The Complainant is Tata Motors Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is Vijay jain of Mumbai, Maharashtra, India / Perfect Privacy LLC, Perfect Privacy LLC of Jacksonville, Florida United States of America.
The disputed domain name <indicaev2.com> is registered with Namesalacarte.com LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2015. On January 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 3, 2015.
The Center received several unclear email communications from the Respondent that appeared to suggest settlement. However, the Complainant opted against settlement and requested to proceed with the administrative proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2015. The Respondent did not file a formal Response. Accordingly, on March 5, 2015, the Center, pursuant to Paragraph 6 of the Rules, notified to the Parties that it would proceed to Panel Appointment.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 8, 2015. 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.
The Complainant is a leading motor vehicles company in India that is part of the TATA Group of companies. In 1998 the Complainant developed a passenger car sold under the trademark INDICA and later introduced a second version called INDICA V2. The Complainant has registered rights in the INDICA trademark and its variants. Details of its registered trademarks are:
|
TRADEMARK |
CLASS |
TRADEMARK REGISTRATION NUMBER |
|
INDICA |
12 |
811715 |
|
INDICA V2 |
12 |
997828 |
|
INDICA V3 |
12 |
1146230 |
|
INDICA V4 |
12 |
1146231 |
|
INDICA V5 |
12 |
1146232 |
The disputed domain name <indicaev2.com> was registered on May 12, 2014
The Complainant states it was formerly known as Tata Engineering and Locomotive Company and began manufacturing commercial vehicles in 1954 in collaboration with Daimler Benz of Germany. The Complainant developed "Tata Ace", a light commercial vehicle, the "Prima" range of trucks and the "Ultra" range of international light commercial vehicles. The Complainant has operations in United Kingdom of Great Britain and Northern Ireland ("UK"), Republic of Korea, Thailand, Spain and South Africa through subsidiaries or associate companies. The Complainant states it has been exporting vehicles since 1961 and its passenger vehicles are being marketed in several countries in Europe, Africa the Middle East, South Asia South East Asia and South America. It has franchisee or joint venture assembly operation in Bangladesh, Ukraine and Senegal. The Complainant states it has over four thousand engineers, technicians and scientists at R&D Centers in India, Republic of Korea, Spain and UK. The Complainant alleges its revenu for the year 2011 - 2012 was about USD 32.5 billion and it is among the top five commercial vehicle manufacturers of the world, a market leader in India's commercial vehicles and passenger vehicles and it is the world's fourth largest truck and bus manufacturer.
The Complainant alleges that its ingeniously developed car INDICA is extensively promoted through print and electronic media and also through participation in fairs and exhibitions. It has filed as evidence, advertisements and promotional material pertaining to the trademark INDICA. The Complainant states INDICA has gained popularity over the years and has become a valuable asset to the Complainant. As evidence of its immense reputation in the mark, the Complainant has given details of awards received by INDICA and states an Internet search for INDICA would reflect the Complainant's association with the mark, its extensive reputation and commercial visibility.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and has wrongfully adopted a variant of its well-known trademark to create an impression of association with the Complainant. The Complainant further argues the Respondent ought to have known of the Complainant's mark that has been used in entirety in the disputed domain name. Such use would give an impression that the Complainant has authorized the use of its mark. The Complainant asserts that it has not permitted use of its mark by the Respondent and has no connection with the Respondent. The Complainant owns several domain names with the INDICA mark and has provided a list of the domain names.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent. The Complainant further argues the Respondent's intent is to deceive the public by using the INDICA trademark and seeks to encash on the fame and reputation of the Complainant and the Tata Group of Companies. The disputed domain name is so obviously connected with the Complainant, that the very use by someone not connected with the Complainant suggests opportunistic bad faith. The Respondent has shown no evidence of contemplated good faith use of the disputed domain name and it is not possible to conceive of any good faith use of a domain name identical to the Complainant's well-known trademark. The disputed domain name displays links to Tata vehicles and such use would lead to dilution of its mark, damage its business and reputation. The Complainant therefore requests for the transfer of the disputed domain name.
The Respondent did not file any formal Response in the proceedings, but has sent several email communications to the Center. The Respondent's email communications to the Center are mainly extracted here verbatim:
Respondent's email of February 6, 2015
"I Already down this Domain I am Doing small Project for my Client the domain
was in sale that's i purchase from broker and also I didn't receive mail about first time
only received Complain. IF give me Direct email ID or Phone who person is complain.
Please give supportive support! Thank you"
Respondent's email of February 9, 2015:
"Please give me contact details of Complainer I am ready to this Domain in his Account"
Respondent's email of February 16, 2015:
"I demanding only What I purchase from broker. I didn't choose name then purchase.
Please uderstand I am small freelancer I get loss on it. Pleas make $20 what I purchase
and sent networksolutions Account number I will transfer ASAP."
Respondent's email of March 6, 2015:
"Hello
I already mail to complainer and also send reminder with add you in CC this domain is not
now my I down this domain you an check "
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4 (a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
The first requirement under paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of its registered trademarks for the trademarks INDICA V2 and INDICA. The Indian registered trademark number for the trademark INDICA V2 is 997828 in class 12 and the Indian registered trademark number for the trademark INDICA is 811715 in class 12. The Complainant has also provided details of the vast geographical area where its vehicles are being sold and evidence of promotions and advertisements of its mark. Based on the evidence filed by the Complainant, the Panel finds the Complainant has conclusively established its rights in the INDICA and INDICA V2 trademarks.
The disputed domain name contains the Complainant's trademark in its entirety. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. This proposition has been upheld in several prior cases (see for instance Eli Lilly and Company v. Private Whois Service, WIPO Case No. D2011-0624, citing the case Max Rohr, Inc v. Puros Dawa HB S.A, WIPO Case No. D2005-0488(a domain name that incorporates a complainant's mark in its entirety is confusingly similar to the mark). In the present case, the use of the INDICA trademark in its entirety in the disputed domain name is accordingly found to render the disputed domain name confusingly similar to the trademark.
Where the overall impression of a domain name is similar to the trademark, the addition of letter(s) does not significantly affect the finding of confusing similarity, see Info Edge (India) Limited v. Abs IT Solution, WIPO Case No. D2014-1688, where the addition of the letters "e" and "a" with the trademark NAUKRI in the domain name <naukarie.com> was found confusingly similar to the NAUKRI trademark. The Panel finds the disputed domain name is confusingly similar to the Complainant's trademark INDICA V2 since it closely resembles the trademark despite an additional letter "e", and also the overall impression of the disputed domain name is found to be confusingly similar to the trademark.
The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy that the disputed domain name is confusingly similar to a trademark in which it has rights.
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant's contentions and demonstrate any rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy has provided a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in a domain name. These are:
(i) Before any notice 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 it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial 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.
The Panel has carefully gone through the email submissions made by the Respondent and finds that the Respondent has not submitted any grounds or material that indicates that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent's email communications merely suggests settlement of the dispute and willingness to transfer the disputed domain name to the Complainant.
The Panel notes from the Complaint and the supporting documents filed as evidence by the Complainant, that the disputed domain name has been redirecting Internet users to a webpage displaying vehicles that are manufactured and sold by the Complainant. The Complainant's trademark INDICA has been adopted, used and promoted by the Complainant for a number of years prior to registration of the disputed domain name by the Respondent. Under such circumstances, it is unlikely that the Respondent was unaware of the Complainant's business and trademark.
The Respondent is not a licensee or an authorized user of the Complainant's trademarks and there is no indication that the Respondent is commonly known by the disputed domain name. There can be no honest legitimate use by the Respondent of the Complainant's trademark, since any such use would inevitably mislead the public to believe there is some affiliation with the Complainant. See Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314.
On the basis of these facts and circumstances, the Complainant is found to have successfully put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Based on the submissions made by the Respondent in the emails sent to the Center, it is stated that the Respondent desires to transfer the disputed domain name to the Complainant. The Panel is of the view, that the Respondent conceding to transfer the disputed domain name to the Complainant in the circumstances of the present case, is motivated by the Respondent's lack of rights or legitimate interests.
The Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy.
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed
domain name has been registered and is being used in bad faith.
The Complainant has put forward compelling and persuasive arguments to establish that the Respondent has registered the disputed domain name and has been using it in bad faith. In view of the nature and extent of the Complainant's business and the mark being wellknown in India, the use of the trademark or even a confusingly similar variant of the mark in the disputed domain name, would in the Panel's view be for capitalizing from the reputation associated with the mark or trying to obtain unfair gains on the basis of the Complainant's business reputation.
The disputed domain name is manifestly suggestive of the Complainant's trademark. It is unlikely that the Respondent, who resides in Mumbai, India, was unaware of the Complainant's business and trademark at the time of registration of the disputed domain name or had purchased the disputed domain name from a broker without being aware that the Complainant has rights in the INDICA trademark.
The Respondent is not using the disputed domain name in connection with any legitimate business. A clear indication that the Respondent has used the disputed domain name, with knowledge of the Complainant's prior rights in the trademark is the linking of the disputed domain name to a web page displaying Tata vehicles. The Panel finds that the circumstances described here clearly show that the Respondent has tried to attract Internet users to his website in order to obtain commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement by the Complainant, which is recognized as an illustration of bad faith registration and bad faith use under 4(b)(iv) of the Policy. On the basis of the submissions made by the parties and the given facts and circumstances discussed here, the Panel finds that the Respondent has registered the disputed domain name in bad faith and has been using the disputed domain name in bad faith.
The Panel finds the Complainant has successfully established the third element under paragraph 4 (a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <indicaev2.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: April 22, 2015