The Complainant is Tata Sons Ltd of Mumbai, India, represented by Anand & Anand, India.
The Respondent is mmt admin / Oktatabyebye.com of Gurgaon, India, represented by Lall & Sethi Advocates, India.
2. The Domain Name and Registrar
The disputed domain name <oktatabyebye.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2009. On May 14, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 14, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient and also on the basis of the registrar-confirmed registrant information as forwarded by the Center to the Complainant on May 26, 2009, the Complainant filed an amendment to the Complaint on May 29, 2009. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2009. The Response was filed with the Center on June 22, 2009.
The Center appointed Pavan Duggal as the sole panelist in this matter on July 1, 2009. 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.
On July 10, 2009, the Complainant made an unsolicited supplemental filing. On July 21, 2009, the Panel was pleased to pass the Administrative Panel Procedural Order No. 1 of even date, by means of which the Panel, without giving its findings on the admissibility of any supplemental filings at that stage, permitted the Respondent to file its sur-response. The Respondent filed its supplemental filing (hereinafter, the “Respondent's Supplemental Filing”) on July 30, 2009.
According with paragraph 10 of the Rules, the Panel required the extension of decision's deadline.
4. Factual Background
The Complainant is Tata Sons Limited which is a company duly incorporated under the Indian Companies Act, 1913 having its registered office at Bombay House, 24, Homi Mody Street, Mumbai – 400 001, India. Its principal place of business is Mumbai, India, although the Complainant does business in virtually every state within India and in several foreign countries as well.
The Complainant is the principal investment holding company of the TATA Group of companies, which is India's oldest, largest and best-known conglomerate, with a turnover that is over USD 62 Billion. Total turnover for 2007-08 is stated to be Rs.251,543 crores (USD 62.5 billion). Its genesis was in 1868 when Jamsetji Nusserwanji Tata set up a private trading firm with a capital of Rs. 21,000 (equivalent to USD 428, approximately as per current exchange rate). This sowed the seeds for one of India's most trusted business houses, which has, over the years, become a household name, synonymous with excellence in almost every field of business activity.
Since its inception, the Complainant has been continuously and consistently using the trademark TATA for its business activities. The enterprises promoted by the Complainant and the TATA Group have laid the foundation in the industrial core sectors, pioneering the textiles, iron & steel, power, chemicals hotels and automobile industries in India. Today, the TATA Group has a major presence in the field of automobiles, steel, power, chemicals, telecommunications, retailing, computer software, tea, financial services and mutual funds. The first TATA Enterprise was founded by Jamsetji Tata over 100 years ago with a textile mill in Central India. Over the years, TATA enterprises entered various fields of commercial activities. Most of these companies use TATA as the initial part of their trade name, like Tata Steel, Tata Power, Tata Communications, Tata Motors, Tata Chemicals, Tata Consultancy Services, etc. Thus TATA has become a house mark of the TATA Group and source indicator of the diverse goods and services that are provided by the Group.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name infringes the right of its registered trademark/service mark TATA.
The Complainant has based its contentions on the various grounds detailed in the Policy. It is averred that the disputed domain name <oktatabyebye.com> includes the word TATA, which is identical in part and confusingly similar as a whole to the well-known and registered trademark and service mark TATA in which the Complainant has a statutory right as well as rights in common law, by virtue of a long and continuous use and being its registered proprietor thereof.
Thus the Complainant submits that the scope of confusion in the minds of the relevant group of consumers by the Respondent's impugned website <oktatabyebye.com> is enhanced further due to the fact that it incorporates the Complainant's corporate name and registered trademark in full.
Furthermore, the use of the word TATA in the initial part of the domain name would be understood as a reference to the Complainant because it is a registered and well-known trademark.
It is further averred by the Complainant that since the disputed domain name comprises of the well-known and famous trademark TATA it is evident that the Respondent cannot have any rights or legitimate interests in the domain name. Further it is apparent that the sole purpose of registering the disputed domain name <oktatabyebye.com> is to misappropriate the reputation associated with the Complainant's well-known and famous trademark TATA.
Further the Respondent is not commonly known by the domain name <oktatabyebye.com> nor has he made any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. It is thus the Complainants contention that the Respondent has no rights or legitimate interest in the domain name as:
- The Respondent is not a licensee of the Complainant and neither has the Complainant granted any permission or consent to the Respondent to use the trademark TATA in any manner or to incorporate the same in a domain name.
- The Respondent is not commonly known by the disputed domain name <oktatabyebye.com>. In fact the Respondent is commonly known as MakeMyTrip. By the Respondent's own admission, the name of his business is MakeMyTrip and not “oktatabyebye” as is the case with the Complainant's business. The Complainant submits that the Respondent has already registered a separate domain name <makemytrip.com> that incorporates its company name in full. According to the Names View WhoIs Database this domain name has been registered since May 05, 2000.
- The Complainant submits that the fact that the Respondent already has an existing domain name completely resembling its own name and instead of using that domain name, it has registered a domain name which does not show any connection whatsoever with its initial registered domain name is prima facie proof of the Respondent's mala fide intentions to benefit from the Complainant's world famous mark and reputation.
It is further averred that the Respondent has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.
It is further averred that the domain name <oktatabyebye.com> registered by the Respondent incorporates as a whole the Complainant's well known and famous trademark TATA, which shows that the Respondent has registered and is using the said domain name in bad faith. The Complainant submits that it is open to the Respondent to register and cultivate a separate domain name which incorporates his company name in full thereby avoiding confusion with the Complainant's business. The Complainant submits that the fact that the Respondent has made no such efforts is prima facie proof of the Respondent's mala fide intentions to benefit from the Complainant's world famous mark and reputation.
The Complainant further contends that after having received the information about the alleged website of the Respondent, the Complainant made an earnest effort to settle the matter with the Respondent, via their letter dated July 3, 2008 to the representatives of the Respondent, requesting them to inter alia:
(i) Discontinue use of domain name of <oktatabyebye.com>;
(ii) Transfer the aforesaid domain name to the Complainant in accordance with the applicable procedures;
(iii) Refrain from all manner of use of the aforesaid domain name or any other mark, name, domain name, etc that is confusingly similar to the trademark of the Complainant.
Although the Respondent through its representative replied to the aforesaid letter by a letter dated July 11, 2008, it refused to accept the just demands of the Complainant by giving vague reasons.
The Complainant has further pointed out that the services being offered by the Respondent through the domain name <oktatabyebye.com> are similar to those being offered by its other domain name <makemytrip.com>.
It has been contended that this fact clearly illustrates the ill intention of the Respondent behind creation of the domain name <oktatabyebye.com> in order to infringe the intellectual property rights of the Complainant, in spite of the fact that it already has another domain name <makemytrip.com> and the same is providing similar services as that of the <oktatabyebye.com>.
The remedy requested by the Complainant is to get the disputed domain name transferred to it.
B. Respondent
The Respondent replied to the Complaint on the grounds that the usage of the word “tata” as a gesture finds its mention in the origin of a place called Ta Ta Creek as far back as in the year 1860. It is vehemently denied that the Respondent has no rights or legitimate interests in the disputed domain name. It is vehemently denied that the domain in question is confusingly similar to the trade mark TATA of the Complainant.
The Respondent has stated that the Respondent's primary website, “www.makemytrip.com” began as a great idea and has gone on to pioneer the online travel industry in India. <makemytrip.com> was launched in the year 2000 for the booming “USA to India” travel market. It empowered Non Resident Indians (NRIs) with unmatched convenience of a 24/7 online travel portal and travel consultancy support. It was niche and then the Respondent hit early success and then launched India operations in September, 2005 in real time bookings of flights, hotels, holidays in the United States. Since its inception, it has been growing at a fast pace to emerge as the foremost travel website in the United States to India market. MakeMyTrip.com commands a 4% share of this NRI market, which is pegged at Rs. 4500 crore (USD 1 billion). The Respondent also acquired 1 million customers in 2007. Thanks to <makemytrip.com>, over one million people have traveled with the 100% assurance that got the best deals possible.
It has been further averred that <oktatabyebye.com>, on the other hand, is India's first online travel community. This community is all about travel in India and the best place for travel enthusiasts to find and share experiences and travel advice on India. It enables travelers to capture and share travelogues, photos, features and recommendations with friends, family and members. Reviews and votes ensure that the information is always up-to-date, useful and remains transparent. It is averred by the Respondent that the services offered by both the sites are entirely different with no relation whatsoever. Both cater to separate class of persons. While <makemytrip.com> offers discounts and easy access to travel plans, <oktatabyebye.com>, launched in 2006, lets these travelers make an online records about their journey.
It is also stated that <oktatabyebye.com> lets travelers create personal travel blogs, or travel journals, with detailed route maps, embedded photos and recommendations, and allows them to easily share these with friends, family and others. Travel blogs, written by real travelers, are a proven source of trusted information for people researching and planning a trip. Travel shoppers can then easily find this travel information, including advice on hotels and restaurants, from like-minded travelers. Prominently featured on <oktatabyebye.com> are “hotel reviews” written by real travelers, “first person travelogues”, “travel photos”, and “videos”, “member contributed destination features and reviews written by travelers”, “event calendars” plus “travel related member queries & answers”.
The Respondent has stated that the impugned domain name is derived from the common parlance “OK Ta Ta Bye Bye” since it signifies travel, journey and related activities. The expression bidding farewell has been used by using the generic word “Ta Ta” in the same flow as “OK” and ending at “Bye Bye”. Therefore, the expression “Ta Ta” has been used not as a standalone mark but as a generic description of bidding farewell for this website offering people an opportunity to record their journey at length to make it memorable.
It is further averred that the word “Tata” in “Horn Please, OK, Tata”, the original order of the words, was written into the slogan to mean “farewell”. The sign was born when trucks first came onto the Indian highway, long before the Complainant began manufacturing lorries.
The Respondent has further stressed that the use of the domain and the services offered are, as what the title signifies, for building a mammoth travel community. Neither at any point of time or any link whatsoever of the Respondent's site, takes a user to a site of Complainant's competitor or any material which is infringing trade mark of the Complainant. In fact, all the trade marks or services referred by the Complainant have no conflict whatsoever with the services offered by the Respondent.
The Respondent further has contended that the use of the generic expression “Ta Ta” by the Respondent in the domain name <oktatabyebye.com> is not for any of the followings:
- Bad faith;
- Diverting business of the Complainant;
- Confusing the general public about the source of the Respondent's services; or
- Deriving illegal benefits from the domain.
It is further averred that “OK Ta Ta Bye Bye” and “Ta ta” together as a whole, do not find any similarity or resemblance in sound or in vision from the point of view of common subscriber to the website in question which can give rise to reasonable probability of causing confusion or deception in his mind while accessing the website in question which may lead him to think that he is using services of the Complainant. The Respondent has pressed for the dismissal of the complaint.
6. Discussion and Findings
Before dealing with the merits of the dispute, it is important to note that Rules 10(a) and (b) require that the proceedings be conducted in accordance with the Policy and Rules and that each party is given a fair opportunity to present its case.
Rule 12 permits the Panel in its sole discretion to request further statements or documents from either party.
The UDRP and Rules thereunder demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. The Panel believes that this is a wise procedure, given the nature of these proceedings. Although the Complainant may have been surprised by the breadth of the Respondent's response, the Panel does not find this to be an extraordinary circumstance.
The Panel has examined both the Supplemental Filings. In the facts and circumstances of the present case, the Panel is of the considered view that the Complainant's Supplemental Filing raises no new material issues that were not or could not have been presented in the Complaint, and introduces new material beyond the scope of the Response. The Respondent's Supplemental Filing is in reply to the Complainant's Supplemental Filing and is similarly of little use to the Panel.
Paragraph 15(a) of the Rules instructs that the “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant relies on its registered trademark TATA and alleges that TATA is a very strong trademark.
The disputed domain name is very similar to the trademark owned by the Complainant. The Panel is of the opinion that the usage of the generic words “OK” and “Bye Bye” in the domain name does not really take away the identically and confusingly similar nature of the domain name with the registered trademark of the Complainant.
The disputed domain name is confusingly similar to the Complainant's trademark as it wholly incorporates a Complainant's registered mark. As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096 (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off Road Equipment Parts, NAF Claim No. FA0095497 (“parts” added to mark CAT in <catparts.com>); Komatsu Ltd. v. RKWeb Ltd.,
WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in <komatsu-parts.com>).
There have been cases where the disputed domain name, consisting of a complainant's trademark and generic terms, has been considered as confusingly similar. For instance, see ERGO Versicherungsgruppe AG v. Idealist,
WIPO Case No. D2008-0377 where the panel held that “it is clear that the disputed domain name, consisting of the Complainant's trademark plus the generic word “finance” is confusingly similar to the Complainant's trademark”.
Further, it has been pointed out that the addition of the generic terms “store” and “fashion” were not sufficient to avoid confusion: L.L.C. v. Triple EAuto Parts d/b/a Kung Fu Yea Enters, Inc.,WIPO Case No. D2000-0047 and Chanel, Inc. v. Estco Group,
WIPO Case No. D2000-0413; See also: Parfums Christian Dior .v. Netpower,
WIPO Case No. D2000-0022 and Compagnie Generale Des Etablissements Michelin - Michelin & Cie. V. Graeme Foster,
WIPO Case No. D2004-0279.
Given that the disputed domain name incorporates the Complainant's TATA trademark, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the Policy.
Thus, the Complainant has demonstrated to the satisfaction of this Panel that the domain name is confusingly similar to a trademark in which it holds rights.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
The Panel is of the opinion that no evidence has been provided which would support a finding under paragraph 4(c)(i) and (ii) of the Policy, i.e., the Panel is of the opinion that the evidence of record does not show use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services nor does it show that the Respondent has commonly been known by the domain name. The Panel is also of the opinion that the circumstances do not warrant a finding of rights or legitimate interests under paragraph 4(c)(iii) of the Policy.
Once a complainant establishes a prima facie case that a respondent lacks rights in the domain name at issue, the respondent must come forward with proof that it has some rights or legitimate interests in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
Since the adoption and extensive use by the Complainant of the trademark TATA predates the first entry of <oktatabyebye.com> as domain name, and since the Complainant has made a prima facie case as to Respondent's rights of legitimate interests, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.
In this case, the Respondent has not conducted any prior business under the names “oktatabyebye” in connection with the bona fide offering of goods and services. It has also not used the domain name in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name as a business. It is not authorized by the Complainant to use its trademark. It is not making legitimate noncommercial or fair use of the domain name.
It is apparent that the Respondent registered the domain name <oktatabyebye.com> for the purpose of capitalizing on the Complainant's trademark TATA and profiting from the global goodwill that the Complainant has built up in its trademark.
These facts support a clear inference that the Respondent does not have rights or legitimate interests in the subject domain names and the Respondent has done nothing to rebut that inference. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,
WIPO Case No. D2003-0174.
Also, the Respondent is making commercial gain out of the disputed domain name by putting link of its site i.e. <makemytrip.com>. The Panel finds that the Respondent already has hosted the said site <makemytrip.com> for commercial gain and is using the domain name <oktatabyebye.com> for the purposes of fishing for new customers and then diverting them to its main website, being “www.makemytrip.com”. The said conduct of the Respondent itself shows that the Respondent has no legitimate rights or interests in the domain name in question and is merely using the same as “fishing net to catch new fish”.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Rules, for the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that [the respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent] has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] has engaged in a pattern of such conduct; or
(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on [the respondent's] website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Pursuant to paragraph 4(a)(iii) of the Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith.
From a perusal of the documentation on the record of the case, it is apparent that the Respondent appears to have registered and is using the domain name solely for commercial gain. Respondent derives a financial benefit from the web traffic that is diverted through the domain name <oktatabyebye.com>.
The undersigned panelist visited the website “www.oktatabyebye.com” on August 11, 2009. On the home page of the said website is the by-line “OkTataByebye.com: The Online Travel Community for travelers to find and share personal travel experiences, honest hotel reviews, holiday ideas and travel advice on India destinations and cities”.
It is pertinent to note that the said home page at the very centre prominent position has a section called “Featured Hotels”. In the said section, a number of hotels are featured along with their photographs and details. When one clicks at the said featured hotels, the visitor is transported to the website being http://hotels.makemytrip.co.in.
To examine the said phenomenon in greater detail, the undersigned panelist went on to examine further the said website “www.oktatabyebye.com”. Therein, on the home page, was featured the hotel “Udaipur, Udaipur, Devi Garh, Udaipur, 3 D / 2 N, Rs. 2999 /-, 5 star all-suite luxury property.” When clicked on the said featured hotel, the panelist was first taken to a progress page being “http://hotels.makemytrip.co.in/makemytrip/searchHotelProgress.do?method=searchHotels” and thereafter the panelist was taken to the URL being “http://hotels.makemytrip.co.in/makemytrip/searchHotels.do?residentOfIndia=Y&method=searchHotels.”
The said web page at the domain name <makemytrip.co.in> provided various commercial links for the recommended hotel and also gave the facility of booking the rooms for the same. A perusal of booking room links showed the links for making payments by means of Visa and MasterCard credit cards as also by American Express credit card. It also provided links to pay by debit card, pay by net banking and pay by cash card.
A perusal of the aforesaid website hosted at the domain name <oktatabyebye.com> clearly shows that the Respondent has utilized the domain name <oktatabyebye.com> intentionally to attract for commercial game, Internet users to its website being <makemytrip.co.in>. The said been done by creating likelihood of confusion with the complainant's mark. The purpose of utilizing the domain name <oktatabyebye.com> appears purely to funnel Internet traffic and thereby bring it to the website “www.makemytrip.com” for commercial gain.
Further, the Panel finds that the home page at the website “www.oktatabyebye.com” has a prominent advertisement banner for the website “www.makemytrip.com”, which when clicked, takes the netizen to the said website, which is the website set up by the Respondent for commercial gain.
This is itself evidence of registration and use of the domain name <oktatabyebye.com> in bad faith as per the requirements of paragraph 4(b)(iv) of the UDRP. There have been various cases whereby such a conduct has been found to be proof of the bad faith registration and use of domain names.
Some of the important decisions in this regard are as follows:-
In Nokia Corporation v. Nokiagirls.com a.k.a IBCC,
WIPO Case No. D2000-0102, the panel held that:
“It can reasonably be presumed that Respondent has entered into commercial agreements whereby he benefits financially from visitors to his site who “click” on the different banner adds. It can therefore be said that Respondent's current use of the Domain Name is aimed at creating traffic to his website which is predominantly used as an advertising space. The presence of the trademark NOKIA in the Domain Name is thereby a key factor in the financially driven attempt to draw internet users, some of which will be browsing for Complainant's website(s), to Respondent's website…In the opinion of the Administrative panel, Respondent is thereby taking a free ride on the goodwill of Complainant's NOKIA trademark.”
In Playboy Enterprises International, Inc. v. Tonya Flynt FoundationWIPO Case No. D2001-1002, the panel held that:
“As the Complainant has shown, the Respondent is using the disputed website to show commercial advertising that leads the public to other sites that sell goods such as videos. The public would expect the Complainant to offer these goods but they in fact have nothing to do with the Complainant (Bloomberg supra, and the Complaint Annexes G and H). The Panel finds it only logical to infer the Respondent derives income from this business operation at the disputed domain name. Therefore, the Panel finds the Respondent registered and is using the domain name in clear violation of the Policy at 4b(iv).”
In Expert Travel Services, LLC v. Texas International Property Associates - NA NAWIPO Case No. D2008-0307, the panel held that:
“Internet users who type in the disputed domain name are taken to a searchable portal website that contain a number of links. Many of the links, which refer to various forms of “expert witness”, appear to be unrelated to the Complainant's marks or related services. But the website also includes links for “Expert Flyer” and “Become an Expert Flyer”, under which appears the following text: “Find seats open/taken on over 100 airlines. Find upgrade and award inventory on AA and others. All fares and flight info worldwide. We make you an Expert Flyer by giving you an edge.” Beneath the text is a link for the Complainant's website. The Panel determines that there is ample evidence that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent's website or of products or services on the website, as described in paragraph 4(b)(iv).”
In PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),
WIPO Case No. D2003-0696, the panel after taking into consideration the facts of the case held that:
“The Complainant has proved that the Respondents have intentionally attempted (and apparently succeeded) to attract, apparently for commercial gain, Internet users to Respondents' wWebsite, by creating a likelihood of confusion with the Complainant's trademark (Policy, Paragraph 4(b)(iv)). See PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,
WIPO Case No. D2001-0174, (March 28, 2001), -where the use of domain names to capture goodwill of PEPSI mark and profit from the goodwill associated with complainant's sponsorship of certain sporting events was found to be in bad faith. It is difficult to believe that any party would undergo the difficulties and expenses relating to the registration of more than seventy domain names, all of which encompass the trademark “PEPSI,” and then have such domain names resolve to a electronic gaming facility, in order to conduct a non-commercial operation. Thus, commercial use is presumed.”
In the facts and circumstances of the present case, the Panel finds that the term “Ta Ta” is so popular through out the globe that it is impossible for the Respondent that it has never heard of this name which shows the bad faith of the Respondent (reference is made to Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 where it was held by the panel: “The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent/IBCC could have been unaware of the trademark rights vested therein when registering the Domain Name.”)
Since the TATA trademark is widely known and the Respondent has no rights in it, the most likely reason why the Respondent could have wanted to register and use a domain name incorporating the TATA mark was that it knew of this mark and wanted to use it in the domain name in order to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose. The aforesaid conduct of the Respondent in diverting web traffic for commercial gain is a manifestation of the bad faith registration and use of the said domain name.
The Panel finds that the registration has been done in bad faith as the Respondent could not have been unaware of the TATA trademark. Further, the Panel finds that the Respondent has registered and is using the domain name in dispute, that incorporates the mark TATA with the intent to deceive Internet users in regard to the source or affiliation of the domain name and that itself is evidence of bad faith.
In American University v. Richard Cook, NAF Claim No. 208629 was held that:
“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”
The Panel finds that evidence on the record of the present case is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b).
The Panel finds that the Respondent has registered and is currently using the domain name in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <oktatabyebye.com> be transferred to the Complainant.
Pavan Duggal Sole Panelist
Dated: August 11, 2009
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