parties.

In circumstances where new evidence or documents have come to the knowledge or possession of either party and it is imperative for the Party to apprise the Panel of the new evidence, the Party may file additional submissions along with the relevant documents. Alternatively, the Party could make a prior request to the Panel based on which the Panel can issue a procedural order under Paragraph 12, calling for the document(s) from the Party.

In the latter option where the Panel specifically invites the submission of any document(s) under Paragraph 12, the Panel retains its discretion under Paragraph 10(d) of the Rules to disallow any document(s) or evidence, which, in its opinion, are not relevant or admissible despite having specifically invited the submission of the same material under Paragraph 12 of the Rules.

The Panel ordered the Complainant to file with the Center the document marked as Annexure `A' in the Additional Submission dated April 5, 2004, under Paragraph 12 of the Rules on or before May 3, 2004.

The Panel reserved the discretion to decide whether these documents were admissible under Paragraph 10(d).

In light of the above discussion, the Panel allowed the Additional Submissions and documents filed by the Complainant in the Supplementary Filings dated February 16, 2004, April 5, 2004 and May 3, 2004, under Paragraph 12 read with Paragraphs 10(b) and 10(d) of the Rules.

The TATA group of companies is one of the foremost business conglomerates which has laid the foundation of core areas of industry in India. Tata Sons Limited, the Complainant, is the principal holding company of the Tata Group, and is the proprietor of the TATA trademark, which is a well-known mark.

This dispute pertains to the domain name <tatainfocom.com> (the "Domain Name"), which has been registered on October 25, 2003, by the Respondent. The Domain Name contains the famous TATA mark.

In the Registration Agreement entered into between the holder of the Domain Name (the Respondent) and the Registrar, Paragraph 8 incorporates the Uniform Domain Name Dispute Resolution Policy "UDRP," by implication, wherein the Respondent agrees to be bound by the terms and conditions of the Policy.

The Tata Group of companies was founded in 1868, by Mr. Jamsetji Nusserwanji Tata. On account of the pioneering activities of its founder, the name TATA has acquired a distinct reputation denoting the high quality of products manufactured and services rendered under the TATA mark.

The Complainant states that the name TATA was adopted in 1917, and is a rare patronymic name having all the trappings of an invented word. It has become a household name synonymous with excellence in almost every field of business activity. The Tata group has a turnover in excess of US $9 billion. A list of companies of the Tata Group has been furnished as Annexure C and a printout of the Complainant's website at "www.tata.com" is filed as Annexure D to the Complaint.

The TATA mark is owned by the Complainant by virtue of prior adoption, continuous and extensive use, advertising and the reputation it has acquired in the course of trade. Copies of some trademark Registration Certificates of trademarks registered in India have been filed by the Complainant [Annexure E] along with a list of trade marks filed in over thirty other countries [Annexure F].

The Complainant licenses the use of the mark through Registered User Agreements to the companies of the Tata group, which is part of a carefully formulated business policy called the "TATA Brand Equity & Business Promotion Scheme."

The house of Tata is the only Indian Industrial business group that finds mention in the Encyclopedia Britannica. This bears testimony to the high esteem and reputation associated with the TATA group. A letter sent by the Prime Minister of India to the Tatas (Annexure G) acclaims the Tata name as having pioneered the concept of quality brands in India, which inspires "confidence in any product or service offered to the consumer." The Complainant avers that the mark is a `well-known' mark as understood under Article 6 bis of the Paris Convention.

Over the years, the Complaint has zealously guarded the reputation of its mark by having successfully restrained several parties from using the TATA mark. The Complainant has produced an illustrative list of Orders passed in favour of the Complainant. [Annexure H], an Order passed by the United States District Court of the Northern District of California² [Annexure J] and several WIPO Panel Decisions [Annexure I] that have been passed in its favour.

The Complainant claims the Respondent has misappropriated its valuable mark by registering a domain name which is confusingly similar to its mark and is using it in bad faith. The Respondent has no rights or legitimate interests in the disputed Domain Name. The Complainant requests transfer of the Domain Name.

The Respondent did not file any formal reply or response in these proceedings. The Respondent has, however, sent numerous email communications to the Complainant and the Center, subsequent to filing of the Complaint. The emails have been filed as documents in these proceedings as Supplementary Filings by the Complainant.

The Respondent has made the following assertions in the emails addressed to the Complainant:

The Respondent has placed a bid for the domain name to know the response from the World;

The Respondent is ready to transfer the domain name to the Complainant for a monetary profit and requests for $2500;

The Complainant ought to have registered the domain name prior to the Respondent as the Complainant has an infocom (sic) business;

The Complainant should contact the Respondent for a compromise before embarking on the case;

The Respondent is entitled to a profit over the amount he has invested in registering the domain name;

To demonstrate the value associated with the Domain Name the Respondent sent a copy of an email ostensibly offering the owner of the domain name Rs 1 Lakh. The Respondent states that several emails have been sent to the website.

It is evident from these assertions that the Respondent is ill-informed and the contentions made by the Respondent are misconceived. Discussed below are the Panel's findings regarding the contentions raised by the Parties:

Paragraph 4(a) of the Policy requires the Respondent to submit to a mandatory administrative proceeding if a third party ["Complainant"] asserts in compliance with the rules that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

The Complainant must, therefore, prove each of these three elements in these Proceedings.

The Panel finds the domain name <tatainfocom.com> is confusingly similar to the trade mark in which the Complainant has prior and exclusive rights for the following reasons:

The Complainant has proven, beyond doubt, that it is the proprietor of the well-known TATA trade mark, and has furnished overwhelming evidence to establish that it has prior rights in the mark.

The well-known TATA mark is the conspicuous part of the domain name <tatainfocom.com>. The term `infocom,' which has been used in conjunction with the mark is a common acronym used by organizations and companies having interests in information- and communication-related business. The Complaint has well-established business in these areas. The juxtaposition of the term `infocom' with the well-known TATA trade mark compounds the confusing similarity. ³

The Complainant has fulfilled the requirement of Paragraph 4(a)(i) of the Policy.

The Respondent has been given the option under Paragraph 4(c) of the Policy, to demonstrate any rights or legitimate interests in the domain name. The Respondent has failed to submit any evidence under Paragraph 4(c) of the Policy.

The Panel finds, based on all of the evidence in the records, that the Respondent is not commonly known by the domain name, nor has the domain name been used in connection with a bona fide offering of goods or services, and no legitimate or fair use of the domain name is conceivable under the circumstances.

The Complainant has asserted that no right, license or permission has been granted to the Respondent to use or apply its trademark in the domain name.

The Respondent appears to have some misconceived notion that he has a legitimate right to register the domain name and is entitled to profit from the goodwill and reputation of the Complainant's mark, which has been built over several decades.

He has defiantly contended that the Complainant ought to have contacted him for a compromise before embarking on the case.

It is a well-established principle, upheld by courts in numerous decisions, that reaping unfair rewards from the reputation and goodwill of another is not a legitimate right and such deception has to be prevented. A significant observation made by the court ⁴ is:

"A company's reputation in an area where it does not carry on business, is like an asset which has not yet been put upto work, which needs protection. Its non exploitation may be on account of many reasons but there is no reason why the Law should not protect such an asset and permit the local trader deceiving the public by the use of the trademark."

The same principle of trademark law applies to domain name registration and use.

The Complainant may have opted not to register the Domain Name; this does not entitle the Respondent to register the Domain Name, nor does it imply that the Complainant has relinquished its rights to register and use the domain name in future.

This underlying principle forms the basis of the Policy and requires the Domain Name registrant (Respondent) to affirm under Paragraph 2(a) of the Policy that the Domain Name will not infringe or violate the rights of any third party. It is evident from the communications sent to the Complainant that the Respondent was well aware of the trademark and business of the Complainant and has knowingly adopted the well-known trademark in which he had no rights.

Taking into account all of the above circumstances, it is reasonable to conclude that the Respondent could not possibly make any reasonable and legitimate use of the Domain Name under the principles of trademark law.

The Panel finds the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has fulfilled the requirement of Paragraph 4(a)(ii) of the Policy.

The Policy, under Paragraph 4(b), indicates a list of illustrative circumstances, which, if found present, shall be evidence of registration and use of the Domain Name in bad faith.

Paragraph 4(b)(i) specifies that if the Respondent has registered the Domain Name primarily for the purpose of selling or transferring the Domain Name to the owner of the trademark or service mark or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs, it can be construed as `bad faith' for the purposes of Paragraph 4(a)(iii) of the Policy.

The Complainant has filed a print out of the Respondent's website which offers the Domain Name for sale and clearly states "This domain name is for sale tatainfocom. Bid starts from 2 Lakhs." [Annexure L] The Respondent has corroborated this evidence by admitting in his email that he has put up the Domain Name for a bid to get a response from the world.

The Respondent has repeatedly sent email communications to the Complainant seeking payment of $2500 from the Complainant for transfer of the Domain Name (documents filed by Complainant as Additional Submissions in these proceedings). It may be reasonably inferred that the Respondent has offered to sell the Domain Name. The Panel finds the Respondent has given no justifiable explanation for the costs which are in excess of the documented out-of-pocket costs directly related to the Domain Name.

It is evident that the Respondent has registered the Domain Name primarily for the purpose of selling or otherwise transferring it to the Complainant who is the owner of the trademark for valuable consideration. ⁵

The Respondent has stated that he is receiving many emails addressed to the Domain Name and has sent one such email dated April 1, 2004, which is a job application sent to an email address @tatainfocom.com, due to the confusion resulting from the domain name.

The Panel finds that the disputed Domain Name has been intentionally used by the Respondent to attract Internet users to its website by creating the likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website, and the fact that the Respondent has been seeking monetary gain for the Domain Name is evidence of bad faith registration and use under Paragraph 4(b)(iv) of the Policy.

The Panel finds that the weight of all the evidence and circumstances justifies a finding that the Domain Name was registered and is being used in bad faith as per Paragraphs 4(a)(iii) and 4(b)(i) and 4(b)(iv) of the Policy.

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 <tatainfocom.com> be transferred to the Complainant.

¹ The Complainant has referred to the following cases with regard to the procedural emphasis laid down in Margadasi Marketing Private Ltd v. Bitranet India [WIPO Case No. D2000-1209]; Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. [WIPO Case No. D2000-0802], where the Panel had disallowed the additional filing, and Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises & J.D. Sallen Enterprises [WIPO Case No. D2000-0461].

³ See The Coca-Cola Company v. Gamlebyen Invest AS [WIPO Case No. D2000-1677] <cocacoladrinks.com> confusingly similar to Coca-Cola's famous mark; HSBC Holdings Plc v. domainchronicle [WIPO Case No. D2002-1173] <hsbcmortgage.com>. Combining a well-known trademark with a term in which Complainant has business interests increases the confusing similarity of the domain name to the trade mark.

Numerous decisions have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Quixtar Investments, Inc v. Dennis Hoffman, [WIPO Case No. D2000-0253].

⁵ Numerous decisions have held that the mere fact that the Domain Name was being offered for sale must be regarded as a circumstance evidencing bad faith registration and use. The Complainant has relied on the decision in European Broadcasting Union v. Domain 4 sale [WIPO Case No. D2000-0737].

Generic Top Level Domain Name (gTLD) Decisions

Tata Sons Limited v. Net Prosol / Renjith R. [2004] GENDND 654 (3 May 2004)

World Intellectual Property Organization