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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tata Sons Limited v. D & V Enterprises
Case No. D2000-0479
1. The Parties
The Complainant (hereafter – "the Complainant") in this Administrative Proceeding is Tata Sons Limited, a company incorporated in India under the Indian Companies Act, 1913, having its registered office and principal place of business in Mumbai, India.
According to the InterNIC WHOIS database, the Respondent in this Administrative Proceeding (hereafter – "the Respondent") is D & V Enterprises of 1328 River Road, Suite 325, Lakewood, New Jersey 08701, U.S.A. Other than the e-mail address, which is email@example.com, the Complainant does not have any other details concerning the Respondent’s legal status, place of incorporation or principal place of business.
The Respondent’s postal address is as above, and its Administrative and Technical Contact is Charles Gattsek of Computer Surgeons & Services, Inc., 590 Park Avenue, Freehold, NJ 07728, U.S.A. The Billing Contact of the Respondent is Daniel Berrios of D & V Enterprises, 1328 River Road as above. The e-mail address of Daniel Berrios is Daniel@myhost.com
2. The Domain Name and the Registrar
The Domain Name in issue is bodacious-tatas.com (hereafter – "the Domain Name").
The Registrar of the Domain Name is Network Solutions, Inc. of Herndon, Virginia, U.S.A.
3. Procedural History
A. Issuance of Complaint
The Complaint (hereafter – "the Complaint"), submitted by the Complainant, was received by e-mail on May 23, 2000, by the World Intellectual Property Organization Arbitration and Mediation Center (hereafter – "the WIPO Center"), and has also been received in hard copy. The signed original of the Complaint, together with four hard copies thereof, Annexures and the requisite fee, were forwarded by the Complainant to the WIPO Center by express courier under cover of a letter of the same date. On May 25, 2000, the WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant.
The Complaint in question is made pursuant to the Uniform Domain Name Dispute Resolution Policy (hereafter – "the Uniform Policy"), which on October 24, 1999, was implemented by the Internet Corporation for Assigned Names and Numbers (hereafter – "ICANN") and, pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy (hereafter – "the Uniform Rules"), was implemented by ICANN on the same date.
On May 25, 2000, a Request for Registrar Verification was transmitted to the Registrar, seeking: -
a) confirmation that a copy of the Complaint was sent to the Registrar by the Complainant in accordance with Paragraph 4(b) of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereafter – "the Supplemental Uniform Rules");
b) confirmation that the Domain Name in issue is registered with the Registrar;
c) confirmation that the person identified as the Respondent is the current registrant of the Domain Name in question;
d) provision of the full contact details (i.e. postal address (es), telephone number(s), facsimile number(s), e-mail address (es) available in the Registrar’s WHOIS database for the Domain Name Registrant, and Technical, Administrative and Billing Contact, for the above Domain Name;
e) confirmation that the Uniform Policy applies to the Domain Name concerned;
f) indication of the current status of the Domain Name in issue.
In an e-mail transmission to the WIPO Center of May 30, 2000, the Registrar, Network Solutions, Inc., confirmed that it had received the Complaint from the Complainant and that it (Network Solutions, Inc.) was the Registrar of the Domain Name registration. The Registrar also confirmed that D & V Enterprises was the current Registrant of the Domain Name registration and verified that the name and address of the Respondent was the one given by the Complainant. Further information supplied by the Registrar related to the Administrative, Technical and Zone Contact for the Respondent, which was given as Charles Gattsek, Computer Surgeons & Services, Inc. of 590 Park Avenue, Freehold, NJ 07728, U.S.A. The Registrar also gave the telephone and facsimile numbers, as well as the e-mail address of the Contact. In addition, details of the Billing Contact for the Domain Name were supplied by the Registrar, including the name of the Contact, Daniel Berrios, his e-mail address and telephone number (his postal address is identical to that of the Respondent). Finally, the Registrar confirmed that Network Solution, Inc.’s 5.0 Service Agreement was in effect and that the Domain Name registration was in "Active" status.
B. Formal Requirements Compliance Review
The assigned WIPO Center Case Administrator compiled a Formal Requirement Compliance Checklist on May 31, 2000. The Panel has independently determined and agrees with the verification of the WIPO Center that the Complaint is in formal compliance with the provisions of the Uniform Policy, Paragraph 4(a) of the Uniform Rules, as approved by ICANN on October 24, 1999, and Paragraph 5 of the Supplemental Uniform Rules in effect as of December 1, 1999. The Complainant paid the requisite fee, by the due date and in the required amount, for a single-member Panel.
C. Notification to Respondent and Commencement of Proceeding
On May 31, 2000, the WIPO Center transmitted to the Respondent a Notification that an Administrative Proceeding had been commenced against it pursuant to the Uniform Policy, which, it was pointed out, was adopted by ICANN on October 24, 1999. It is to be observed here that, by virtue of Section 8 of the Registration Agreement made between the Registrar and the Respondent (a copy of which document was transmitted to the WIPO Center by the Complainant), it is provided as follows: -
8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site...
It will be seen, therefore, that the Uniform Policy has been incorporated by reference into the Registration Agreement with the Registrar of the Domain Name in issue. Pursuant to this the Respondent was required to submit to, and participate in a mandatory Administrative Proceeding in the event that a third party were to submit a Complaint to an ICANN-approved dispute resolution service provider concerning the Domain Name.
D. Further Details (in abstract form) set out in the Notification to the Respondent
It was incumbent upon the Respondent, within twenty calendar days from receipt of the Notification, to submit to the Complainant and to the WIPO Center a Response according to the requirements set out in Paragraph 5 of the Uniform Rules and the Supplemental Uniform Rules.
If no Response were to be sent by the due date, which, in the present issue, was June 21, 2000, the Respondent would be considered to be in default. The WIPO Center, however, would appoint an Administrative Panel to review the facts of the dispute and to decide the case.
c) Administrative Panel
The dispute between the Complainant and the Respondent would be decided by an Administrative Panel consisting of either one or three impartial and independent decision-makers. The Complainant in this Administrative Proceeding has elected for an Administrative Panel consisting of a single panelist. Nevertheless, despite the Complainant’s designation of a single panelist, the Respondent had the right, on the fulfillment of certain terms and conditions, to elect to have the case decided by an Administrative Panel consisting of three persons. No response on this point was received from the Respondent.
d) The Administrative Proceeding
If the present case were to be decided by a single-member Administrative Panel, the WIPO Center would appoint the Administrative Panel within five days of the date the Response on the part of the Respondent was due.
e) Communication to the Respondent
The Notification was communicated to the Respondent (including the Domain Name Registrant, and the Administrative, Technical, Zone and Billing Contact, as provided in Paragraph 2(a) of the Uniform Rules) in accordance with the contact details and methods set out on page 6 of the Notification. Having reviewed the communication records, the Panel finds that the WIPO Center has fully discharged its responsibility, pursuant to the provisions of Paragraph 2(a) of the Uniform Rules, "...to employ reasonably available means calculated to achieve actual notice to Respondent".
f) Commencement of Administrative Proceeding
In accordance with Paragraph 4(c) of the Uniform Rules, the formal date as to the commencement of the Administrative Proceeding was set at June 2, 2000.
g) Notification of Respondent Default
On June 22, 2000, having received no Response from the Respondent within the time specified in the Notification of Complaint, the WIPO Center transmitted to the Respondent (and, presumably, also to the Complainant) a Notification of Respondent Default.
D. Invitation and Appointment to Serve as Panelist
In the light of the Complainant’s request for a single panelist (but without prejudice to any election by the Respondent) the WIPO Center (through Dr. Francis Gurry, Assistant Director General WIPO and Director WIPO Arbitration and Mediation Center), in a letter of July 3, 2000, invited Mr. Michael Ophir to serve as Panelist in Case No. D2000-0479, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
The Panelist (hereafter – "the Panel"), having signed and dated the Statement of Acceptance and Declaration of Impartiality and Independence, forwarded a copy of it to the WIPO Center by facsimile transmission, together with a short covering note, on July 10, 2000. On July 12, 2000, the original signed and dated Statement of Acceptance and Declaration of Impartiality and Independence, together with a covering letter, was sent to the WIPO Center by FedEx. In the above covering letter the Panel requested a copy of the Uniform Policy, Rules and Supplemental Rules, together with some past Administrative Panel Decisions to serve as precedents as to layout and style. At the Panel’s faxed request of July 13, 2000, several Decisions, together with the other requested material, were sent to him by the WIPO Center by Priority Airmail Post, and were received on August 3, 2000.
b) Notification of Appointment of Administrative Panel and Projected Decision Date
On July 11, 2000, formal written notice, in accordance with Paragraph 6(f) of the Uniform Rules, was given by the WIPO Center to all the parties concerned to the effect that an Administrative Panel had been appointed in the above-referenced case, consisting of a single member: Michael Ophir. It was also stated in the notice that -
"Absent exceptional circumstances the Administrative Panel is required to forward its decision to us by July 24, 2000, in accordance with Paragraph 15 of the Uniform Rules" (panel’s underlineation). This, with the greatest possible respect to the staff of the WIPO Center, was logistically impossible since, as previously stated, the requested material did not reach the Panel until August 3, 2000. The unavoidable delay in drafting this Decision is deeply regretted. At the same time, the Panel gives its assurance that it has made every effort to minimize any inconvenience occasioned to the parties by reason of the delay.
4. Factual Background
The Complainant has asserted, and furnished evidence in support of the following factual matters: -
A. The present Complaint is based on the unauthorized use (that is to say, use without permission) by the Respondent, as a part of its Domain Name, of the Complainant’s trademark TATA.
B. The Complainant first adopted the name "TATA" in 1917.
C. The Complainant is the principal investment holding company of the Tata Group of Companies, which has an annual turnover of over US $9 Billion.
D. Since its inception, the Complainant has used the trademark TATA for all its business activities.
E. The Commercial Activities of the Complainant and its Group of Companies
TATA has a group turnover in excess of Rs. 33,000 crores, and the enterprises promoted by TATA have laid the foundations in the industrial core sectors, pioneering textiles, steel, power, hotels and transport industries in India. Over the years, Tata enterprises entered fields of commercial activities of which the following are examples: -
Metal and Associated Industries – Iron and Steel, Dolomite, Wiredrawing, Roll Manufacture
Tata Steel was founded in 1907 and constitutes India’s first integrated steel plant. Under the TM TATA it manufactures iron and steel products and agricultural implements, both for the domestic market as well as for export.
Tata Refractories Limited is the only manufacturer of burnt and unburned dolomite refractories in India and, at present, has technology agreements with enterprises in both Germany and the United Kingdom.
Tata SSL is the pioneer of wiredrawing technology in India and exports to nine countries including Australia, Hong Kong, New Zealand, Singapore and the U.S.A.
Tata Yodogawa Limited, a company established in 1968, is the pioneer in the field of roll manufacture in India and manufactures for both the domestic market and for export.
Tata Engineering, established in 1945, is India’s largest private sector automobile company and the largest manufacturer of commercial vehicles in India (the sixth largest in the world).
Tata Cummins Limited, set up in 1993, is a joint venture between Tata Engineering and Cummins Engine Company, Inc. (U.S.A.). This joint enterprise manufactures low emission Cummins diesel engines for powering Tata Engineering medium and heavy commercial vehicles for the domestic and export markets.
The Tata Electric Companies constitute India’s largest electric power utility in the private sector and form one of the major power systems in Western India.
Chemicals and Pharmaceuticals
Tata Chemicals Limited is involved in, among other activities, the production of soda ash, sodium bicarbonate and electrolytic caustic soda, and is engaged in research and development activities.
Consumer Products – Home Appliances and Wearing Apparel
Titan Industries manufacture and market watches, vacuum cleaners and other home appliances, knitwear, T-Shirts and Polo Shirts. These goods are consumer products included in the business of the Tata Group of Companies.
Services – Hotels, Publishing, Printing and Transport System
The Complainant operates a chain of luxury and tourist hotels through the Taj Group of Hotels, which has over 42 hotels in India and 15 hotels in other countries.
Tata McGraw Hill Publishing Company Limited, a joint venture enterprise between Tatas and the U.S. publishers, McGraw Hill, promotes and distributes the entire range of McGraw Hill publications in India.
Tata Donnelly Limited, the largest commercial printer in India, is in joint venture with RR Donnelly. This enterprise includes, but is not limited to, magazines, corporate annual reports, books, calendars and Yellow Page Directories
Tata NYK Transport Systems, a joint venture with a Japanese Shipping Line, was founded in 1993 and provides Container Shipping Services.
Tata Tea Inc., a subsidiary of Tata Tea Limited in the U.S.A., was established to meet the requirements of the U.S. consumer.
Tata Tetley, a joint venture between Tata Tea and Lyon’s Tetley Limited (United Kingdom), is a member of the Tata Group of Companies. Its aim is to supply high quality tea products to the international market. An agreement has recently been finalized for the acquisition by Tata Tea of the Tetley Group of Companies at the price of 271 Million Pounds Sterling (L.271,000,000.)
Information Technology and Communications
Tata Consultancy Services (TCS), which was established in 1968, as a division of the Complainant, deals in information technology and management consultancy organization, with operations extending to North America and Europe.
Tata Infotech Limited is concerned with information technology, providing services in, for example, the area of hardware, software and education, and protecting third party products from the illicit operations of certain companies and corporations.
Tata Telecom Limited was founded and promoted in order to bring into India the best technology in the area of telecommunications. With this aim in mind it established joint ventures with companies like Lucent Technologies and Japan Radio Corporation.
Tata Teleservices Limited was established to provide basic telecom services to the urban and rural areas of Andhra Pradesh. Its services complement those already provided by the Government of India, Department of Telecommunications.
Export and Overseas Operations
Tata International Limited, one of the first Indian Companies to acquire Export House Status, has an overseas network, which includes nine wholly-owned subsidiaries operating in Africa, Europe, Hong Kong, the U.A.E. and the U.S.A.
Tata International AG and its subsidiary, Tata AG, provide promotional and project services in association with Tata Companies in India and elsewhere. These services range from project identification to design, planning and establishment of overseas ventures.
Tata Limited, which was established in London in 1907 as a subsidiary of Tata Sons Limited, is a representative of the Tata Group of Companies. Its operations include the purchase, insurance and shipment of plant equipment and stores, forwarding and transportation.
Tata Finance Limited is active in the corporate finance sector, providing short and long term funding and syndication services. This is in addition to financing equipment, such as industrial and construction machinery, motor vehicles and consumer goods.
Tata focuses on the promotion of education and research in areas such as science and technology, molecular biology, atomic energy and social development. The Tata Group of Companies has established a trust, which has promoted five pioneering institutions, including Tata Institute of Social Sciences, Tata Memorial Centre for Cancer Research & Treatment and Tata Institute of Fundamental Research. In addition, the Tata Group of Companies operates specific programs, through its network of over 85 Tata Companies, in the areas of Social Forestry, Water Management, Community Health and Infrastructure.
It was asserted by the Complainant that all the aforestated activities and operations of Tata are merely illustrative. An entire Tata Enterprise Brochure, marked "Annexure C", which details all the activities of the Tata Group of Companies, has been annexed to the Complaint. For the sake of good order, it is pointed out that, in fact, the Brochure, a copy of which has been produced to the Panel, is marked "Annexure E" – not "C".
5. Parties’ Contentions
A. The Complainant
a) The Complainant, its Group of Companies and their Trademark TATA
The Complainant asserts that it is the proprietor of the trademark Tata (hereafter – "TM TATA") "by virtue of priority in adoption, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade". It is also submitted that the Complainant and its Group of Companies have exclusively used the TM TATA as a trademark. The TM TATA, accordingly, is identified by the public as an indication of the quality and service claimed by the Complainant and the Tata Group of Companies.
The Complainant, which is the investment holding company of various Tata companies, is the registered proprietor of the TM TATA in relation to goods in various classes. In the words of the Complainant, an "illustrative list of the trademark registrations it holds", in India and elsewhere (eleven other countries) is annexed to the Complaint and marked "Annexures D and E". (For the sake of good order it is pointed out that, in fact, the Annexures in question are marked "C" and "D" respectively).
Various members of the "House of Tata", dealing in goods, mark their products and/or packaging "A TATA PRODUCT", and those members that are engaged in services identify themselves by the distinctive trading style of TATA. The TM TATA, of which the Complainant is the registered proprietor, is licensed, by way of Registered User Agreements, to other TATA companies within the TATA Group of Companies that manufacture the goods and market them under the trademark in question.
It is submitted by the Complainant that the name "TATA" has consistently been associated with, and has denoted the goods and business of, the "House of Tata", as well as the high quality of the products manufactured and services rendered under the TM TATA, or associated with the "House of Tata". For the foregoing reasons, and on account of its highly distinctive nature, the name "TATA" has acquired considerable goodwill. Over the years to the present day the name "TATA", it is contended, has become a household word, synonymous with excellence, in almost every field of business activity.
On the evidence, the Panel accepts the foregoing submissions.
b) TATA as a Corporate Name and Well-Known Trademark – Goodwill and Reputation
The word "TATA", apart from its trademark and service mark aspects, as outlined above, also constitutes part of the corporate name of numerous TATA Companies.
On the Complainant’s submission the word "TATA" enjoys an excellent reputation and goodwill, which go far beyond any specific merchandise or territories. "TATA", it is contended, has become a household name in India so that householders refer to it to indicate both high quality and achievement as well as other positive, distinctive attributes of that nature. In a nation-wide survey, referred to by the Complainant that was conducted in India in 1996 by the Gallup Poll Organization it was assessed that three out of every ten persons surveyed were aware of the name and TM TATA.
The Complainant asserted that the TM TATA is also widely known in many countries outside India.
Without minimizing the importance of the aforestated submissions on the part of the Complainant, it is necessary to point out, here, that no written evidence to substantiate those particular submissions was supplied by the Complainant. On the other hand, it is only fair and correct to stress that the Respondent in no way contradicted the Complainant’s assertions, either in the present context or elsewhere for that matter.
The Complainant contends that, due to its global presence, the Tata Group of Companies is collectively referred to as "the TATAS" throughout the world. Annexure F, annexed to the Complaint, contains copies of articles and reports that have appeared in several magazines and on the Internet.
Subject to the Panel’s foregoing reservations the Complainant’s submissions under the present heading can reasonably be accepted.
c) The Complainant’s Contentions as to the Respondent and its Activities
The Respondent, in the present case, has registered the Domain Name, and according to the Complainant, has misappropriated the TM TATA, which is the Complainant’s exclusive property. The Domain Name incorporates the trademark owned by the Complainant. It is contended that the existence of the impugned Domain Name is causing irreparable loss to the goodwill and reputation that has been built by the Complainant over decades.
The Complainant visited the Respondent’s web-site, which bears the aforestated web address and found that the site in question contained pornographic material. It was revealed that when the Domain Name entered in a web browser, the Internet user is taken to the home page of the Respondent, which contains sexually explicit material. The preview page further contains the web addresses of no less than eight pornographic web-sites.
The Complainant asserts that it has succeeded in obtaining an interim ex parte Injunction against the Respondent from the Hon’ble High Court of Delhi.
The terms and conditions of the injunction are as follows: -
Till the next date of hearing the defendants, their partners or proprietors, their officers, servants, agents and representatives and all others acting for and on their behalf, are restrained from using the domain name bodacious-tatas .com and are further restrained from using tatas as a meta-tag in the source code of their home page and web site at bodacious-tatas.com
September 08, 1999
Issue Notice returnable on 7th January, 2000
Although the Complainant does not specify what court proceedings, if any, took place on January 7, 2000 (or subsequently), this aspect of the matter does not have any crucial importance in the Decision of the Panel.
B. The Respondent
The Respondent did not file a Response to the Complaint, has not contested, in any manner, the allegations set out in the Complaint and, accordingly, is in default.
6. Discussion and Findings
This aspect has already been outlined by the Panel in this Decision (see: main paragraph: 3. Procedural History, sub-paragraph C: Notification to Respondent and Commencement of Proceeding). The issue, here, is within the ambit of the Uniform Policy by reason of the fact that the Registration Agreement (see: Complaint - Annexure B), pursuant to which the Domain Name, the subject matter of the Complaint, incorporates the Uniform Policy. By virtue of clause 8 in the Registration Agreement (cited earlier), it is implicit that the Uniform Policy is applicable to the present issue. The Panel, therefore, has jurisdiction to deliberate and decide on the present issue.
B. Uniform Policy
Paragraph 4 of the Uniform Policy ("Mandatory Administrative Proceeding") provides in sub-paragraph (a) ("Applicable Disputes") sub-sub-paragraphs (i) to (iii) as follows:
...in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect to the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceedings, the complainant must prove that each of these three elements is present.
C. Since the Complainant, in order to succeed in his claim, must prove each of the foregoing elements and comply with each of the aforementioned requirements, all of these matters will now be discussed in turn.
a) Domain Name "Identical or Confusingly Similar"
It is clear to the Panel that an integral part of the Domain Name registered by the Respondent in this case, namely "tatas", is confusingly similar, and almost identical, to the Complainant’s TM TATA. It is true, of course, that the Respondent, in its Domain Name registration, has used "tata" plus the addition of the letter ‘s’, whilst the Complainant’s trademark has no ‘s’. This, however, is of no benefit to the Respondent. In the Complainant’s submission, which is amply substantiated by copies of articles and reports submitted (see: Complaint - Annexures "E" and "F") the Tata Group of Companies is collectively referred to as "Tatas" throughout the world.
One might think, nevertheless, that the inclusion of the word "bodacious" in the domain name registered by the Respondent, taken together with the addition of the letter ‘s" to TATA, could create a sufficient distinction, for trademark purposes, between the Complainant’s TM TATA, on the one hand, and the Respondent’s Domain Name on the other. Such a contention, however, is untenable in the view of the Panel, by virtue of the very high level of goodwill that both TATA and TATAS have acquired. Further, TATA, without any vestige of doubt, constitutes a famous (or, in international parlance, well known) mark – a subject to which the Panel will return.
As to goodwill, the Panel accepts the Complainant’s submission to the effect that the name "TATA" has consistently been associated with the goods and services of, the "House of Tata". Combined with this, and in association with the "House of Tata", is the high quality of the products manufactured, and services rendered, under the trade and service mark TATA. For the foregoing reasons, and on account of its highly distinctive character, as fully explained by the Complainant, the name "TATA" has acquired considerable goodwill.
The Panel also accepts the Complainant’s contention that it is the lawful proprietor of the trade and service marks TATA by virtue of priority in adoption and on the basis of continuous and extensive use and advertising. The Complainant’s contention holds equally good concerning its exclusive use, and the exclusive use by its Group of Companies, of the TM TATA, and its corresponding service mark, in relation to goods and services in various classes (see: Complaint – Annexures "C "and "D" for illustrative lists).
It must be said, also, that it is now generally accepted in most countries that well-known marks, particularly those surrounded by an aura of high repute, excellent quality and respectability, deserve wide protection. This the Panel holds to be the case with the TM TATA and its corresponding service mark. In this area, therefore, the addition of a word like "bodacious" ["South Midland and Southern U.S.-1."thorough"; "blatant"; "unmistakable"; 2."remarkable"; "outstanding"; 3. "audacious"; "bold"; "brazen" – "Webster’s Encyclopedic Unabridged Dictionary of the English Language": (1989)], and the addition of the letter ‘s’, does not render the Domain Name less identical or less confusingly similar to a trade or service mark. Indeed, the opposite is true, particularly when one considers most of the meanings attributed to the word "bodacious".
b) Respondent’s Rights or Legitimate Interests (if any) in respect to Domain Name
The Complainant’s submission that the mark TATAS is well known is supported by Orders issued by the Courts in India granting protection to the TM TATAS on the basis of its repute. Further, the Complainant’s trademark and name "TATA" are perceived as having international recognition on account of the involvement of the Tata Group of Companies in an extremely large number of diverse forms of business activity. It is noteworthy, too, that the Complainant has well and old established trademark rights, not only in India but also in other countries. Apart from this, the Complainant has applied for the registration of its trademarks in almost thirty countries.
The Complainant submits that the adoption of the well-known and distinctive name by the Respondent has been done with the sole intention of passing off its erotic and pornographic services to users of the Internet. Whether or not this was the sole intention of the Respondent is immaterial since, on the evidence, this, at the very least, was the principal aim.
Of greater importance is the submission that the Respondent has used the well-known mark TATA and/or TATAS in an unauthorized manner to further its business activities. Such use was made on the Respondent’s Home Page and Website, bearing the Domain Name, as a meta tag in the source code of the Respondent’s Home Page and Website, as a hyper link on another Website and as a domain name (see: Complaint – Annexure G).
The Complainant contended that the use by the Respondent of the impugned Domain Name is aimed at taking a ‘cash-ride’ on the Complainant’s image and status. Thus, the unauthorized adoption of the Domain Name has resulted in the Respondent deriving, or attempting to derive, monetary benefit by trading on the reputation and goodwill held by the Complainant. The Panel accepts this contention, which is well supported by the evidence shown in the Annexures to the Complaint. In the light of all the aforementioned submissions, supporting evidence and all the circumstances of the issue, it is the Complainant’s contention that the Respondent has no right or legitimate interests in respect to the Domain Name.
c) Is There Bad Faith on the Part of the Respondent in the use of the Registered Domain Name?
In the present case the Respondent has registered the Domain Name www.bodacious-tatas.com. This, on the Complainant’s submission, amounted to misappropriation of the registered TM TATA, on which the Complainant has exclusive rights. Since the Respondent’s registered Domain Name incorporates the trademark of which the Complainant is the legal proprietor, the existence of the impugned Domain Name, it is argued, is causing irreparable loss to the goodwill and reputation acquired by the trademark in question.
In fact, the Complainant, in its words, visited the Respondent’s website, bearing the foregoing web address, and found that the site contained pornographic material. Further, it was discovered that when the Respondent’s Domain Name is entered in a web browser, the Internet user is taken to the Home Page of the Respondent, which contains sexually explicit material. The Preview Page shows the web addresses of no less than eight pornographic websites.
The principal contentions of the Complainant relating to the Respondent’s bad faith, as set out in the Complaint, have been referred to in Paragraph 5A a, b and c. The Panel, after perusing all the relevant material, agrees with the general tenor of the Complainant’s submissions in the present context. It is felt to be unnecessary, therefore, for further reference to be made by the Panel to the foregoing matters. There are, however, several points, which serve to clarify matters within the framework of good faith. To these the Panel will devote the last part of this Decision.
It is the view of the Panel that the evidence submitted by the Complainant supports the following: -
(i) That the Respondent has unlawfully arranged the search results produced by Internet Search Engines, by placing the Complainant’s TM TATA, in the meta-tags of its Domain Name address. Thus, when an Internet user carries out a search for the Complainant’s TM TATA at any of the Internet Search Engines, the result would include the Respondent’s unauthorized website along with the genuine websites of the Complainant. Such a manipulation induces a potential customer or client into believing that the Respondent's site, containing pornographic material, has been licensed or authorized by the Complainant or, possibly, that it is owned by the Complainant.
(ii) Owing to the tremendous reach of the Internet Electronic Medium and to the vast number of Internet users (some 150,000,000 throughout the world), the provision of the Respondent’s activities and services under the Complainant’s TM TATA could easily be passed off as a connection between the respective business activities of the Complainant and the Respondent.
(iii) The Panel is aware that the Respondent’s registration of the impugned Domain Name includes the TM TATA (even if the Respondent spells it TATAS). The Complainant is the lawful proprietor of the foregoing mark, and its registration by the Respondent as a Domain Name is obviously aimed at diverting Internet users to log on to the Respondent’s site in the erroneous belief that the site in question is owned by the Complainant.
(iv) It seems clear, therefore, from the evidence that the Respondent is portraying its explicitly sexual and pornographic material as emanating from the Complainant. This act not only gives the impression that the Complainant has entered into business activities in the area of sexuality and pornography but, in the case, here, of a well-known reputable mark, tarnishes the image, reputation and goodwill of the Complainant and its trademark.
(v) On account of the Complainant’s foregoing status the provision of sexually explicit and pornographic material on the website under the name of TATAS is likely to cause bewilderment, if not astonishment, on the part of customers of the Complainant. Many of them would be unable to come to terms with a situation whereby a company, having philanthropic concerns for its clients, would be prepared to lend its name and well-known mark to pornography - something which is so contrary to Indian values.
(vi) Customers of the Complainant might be led to believe that the Complainant, in collaboration with the Respondent, had invested in the business of providing pornographic material on the Internet or had licensed its trademark to the Respondent for this purpose. At the very least, clients would think that the Complainant had given its blessing to the pornographic business of the Respondent.
It is the view of the Panel that the situation described above demonstrates bad faith on the part of the Respondent.
The Panel affirms that the unauthorized use by the Respondent of the well-known trademark of the Complainant in relation to totally dissimilar and improper services, is bound to affect adversely the value and selling power of the Complainant regarding his legitimate, distinctive and high quality goods and services.
The Complainant wishes to rely on the Administrative Panel Decision D2000-0102 of April 18, 2000 – Nokia Corporation v. Nokiagirls.com a.k.a IBCC (see: Complaint – Annexure I). There the Panelist, Mr. Geert Glas, stated as follows:
However, the menu classifying women by country and continent which is featured prominently on Respondent’s website, can create the impression with the average visitor that the content of the website is adult oriented. In the opinion of the Administrative Panel this constitutes an aggravating element in the assessment of the bad faith with which the Domain Name is being used by the Respondent.
The Panel entirely agrees with the Complainant that, in this issue also, the Respondent’s conduct amounts to an aggravating element in the assessment of bad faith. The Panel would add additional aggravating circumstances such as the reasonable assumption that the repute and goodwill of the Complainant, the high quality of its goods and services and its standing must have been known to the Respondent since it was on these and other qualitative elements that he built the outspoken sexuality, promiscuity and pornography under the heading of "bodacious-tatas".
Paragraph 15(a) of the Uniform Rules lays down that a "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the (Uniform) Policy, the[se] (Uniform) Rules and any rules and principles of law that it deems applicable".
For all the foregoing reasons, and after careful consideration of the submissions and evidence, the Panel decides that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has exclusive rights, and that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith. Pursuant to Paragraph 4(i) of the Uniform Policy, therefore, the Panel directs that the registration of the Domain Name be cancelled forthwith.
Dated: August 18, 2000