tatateamarine.com

WIPO Arbitration and Mediation Center

The Complainant is Tata Tea Ltd., 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 Antiquarium Ltd.of P.O. Box 302, Convent Station, NJ 07961-0302, U.S.A.

The dispute concerns the domain name <tatateamarine.com> (the said Domain Name) registered with Network Solutions, Inc. (the Registrar) of 505 Huntmar Park Drive, Herndon, VA-20170-5142, U.S.A.

3. Procedural History

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 Center 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 January 11, 2001, 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 March 7, 2001, the Complainant submitted the amended complaint in hardcopy to the Center. On March 14, 2001, the Complainant 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 amended complaint and in accordance with the Policy, the Rules, the Supplemental Rules and any principles of law that the Panel deems to be applicable, without the benefit of having received a response from the Respondent.

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 Marine Agency is a division of the Complainant and is engaged in the business of survey and claims settlement on behalf of foreign insurance companies.

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 is well-known in the international market and the lawful proprietor is the House of Tatas of India. The name TATA TEA indicates that the Complainant is part of the House of Tatas, the largest business house in India.

As to the Respondent, the only information available to the Complainant is that found at the InterNIC whois database. The Complainant is not aware of any other details as regards the legal status, place of incorporation or principal place of business of the Respondent.

The Complainant says that the Respondent has adopted the well-known and distinctive name, TATA TEA MARINE with the ulterior intention of furthering its business activities in an unauthorised manner and further contends that the Respondent has no business to use in an unauthorised manner the name TATA as part of the said Domain Name. 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 organisation 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 trademarks, 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 Centre 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 has not filed a response.

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.

Paragraph 5 (a) of the Rules requires the Respondent to submit its response to the Center within twenty (20) days of the commencement of the administrative proceeding.

By paragraph 5 (b)(i) of the Rules, it is expected of the Respondent to:

"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

By the Notification, the Center informed the Respondent that the last date for sending its response was April 3, 2001. The Respondent has failed to submit its response. In view of the default it is open to the Panel, under paragraph (14)(b) of the Rules to:

"draw such inferences…as it considers appropriate."

The inferences include the right of the Panel to conclude as stated in Ogaan India Private Limited v. Mehboob Alam WIPO Case No. D2000-0720:

"that the Respondent has no evidence to rebut the assertion of the Complainant."

However before arriving at a decision, due heed must be paid to what was said in Charles Jourdan Holding AGv. AAIM WIPO Case No. D2000-0403. In that administrative proceeding, it was the panel’s view that

"in the absence of a response to the Complainant’s allegations by the Respondent, the Panel must evaluate those claims in the light of the unchallenged evidence submitted by the Complainant."

It is therefore obligatory on the part of the Panel to ascertain, despite the absence of the response, whether the Complainant has successfully made out a case against the Respondent for the cancellation of the said Domain Name or its transfer to the Complainant.

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 confine itself to the facts as they appear in the amended complaint, base its decision on them alone and pay no regard to those additional facts on TATA which appear 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 Complainant claims to have a division known as Tata Marine Agency which is in the business of survey and claims settlement on behalf of foreign insurance companies. This allegation remains unchallenged by the Respondent who has opted not to file its response. The documentary evidence produced by the Complainant indicates the appointment of Tata Marine Agency as agent by the Institute of London Underwriters U.K. on February 2, 1995 and by the Corporation of Lloyds U.K. on April 16, 1996. TATA MARINE may also constitute a common law trademark besides the words TATA and TATA TEA.

The Panel has compared the said Domain Name with the Complainant’s common law trademarks TATA, TATA TEA and TATA MARINE and finds that the second level domain in the said Domain Name, TATATEAMARINE is confusingly similar to the Complainant’s common law trademarks.

If the Respondent had filed its response, it would have demonstrated, under paragraph 4 (c) of the Policy, its rights and interests in the said Domain Name by showing:

(i) its use of, or demonstrable preparation to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services before any notice to it of the dispute;

(ii) as an individual, business, or other organization it was commonly known by the said Domain Name, even though it had not acquired trade mark or service mark rights or

(iii) it was making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.

From the documents in the hands of the Panel, on the part of the Respondent, there is no evidence of use or demonstrable preparation to use the said Domain Name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the names TATA, TATA TEA or TATATEAMARINE and these words do not even form a part of the Respondent’s legal name. There is no evidence to suggest any legitimate noncommercial or fair use of the said Domain Name by the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use the words TATA, TATA TEA or TATA TEA MARINE.

The Complainant alleges inter alia that the Respondent has the ulterior intention of furthering its business activities in an unauthorised manner by adopting the said Domain Name and its intention is to derive an illegal benefit since by misappropriating the Complainant’s trademarks, it is passing off its business as that of the Complainant. In the absence of evidence relating to the activity of the Respondent, it is difficult for the Panel to conclude that the registration of the said Domain Name was effected with such intentions. However, the Respondent is not an entity authorised by the Complainant to use its trademarks TATA, TATA TEA and TATA MARINE. It is reasonable to conclude that the unauthorised adoption of the said trademarks as a domain name would cause confusion to the surfers of the Internet and may well lead them to believe that the said Domain Name relates to the business activities of the Complainant, its division or a person licensed by 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