WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tata Sons Ltd. v. Webhostingbuzz USA LLC

Case No. D2016-0768

1. The Parties

The Complainant is Tata Sons Ltd. of Mumbai, India, represented by Anand & Anand, India.

The Respondent is Webhostingbuzz USA LLC of Auburn, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tatatreat.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended the Complaint on April 29, 2016. On April 29, 2016, the Center received an email from the Respondent.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on May 23, 2016.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 3, 2016. 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.

4. Factual Background

The Complainant is Tata Sons Limited, an Indian company with seat in Mumbai, India. The Complainant established in 1917 as a body corporate.

According to the Complainant, its group companies, subsidiaries and other promoted companies constitute India’s oldest and largest private-sector employer. In addition, the Complainant argues that all of the companies and subsidiaries that comprise the Complainant’s corporate group, have branched out into numerous industrial sectors such as textiles, iron, steel, power, chemicals, hotels, automobiles, computers, software, electronics, telecommunications, financial services, tea, aviation, retail, etc.

The Complainant is the owner of several trademark registrations in India and other jurisdictions, including the following:

The Complainant claims that due to its unparalleled reputation and goodwill, the trademarks TATA have been acknowledged as well known.

The Complainant is also the owner of the following domain names, among others:

The Respondent is Webhostingbuzz USA LLC, with domicile in Auburn, Massachusetts, United States. The disputed domain name was registered on April 29, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant claims:

That the disputed domain name is identical to its well-known trademark TATA.

That the Complainant has overwhelming common law as well as statutory rights in its TATA mark.

That the disputed domain name attempts to associate itself with the Complainant’s online service at “www.tata.com” by incorporating the Complainant’s trademark in full.

That the use of the word “tata” would be understood as a reference to the Complainant as it is a registered and well-known trademark.

That Internet users or the general public that do not know that the Complainant and the Respondent have no affiliation with each other will confuse the Respondent with the Complainant.

That the trademark TATA has acquired a distinctive connotation and identity of its own. That due to its distinctive nature and popularity in several fields, it has become a well-known trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

That the Complainant has statutory and common law rights in the mark TATA, and therefore is the sole, legitimate owner thereof.

That the Complainant has not licensed or otherwise permitted the Respondent to use its mark TATA, or authorized it to apply for any domain name incorporating said mark.

That the Respondent’s use of the disputed domain name is trading on the fame and recognition of the Complainant’s well-known trademark to cause confusion and bait Internet users into accessing the website to which the disputed domain name resolves.

That the Respondent registered the disputed domain name to make unjust gains by depriving the Complainant of its rights of reflecting the mark in a corresponding domain name.

That, since the mark TATA and various TATA formative marks are exclusively being used by the Complainant, there is no plausible explanation for the Respondent’s use of in the disputed domain name.

(iii) The disputed domain name has been registered and is being used in bad faith.

The Complainant argues that the Respondent had constructive notice of the Complainant’s rights in the mark TATA by virtue of the Complainant’s widespread use, worldwide reputation and global registrations.

That the Respondent should have known of the Complainant’s trademark, which has shown to be well-known or in wide use on the Internet. That such knowledge is an indicator of the bad faith of the Respondent.

That the disputed domain name was created by the Respondent to deliberately acquire a domain name that is confusingly similar to the Complainant’s trademarks, thus being of substantial interest to the Complainant.

That the Respondent was aware of the commercial value and significance of the various domain names owned by the Complainant.

That the Respondent was well aware of the substantial reputation and goodwill associated with the Complainant and its subsidiaries as well as its TATA mark.

That the domain name <tatatreat.com> does not resolve to a website, and that there is no actual and legitimate offering of goods or services by the Respondent through any website hosted by the disputed domain name.

That there is a risk of the Respondent using the disputed domain name to portray itself as part of the Complainant.

That the visitors to the Respondent’s website will be induced to believe the Complainant has licensed their trademark to the Respondent and that the Respondent has some connection with the Complainant’s company group.

B. Respondent

The Respondent did not submit any formal reply to the Complainant’s contentions.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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 has been registered and is being used in bad faith.

As the Respondent has failed to file a response to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant is the owner of several trademark registrations for TATA in many jurisdictions, including the United States, where the Respondent has declared to have its domicile.

The disputed domain name <tatatreat.com> is confusingly similar to the Complainant’s trademark TATA, as it includes said trademark in its entirety.

The addition of the generic Top-Level Domain (“gTLD”) “.com” in this case is immaterial for purposes of assessing confusing similarity. For the referenced reason, the Panel will not take into account the gTLD “.com” (see, Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

Furthermore, although the disputed domain name also includes the word “treat”, said fact does not exempt it from a finding of confusing similarity in connection to the Complainant’s trademarks. This Panel notes that, according to Exhibit U of the Complaint, the Complainant currently holds a vast number of domain names comprising the mark TATA followed by words describing a product or service, therefore, the inclusion of the word “treat” does not diminish the confusion between the disputed domain name and the trademarks owned by the Complainant (see, British Telecommunications public limited company v. Joshua Stone, Openreach Telecom Ltd., WIPO Case No. D2015-0162; and Nordea Bank AB v. Domainsecrecy.com, WIPO Case No. D2010-1818).

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first requirement of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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 evidence provided by the Complainant proves its ownership over several trademarks in many jurisdictions, which largely predate the registration of the disputed domain name. The Panel notes that the trademark TATA has been acknowledged as well known by other UDRP panels (see, Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671; Tata Sons Limited v. Hasmukh Solanki, WIPO Case No. D2001-0974; and Tata Tea Ltd v. Gem Lifts Ltd, WIPO Case No. D2000-1823).

The Respondent’s name, Webhostingbuzz USA LLC does not include the word “tata”. The Respondent did not provide proof of being commonly known by the disputed domain name.

The consensus view among UDRP panels is that paragraph 4(a)(ii) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests (see, Allianz SE v. Fernando Notario Britez / Oneandone, Private Registration, WIPO Case No. D2013-0279; and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by asserting that it did not license its trademark TATA to the Respondent, or permitted the Respondent to use said mark. The Respondent did not provide any evidence or argument to contradict said statement.

There is no evidence that allows the Panel to assume the Respondent is making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

In similar cases, other UDRP panels have determined that, in the absence of evidence showing the contrary, the passive holding of a domain name does not constitute a legitimate noncommercial fair use. In this case, the Respondent did not show any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Under these circumstances, the Panel asserts that there are no signs of the Respondent having rights or legitimate interests in respect to the disputed domain name (see, Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).

There are no signs of the Respondent having rights or legitimate interests with respect to the disputed domain name. Therefore, the second requirement of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

i) circumstances indicating that the respondent has registered or the respondent 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 respondent’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 its 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 respondent’s website or location or of a product or service on its website or location.

Given the vast and undisputed evidence provided by the Complainant and the acknowledgement made in various decisions issued under the Policy, this Panel recognizes that the TATA trademarks are widely used and highly recognized. The fact that the Complainant owns several trademark registrations in the United States, where the Respondent has declared to have its domicile, brings weight to the assumption that such recognition could not have gone unnoticed by the Respondent at the moment of registering the disputed domain name.

In light of the above and in the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time when the Respondent registered the disputed domain name, given the widespread use and fame of the Complainant’s trademark TATA. (See, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Playboy Enterprises International, Inc. v. John Hanley, WIPO Case No. D2014-0618; and Boiron S.A. v. José Antonio Paya Serer, WIPO Case No. D2001-0118.)

As other UDRP panels have stated, a finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; and Vakko Holding Anonim Sti. v. Esat Ist,WIPO Case No. D2001-1173). It is very unlikely that the Respondent, being a United States resident, did not know of the trademark TATA when it registered the disputed domain name.

The Panel notes The fact that the Respondent did not submit any substantive reply to the Complaint, implies, from the perspective of this Panel, and that the arguments and evidence provided by the Complainant have not been denied nor rebutted or overcome. This situation makes that all of the arguments pointing towards the Respondent’s bad faith registration and use of the disputed domain name, have remained solid (see Société pour l’Oeuvre et la Memoire d’Antoine de Saint Exupery - Succession Saint Exupéry – d’Agay v. Perlegos Properties, WIPO Case No. D2005-1085).

In that sense, analyzing the particularities of this case, the Panel finds the following: (a) that the Complainant’s brands are widely recognized by consumers; (b) that the Respondent registered the disputed domain name that is confusingly similar to a mark that is widely recognized; (c) that the disputed domain name has been found inactive since its record to date; (d) that the Respondent did not prove in any way (nor offered evidence or arguments to show) that the registration of the disputed domain name was made in good faith or for noncommercial use.

Based on the foregoing, there is no possibility to determine any plausible or active use of the disputed domain name that could not affect the rights of intellectual property of the Complainant. Therefore, the Panel considers that the registration and the passive holding of the disputed domain name in the present case, satisfy the criteria for determining that the disputed domain name’s registration and use was in bad faith (see Advance Magazine Publishers Inc. and Les Publications Condé Nast SA v. ChinaVogue.com, WIPO Case No. D2005-0615).

The third requirement of the Policy has been fulfilled.

7. Decision

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 <tatatreat.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: June 16, 2016