In April, 2021, Tata Sons Private Limited ("Complainant") filed a complaint with the WIPO's (World Intellectual Property Organisation's) Arbitration and Mediation Center ("Center"). The complaint was filed with respect to a disputed domain name under the provisions of the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy"), the UDRP Rules ("Rules") and the WIPO Supplemental Rules of UDRP ("Supplementary Rules").
Before venturing into the merits and conclusion of the domain dispute, it would be prudent for readers to first familiarise themselves with WIPO's UDRP Policy. The UDRP Policy provides a legal framework for speedy resolution of domain name disputes between a domain name registrant (i.e. the person or entity who registers a domain name) and an infringing third party pertaining to abusive or infringing domain registrations and use of an Internet domain name in the generic top level domains or "gTLDs" (e.g., .biz, .com, .info, .net, .org etc.), and country code top level domains or "ccTLDs" (e.g., .in, .co.uk, .ca) that have adopted the UDRP Policy on a voluntary basis. Pertinently, any person or entity in the world can file a domain name complaint concerning a gTLD under the provisions of the UDRP Policy and Rules. For disputes involving a domain name registered as a ccTLD, the UDRP Policy can be invoked, provided that the concerned ccTLD registration authority has voluntarily adopted the UDRP Policy.
In terms of Paragraph 4 (a) of the UDRP Policy, the UDRP procedure is only available for disputes concerning abusive registration of a domain name, which meet the following criteria:
"(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith"
The fundamental advantages of the UDRP Policy can be summarised as follows: (1) as compared to instituting infringement proceedings in court, the Policy typically provides a faster and more economical mechanism to resolve domain name disputes (in usual course, disputes are settled within 60 days); (2) the procedures are relatively informal as compared to formal litigation; (3) the decision-makers are experts in relevant fields of international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution; and lastly (4) It is international in scope as it provides one mechanism for resolving domain name disputes regardless of where the registrar or the domain name holder/ owner or the complainant are located.
Let us now revert to the complaint filed by Tata Sons Private Limited, i.e. the Complainant. The Complainant being the principal holding company of the Tata group needs no introduction for our Indian readers and perhaps for anyone remotely familiar with international business news and events. As many may know the Complainant is the namesake of its founder Mr. Jamsetji Nusserwanji Tata and the businesses of the Tata group span over multiple international sectors including without limitation, iron and steel, textile, power, automobiles, telecommunications and aviation, to name a few.
The disputed domain name under question pertains to an English and Tamil website for the brand "Taatas – The Premium Quality Food Brand" through which "Taatas (Pvt.) Ltd." offers a wide range of agricultural products like organic food, ghee and toddy wine, to its patrons in Sri Lanka. The allegedly infringing website is owned and operated by a Sri Lankan individual, Mr. Thobiyas Segaram Bernard Vasanthkumaar ("Respondent") through his companies.
In the present dispute, the Complainant's case is that the disputed domain name "taatas.com", is identical to the Complainant's well-known "TATA" trade and service marks, and its website ""tata.com"". The Complainant alleges that the disputed domain is being used by the Respondent in bad faith and is a classic case of domain name squatting and/or typo squatting. Brief summarizations of the Complainant's and Respondent's submissions are noted below for ready reference.
The Complainant's Submissions:
- That the Complainant has statutory and common law rights in its well-known trade and service mark, i.e. "Tata";
- The Complainant has trademark registrations of the mark, "Tata", in Sri Lanka;
- That the TATA Group is one of the most popular and reputed conglomerates of India and considering its geographical proximity to Sri Lanka, the Respondent ought to have been aware of the goodwill associated with and the well-known status the "Tata" mark(s);
- That users of the Respondent's website may be induced to believe that the Complainant has licensed and/or authorised Respondent's actions or that the Respondent is in some way connected with the business of the complainant;
- That the Respondent has no logical reasoning to adopt the disputed domain name, other than based on numerology (as alleged by the Respondent in its preliminary submission) which according to the Complainant was a reason devoid of sense; and
- That the Respondent adopted the Complainant's mark and added extra letters i.e. "a" and "s" with the aim of escaping liability.
The Respondent's Submissions:
- That the pronunciation of the respect domain names of the parties are completely different and there is no chance that users could land on the Respondent's website on account of typographical errors;
- That the disputed domain name contains two additional letters with a completely different font type and that the disputed domain name does not use the mark "tata" in any manner;
- That the Respondent adopted the disputed domain for numerological reasons and the same has no dictionary meaning. The Respondent further submitted that all his brand names have the numerological value of 14 and the repetition of letters in a business name is considered auspicious;
- That the target customers and the businesses of the Respondent and the Complainant are completely different and hence there is no likelihood of confusion to be caused in the mind of an average consumer;
- That on a simple Google search for the term "Taatas", the Respondent's company and its products are shown in the first page of search results, and not that of the Complainant;
- That the Respondent has been known by the name "Taatas" since 2017, when he registered his company name and thereafter registered the domain name under scrutiny, to match the corporate name of his company, i.e. Taatas Global (Pvt.) Ltd.;
- That the Complainant has failed to provided satisfactory evidence to establish its presence and use of its mark in Sri Lanka and has referred to products which are wholly different when compared to the Respondent's products. He further submitted that certain products/ services of the Complainant, such as Taj Hotels are not even marketed under the mark "Tata". Thus, according to the Respondent there is no evidence on record to establish use of the Complainant's mark in Sri Lanka;
- That the UDRP Policy is not to be used as a forum to adjudicate upon civil disputes nor on aspects pertaining to trademark rights. The Respondent further submitted that, the proceedings under the UDRP Policy should strictly deal with cases of cybersquatting and should not be used to resolve disputes between parties vis-à-vis their respective trademark rights, which ought to be outside the purview of the UDRP Policy; and
- That the Complainant has failed to provide any cogent justification or evidence to establish that the Respondent should have been aware of the Complainant's mark and its reputation;
The UDRP Policy provides that a complainant must establish its case with respect to the three criteria and elements laid down under paragraph 4 (a) of the Policy as noted herein above. Accordingly, the findings of the Center are enumerated below with reference and adherence to paragraph 4 (a) of the policy:
i. Identical or Confusingly Similar Domain Name
The Panel appointed by the Center held that, contrary to the Complainant's submissions, whilst the disputed domain does contain all the letters of the "Tata" mark, it also contains addition letters i.e. an "a" inserted in the middle and "s" added at the end. Accordingly on a combined reading the Respondent's domain is not identical to the "Tata" mark. The Panel did note that the marks are phonetically very similar.
The Panel further opined that, whilst the marks are not identical, the disputed domain name is found to be confusingly similar and thus the Complainant satisfied the first element of paragraph 4 (a) of the UDRP Policy.
ii. Rights or Legitimate Interests
To determine the legitimate interests of the parties the Panel considered the provisions under paragraph 4 (c) of the UDRP Policy, which inter alia stipulates the circumstances (if found to exist by the panel) which would demonstrate that the Respondent has no legitimate rights or interest in the domain name. The said circumstances noted under paragraph 4 (c) of the UDRP Policy as reproduced herein below for ready reference:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
On a consideration of the evidence on record vis-à-vis the aforesaid, the Panel made the following findings:
- That the Respondent is not using the "Tata" mark nor is it incorporated anywhere in the disputed domain name. Furthermore, the respondent is using the name/ mark "Taatas" as logo(s), which do not resemble any "Tata" mark nor any derivatives thereof that were placed on record by the Complainant. Accordingly, the Panel held that nothing on the Respondent's website gives an impression that the same is owned, operated, affiliated or endorsed by the Complainant. On the contrary, the Respondent's company name Taatas Global (Pvt) Ltd. is conspicuously displayed on the Respondent's website along with relevant contact particulars;
- That the Respondent's products are dissimilar from the products of the Complainant and/or the Tata Group;
- Whilst arriving at its decision, the Panel positively
considered the following submissions of the Respondent:
- That the Respondent actively promotes its goods and services online, under the mark "Taatas";
- Invoices bearing the "Taatas" logo submitted by the Respondent to demonstrate that the Respondent has been making domestic and foreign sales under its "Mark", prior to the Complaint
- The Respondent's application to the Sri Lankan excise department, dated prior to the filing of the Complainant, whereby the Respondent has sought the excise department's approval to use bottle labels bearing the words "Marketing by Taatas Global (Pvt.) Ltd. www.taatas.com"
On the basis of the above, the Panel noted that the present complaint does not amount to a case of domain name squatting, as alleged by the Complainant, because there is sufficient evidence on record to establish the Respondent's bona fide offering of goods and services under the domain "taatas.com". The Panel further noted that, in the present complaint the Panel is not called upon to weigh in on the respective rights of the parties vis-à-vis the trademarks and that in the Panel's considered view the same could be better adjudicated in a court having competent jurisdiction. Furthermore, in light of the aforesaid findings, the Panel did not deem it necessary to dwell into the third element under paragraph 4 (a) of the UDRP Policy i.e. Use in Bad Faith.
The Center's finding that singular reliance on the fame of a particular mark and mere averments as to the mark having a well-known status without any cogent evidence to justify allegations of bad faith adoption of a mark are not sufficient to establish a case of cyber-squatting or domain name squatting. In this classic David versus Goliath scenario, it is re-assuring to see that a reputed brand's reluctance or inability to tender factual submissions and evidence, outweigh its fame and goodwill. Whilst concluding its order, the Panel also noted that, the Complainant may commence proceedings in a court having competent jurisdiction, if the Complainant considers that it has valid grounds to allege infringement of its trademark, and such proceedings would unavoidably address the registration and use of the impugned domain name. While there is presently no information available in the public domain to confirm whether the Complainant has instituted proceedings for trademark infringement, it would be interesting to see if the unfavourable outcome of the present complaint dissuades or in fact, urges the Complainant to do the same.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.