The Complainant is Tata Motors Limited of Mumbai, Maharashtra, India, represented by DePenning & DePenning, India.
The Respondent is Liming Yao of Shanghai, China, self-represented.
The disputed domain name <tatamotor.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2017. On September 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. In addition to two email communications received from the Respondent on September 29 and 30, 2017, the Response was filed with the Center on October 17, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on November 1, 2017. 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, an Indian company, started out in 1954 manufacturing commercial vehicles in collaboration with Daimler Benz of Germany. It has since expanded its operations internationally through subsidiaries and associated companies and now has operations in the United Kingdom of Great Britain and Northern Ireland, the Republic of Korea, Thailand, Spain and South Africa. It’s commercial and passenger vehicles are being marketed in several countries in Europe, Africa, the Middle East, Asia, and South America. The Complainant belongs to the Tata Group of companies comprising 100 operating companies in seven business sectors. The total revenue of Tata companies was USD 109 billion in 2015-16. The group employs over 450,000 people worldwide. “Tata” which is part of the corporate name of the Group was derived from the surname of the company’s founder, Jamshedji Tata. “Tata motors” which is the corporate name of the Complainant is also its distinctive trading style. Because of its extensive use of these marks in connection with its extensive business activities, the public recognize Tata and Tata Motors as the distinctive brands of the Complainant.
TATA and TATAMOTORS are also registered as trade marks. The trade mark registrations relied on by the Complainant are as follows:
India Trade Mark Registration No 299110 in Class 12 for TATA, registered on September 10, 1974; and
India Trade Mark Registration No 1241123 in Class 12 for TATAMOTORS on 3 October 2003 (the “Trade Marks”).
The Panel conducted a search of the Indian Intellectual Property office to ascertain that the above trade mark registrations were valid and subsisting as only a copy of the journal in which the marks were advertised were submitted in evidence.
The Complainant has a portfolio of domain names and its official website is found at “www.tatamotors.com”. The Complainant alleges that it had registered the Domain Name on July 24, 2003 and renewed the same until July 2017 when it inadvertently failed to pay the renewal fee. It appears that the Respondent registered the Domain Name on September 1, 2017. No evidence was submitted to substantiate this. The WhoIs results do however indicate that the Domain Name registration details were updated on September 1, 2017.
On 29 and 30 September 2017, the Respondent emailed the Center saying that he is Chinese and that Chinese should be the language of the proceeding. The Center had not asked for his preference in view of the fact that the registration agreement in this case is English and therefore the language of proceeding should be English.
The Domain Name was connected to a Sedo marketplace website offering the Domain Name for sale for USD 22,000 (“the Website”). The Website is now a pay-per-click site.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests the transfer of the Domain Name.
The Respondent did not file a formal response but on October 17, 2017, he emailed the Center with an informal response with the following contentions:
He is from China and had not heard of the Complainant before. He never attempted to sell the Domain Name to the Complainant. His offer for sale of the Domain Name through Sedo was targeted towards third parties who use the word “tata”. In Chinese, he claims that the “tata” is the transliteration of the combination of “he and she” (他和她). There are many Chinese websites which uses “tata” in this manner including:
1. www.tatamatch.com
2. www.tatalv.com
3. www.lytata.com
4. tata.tmall.com
5. www.tatafan.com
6. 91tata.com
7. www.tatashoes.com.cn
8. www.tata.com.cn
9. www.tataufo.com
10. tatamumen.tmall.com
11. www.tatait.com
12. www.tata.gov.cn
13. www.tata.com.tw
14. www.tata.org.tw
15. www.ontata.com
As such his acquisition of the Domain Name was reasonable and legal. He also invites the Complainant to file complainants against the above domain names.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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
(iii) The Domain Name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established that it has (registered) rights to the Trade Marks.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to Complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Complainant’s trade mark TATAMOTORS almost in its entirety except that it is missing an “s” at the end and therefore the word “motor” is in the singular rather than in the plural as in the trade mark TATAMOTORS. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Respondent has not provided any grounds upon which he has rights or legitimate interests in the Domain Name. He is certainly not commonly known by the domain name nor is he making a legitimate noncommercial or fair use of the Domain Name. The Respondent’s case appears to be that the acquisition of the Domain Name was for sale to parties who use the word “tata” to mean “he and she” in Chinese or any party that uses “tata” except for the Complainant since he has not heard of them.
None of the above gives rise to rights or legitimate interests to the Domain Name, quite the contrary in fact.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and is being used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name. Any Internet search for “tata”, “tatamotor”, or “tatamotors” lists the Complainant, its group of companies and products and services in the first few pages of such search. In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
Further, the Respondent provided a list of websites of third parties with interests in the word “tata” to which he was targeting his sale of the Domain Name. It is inconceivable that in doing this due diligence that he failed to come across the dominant entity which uses the name “tata” and “tatamotors” or that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name, which is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0) in relation to bad faith use. The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith
The Panel also concludes that the actual use of the Domain Names was also in bad faith. Even if the Respondent’s creative explanation that he was targeting parties who use or may use “tata” to mean “he and she” is to believed, the combination of “he and she” motor does not make any sense whatsoever. The Domain Name was registered first for sale and then after the Complaint was filed as a parking page with pay-per-click links. These links have car related names like “Car Dealership for Sale”, “Sell a Classic Car” and references to the Complainant, “Tata Motors Car” and “Tata Indica Car”.
The above amount to bad faith use under the Policy. The therefore concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tatamotor.com>, be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 17, 2017