tatatea.net

WIPO Arbitration and Mediation Center

The Complainant is Tata Tea Limited, a Company incorporated under the Indian Companies Act, 1956 and having its registered office at 1, Bishop Lefroy Road, Calcutta 700 020, India.

The Respondent is Aniruddha Roy of 244 Seth Bagan Road, Calcutta - 700 030, West Bengal, India.

The dispute concerns the domain name <tatatea.net> (the said Domain Name) registered with BulkRegister.com,Inc (the Registrar) of 7 East Redwood Street, Third Floor, Baltimore, MD 21202, USA.

On December 27, 2000, the Complainant submitted a complaint in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with 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). On January 9, 2001, the Centre acknowledged receipt of the said complaint. On February 2, 2001, the Complainant submitted the complaint electronically to the Center.

On January 10, 2001, the Center sent a Request for Registrar Verification to the Registrar. On the same day, the Registrar, confirmed by e-mail to the Center that it was the Registrar of the said Domain Name and that the registrant of the said Domain Name was the Respondent.

On January 12, 2001, the Center sent a Complaint Deficiency Notification (the Deficiency Notification) to the Complainant, notifying the Complainant of the formal deficiencies in the complaint namely, that the complaint was not submitted in electronic format as required by Paragraph 3 (b) of the Rules; that the complaint did not indicate whether the Complainant elected to have the dispute decided by a single-member or a three-member Panel as required by Paragraph 3 (b) (iv) of the Rules; that the complaint did not identify the registrar with which the said Domain Name was allegedly registered at the time the complaint was filed as required by Paragraph 3 (b) (vii) of the Rules; that the complaint did not describe the grounds on which it was made, as required by paragraph 3 (b) (ix) of the Rules and that the complaint did not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which should be expressly identified, as required by paragraph 3 (b) (xiii) of the Rules (the deficiencies). The Deficiency Notification required the Complainant to cure the deficiencies within five (5) calendar days.

On January 15, 2001, the Respondent sent a response via e-mail to the Center and extended a copy to the Complainant. On January 17, 2001 the Center informed the Respondent that he should not send a response before receipt of the Notification of Complaint and Commencement of Administrative Proceedings and that the Center has had already sent a Complaint Deficiency Notification to the Complainant to enable him to submit an amended complaint.

On February 14, 2001, the Respondent sent an e-mail to the Center requesting the Center to regard his e-mail as an unofficial letter and extended a copy of his e-mail to the Complainant.

On March 7, 2001, the Complainant submitted the amended complaint in hardcopy to the Center. On March 14, 2001, he submitted the amended complaint electronically to the Center.

On March 15, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile and e-mail to the Respondent and the same was copied electronically to the Complainant. It also extended copies of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The Notification set the formal date of the commencement of the administrative proceeding as March 15, 2001 and required the Respondent to submit a response to the Complainant and the Center within twenty (20) calendar days from the date of receipt of the Notification, i.e, by April 3, 2001, failing which the Respondent would be considered to be in default.

On April 4, 2001, the Center sent the Notification of Respondent Default to the Respondent and copied it to the Complainant via e-mail.

On April 20, 2001, the Center appointed Mr. Hariram Jayaram to be the panelist (the Panel) after receiving the Statement of Acceptance and Declaration of Impartiality and Independence from him on April 19, 2001.

On April 20, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the Center sent a Transmission of Case File to the Panel.

The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will issue its decision based on the statements and documents submitted in accordance with the Policy, the Rules, the Supplemental Rules and any principles of law that the Panel deems to be applicable.

The Complainant states that it was formed in 1962 as Tata Finlay Limited and it changed its name to Tata Tea Limited in 1983.

TATA TEA is a trademark of the Complainant. At the Trade Marks Registry, India, the Complainant registered the trademark TATA TEA in class 30 in respect of tea for sale in India and export.

The Complainant is engaged in the business of cultivating, producing, manufacturing, processing, blending and marketing tea, coffee and other allied products. It also acts as an agent of various foreign insurance companies. The Complainant has used the trademark TATA for all its business activities, since its inception. The name TATA TEA indicates that the Complainant is part of the House of Tatas, the largest business house in India.

In his e-mail dated February 14, 2001, the Respondent says he is a 17 year old boy currently preparing for his 12^th standard examination. He is a web designer and he registered the said Domain Name for a customer, "Theosophical And Thiestic Anchronistic Teens Effusion Association" (TATATEA).

The Complainant says that the Respondent has adopted the well known and distinctive name, TATA TEA with the ulterior intention of furthering its business activities in an unauthorised manner. This unauthorised use of the Complainant’s well known trademark in relation to the services and/or products of the Respondent is bound to affect the goodwill, image and reputation of the House of Tatas and will also adversely affect the borrowing and selling power of the Complainant. The Respondent’s intention is to derive illegal benefit by misappropriating the trademark belonging to the Complainant in order to pass off its products and services as and for those of the Complainant. The Respondent is not an organization permitted or owned by the House of Tatas. By registering the said Domain Name, the Respondent has passed off its business as that of the House of Tatas and the Complainant. Famous and well-known trademarks especially those that have an aura of pre-eminent excellence and quality, such as the Complainant’s trademark, are generally given broad protection. In the past, the House of Tatas has successfully restrained several other parties from using the trademark TATA in relation to totally different and unrelated goods and services by filing suits against such parties. In support of its contentions, the Complainant refers to two recent administrative panel decisions of the WIPO Arbitration and Mediation Center i.e., Tata Sons Ltd. v. The Advanced Information Technology Association WIPO Case No. D2000-0049 (April 4, 2000) and Tata Sons Limited v. D & V Enterprises WIPO Case No. D2000-0479 (August 18, 2000). The cases were filed by Tata Sons Limited, the Group Holding Company and involved the disputed domain names "tata.org" and "bodacious-tatas.com" respectively. The decisions were both in favour of the complainant.

The Respondent states that he did not register the said Domain Name in bad faith. If he had any such intention, he would have registered <tatatea.com> instead of the said Domain Name. The Respondent gathered information from the Internet and concluded that the extension "dot org" specifies an organisation, "dot edu" specifies an educational institution, "dot net" specifies a network or association and "dot com" specifies a commercial establishment. The Respondent does not have the intention of using the said Domain Name for commercial purposes. The Complainant’s registered trademark TATA TEA has a space between the words TATA and TEA. Todate, it does not have TATATEA as a trademark. The Respondent denies that he has an ulterior intention of furthering his business activities in an unauthorised manner. He has no intention of damaging the image of the Complainant’s mark. The Respondent does not host any webpage under the said Domain Name. He registered the said Domain Name only for the purpose of putting up a homepage for a teens’ association, "Theosophical And Thiestic Anchronistic Teens Effusion Association" (TATATEA). The Respondent admits that the said Domain Name can be confused with the Complainant’s trademark but he has no intention to create any confusion.

It may be noted that the Center sent the Deficiency Notification to the Complainant on January 12, 2001, to point out the deficiencies in its complaint, pursuant to paragraph 4 (b) of the Rules which provides as follows:

" If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant."

Although the Deficiency Notification specified the time limit of five (5) days, the Complainant only submitted to the Center the amended complaint in hardcopy on

March 7, 2001 and in electronic format on March 14, 2001.

It is open to the Panel to deem the administrative proceeding as withdrawn, upon a strict interpretation of paragraph 4 (b) of the Rules, in view of the Complainant’s failure to submit its amended complaint to the Center within the stipulated time frame but the Panel notes the following statements which set out the general principle of law to be applied by the courts and which should be adopted by the Panel in the administrative proceeding:

- "It is a well established principle that the object of the Court is to decide the rights of the parties, and not to punish them for mistakes they make in the conduct of their cases by deciding otherwise than in accordance with their rights…I know of no kind of error or mistake which, if not fraudulent or intended to overreach, the Court ought not to correct, if it can be done without injustice to the other party." (Cropper v. Smith [1884] 26 Ch. D. 710, 711).

- "However… late the proposed amendment, the amendment should be allowed if it can be made without injustice to the other side." (Clarapede & Co., v. Commercial Union Association [1883] 32 W.R. 262, CA.).

The Panel agrees with the Center’s decision to accept the amended complaint although filed out of time.

Prior to the receipt of the Notification, the Respondent had filed his response dated

January 15, 2001. The Center was correct in pointing out to the Respondent that his response should be submitted only after the Center had served the Notification on him. By his e-mail dated February 14, 2001, the Respondent agreed that he was not responding to the complaint the way he should. Nevertheless, he set out his reasons for registering the said Domain Name. When he was given the Notification by the Center on March 15, 2001, the Respondent chose to remain silent.

His conduct, amounts to a default and the Panel under paragraph 14 (b) of the Rules is entitled to :

"draw such inferences…as it considers appropriate."

However before arriving at a decision, the Panel must evaluate all the claims of the Complainant to ascertain whether a case has been made out against the Respondent for the cancellation of the said Domain Name or its transfer to the Complainant. The Panel will take note that the Respondent has made several allegations in his favour in the correspondence with the Center, prior to the receipt of the Notification. It will attempt to ascertain whether there are any merits in the Respondent’s contentions, when making the evaluation.

Paragraph 4(a) of the Policy envisages that to succeed, the Complainant must establish that:

(i) the said Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the said Domain Name and

(iii) the said Domain Name has been registered and is being used in bad faith.

The Complainant must prove that all the aforesaid three elements are present.

In its amended complaint, the Complainant sets out some basic facts. In support of its case, it also refers to Tata Sons Ltd.v. The Advanced Information Technology Association WIPO Case No. D2000-0049 (April 4, 2000) and Tata Sons Limited v. D & V Enterprises WIPO Case No. D2000-0479 (August 18, 2000), which are decisions involving the trademark TATA. It is proper practice for the Panel to take note of the previous decisions and accord them the respect they deserve by adhering to the principles of law enunciated in them but it is not the task of the Panel to look for facts in the said decisions for the purpose of reaching a conclusion in this administrative proceeding. If the facts stated in the cited decisions were relevant for this administrative proceeding, the Complainant should have set them out with sufficient clarity in the amended complaint even if it necessitated some element of repetition. The Complainant has not done so. The Panel observes that the amended complaint could have been better drafted to include all the relevant facts which were submitted for consideration to the panels in the previous cases. The Panel will refer to the facts as they appear in the amended complaint and pay no regard to those additional facts on TATA which are to be found in the previous cases.

In the amended complaint, the Complainant claims rights to the words TATA and TATA TEA. It has registered the trademark TATA TEA in India in class 30 as of

November 28, 1988. The Panel finds that the Complainant has produced the certificate of registration to support its claim to the words TATA TEA but it has not produced the certificate of renewal for the said trademark. The Panel is unable to conclude whether the registration continues to subsist. However, the Complainant has been using the word TATA for all its business activities since 1962 when it was formed as Tata Finlay Limited. In 1983, the Complainant changed its name to Tata Tea Limited and the words TATA TEA continue to be in use since then. TATA and TATA TEA may be regarded as common law trademarks.

The Panel has compared the said Domain Name with the Complainant’s common law trademarks TATA and TATA TEA and finds that the second level domain in the said Domain Name, i.e. TATATEA, is identical to the Complainant’s common law trademarks.

While admitting that the said Domain Name may be confused with the Complainant’s trademark TATA TEA, the Respondent argues that the Complainant’s trademark consists of two words, TATA and TEA, separated by a space, while the said Domain Name, TATATEA is a single word; as a result, they are different.

The answer to this is to be found in Tokalon v. Davidson 32 RPC 133 at 136 where Lord Johnston has said:

"We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection…".

The Panel concludes that in comparing a domain name with a trademark, the words concerned should not be subjected to meticulous scrutiny and thus considers that this criterion is met.

The Respondent claims to have registered the said Domain Name to create a homepage for a teens’ association known as "Theosophical And Thiestic Anchronistic Teens Effusion Association" and the acronym of this association is TATATEA. He had no commercial purpose in mind; that is why he did not opt for "dot com" as the top level domain. He has given no other particulars about this association. It is difficult for the Panel to conclude from this bare allegation that such an association exists or existed at the material time and that this was the real purpose of the Respondent.

Hence, the Respondent has not demostrated any rights or legitimate interest in the the said Domain Name.(paragraph 4cof the Policy)

The Complainant alleges inter alia that the Respondent has the ulterior intention of furthering his business activities in an unauthorised manner by adopting the said Domain Name and his intention is to derive an illegal benefit since by misappropriating the Complainant’s trademark, he is passing off his business as that of the Complainant. It is unwise for the Panel to conclude that the registration of the said Domain Name was effected with such intentions since the Respondent has alleged that his interests in noncommercial activities and proof of such interest is to be found in his selection of "dot net" as the top level domain as opposed to "dot com". However, the Respondent ought to have known and in fact does admit that the adoption of TATA TEA as an integral part of the said Domain Name, would give rise to confusion. Surfers of the Internet may be led to believe that the said Domain Name relates to the activities of the Complainant, when in fact it does not.

The Panel finds that the Complainant has proved each of the three elements of Paragraph 4(a) of the Policy. It requires that the said Domain Name be transferred to the Complainant.

Hariram Jayaram
Sole Panelist

Dated: May 3, 2001