ADMINISTRATIVE PANEL DECISION
Tata Sons Pvt. Ltd. v. Victor TSB
Case No. D2021-1084
1. The Parties
The Complainant is Tata Sons Pvt. Ltd., India, represented by Anand & Anand, India. The Respondent is Victor TSB, Sri Lanka, self-represented. (Legal Support by Cylaw Solutions, India)
2. The Domain Name and Registrar
The disputed domain name <taatas.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2021, the Respondent sent an email to the Complainant disputing the substance of the Complaint, and another email to the Registrar, requesting that it unlock the disputed domain name. On April 12, 2021, the Registrar 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, the Complainant filed an amendment to the Complaint on April 20, 2021.
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 4, 2021. In accordance with the Rules, paragraph 5, the original due date for Response was May 24, 2021. On May 10, 2021, the Respondent requested an extension due to the COVID-19 pandemic. On May 12, 2021, in accordance with the Rules, paragraph 5(e), the Center extended the due date for the Response to June 13, 2021. The Response was filed with the Center on June 10, 2021. On the following day, the Complainant sent an email communication to the Center foreshadowing a supplemental filing, to which the Respondent objected. On June 13, 2021, the Complainant sent an unsolicited supplemental filing to the Center. On June 21, 2021, the Respondent sent an unsolicited supplemental filing to the Center.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 23, 2021. 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 an Indian company and the principal holding company of the Tata Group, which has operations in multiple industrial sectors, including textiles, iron and steel, power, chemicals, hotels, automobiles, computers, software, electronics, telecommunications, financial services, mutual funds, tea, aviation, and retail. The Complainant is named after the group’s founder, Jamsetji Nusserwanji Tata. Tata Group companies do business in Sri Lanka: Tata Motors, sells vehicles in Sri Lanka and has a website at “www.tatamotors.lk”; Tata Communications Lanka Ltd is a Sri Lankan company; while Tata Housing has projects in Sri Lanka. The Complainant holds multiple trademark registrations in multiple jurisdictions, including Indian trademark registration number 92655 for TATA, specifying goods in class 1. That trademark registration remains current. The Complainant has also registered multiple domain names beginning with “tata” including <tata.com> that it uses in connection with a website where it provides information about its corporate group and its activities.
The Respondent is a Sri Lankan individual named Thobiyas Segaram Bernard VasanthKumaar. He uses the alias “Victor” while “TSB” are the initials of three of his names. He was selected to attend the 2016 Global Entrepreneurship Summit at Stanford University. He is sole director and sole shareholder of Taatas Global (Pvt) Ltd, a Sri Lankan company incorporated on March 14, 2017, and Taatas Global Export (Pvt) Ltd, a Sri Lankan company incorporated on February 24, 2021; he is also company secretary of Viain Holdings (Pvt) Ltd, a Sri Lankan company incorporated on March 10, 2020. The Respondent has registered at least ten domain names in his own name or that of Viain Holdings, or both. The disputed domain name was registered on October 9, 2020. It resolves to a website in English and Tamil for “Taatas – The Premium Quality Food Brand” offering a range of consumer agricultural products, including food, ghee, and toddy wine. The site displays three logos, two of which feature the brand “Taatas” and the other of which is for “Jac Miller”. Under the heading “About Our Store”, the site presents Taatas (Pvt) Ltd and its contact details in Jaffna, Sri Lanka. A copyright notice refers to Viain Holdings (Pvt) Ltd.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s well-known TATA trade and service mark. The disputed domain name has been registered and is being used in bad faith and is therefore a classic case of domain name squatting. The disputed domain name resolves to a website through which various food / edible products are being sold under the mark Taatas by a company called Taatas (Pvt) Ltd. The said company does not have any plausible reason for adoption and use of the Taatas mark, which is deceptively similar to the Complainant’s well-known trademark TATA. Internet users or the unwary general public who do not know that the Complainant and the Respondent have no affiliation with each other or that the Complainant has not licensed or authorized or endorsed the use of its famous and well-known mark TATA or any other mark deceptively similar to the mark TATA such as Taatas by the Respondent will confuse the activities of the Respondent as those which are being undertaken by the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its TATA mark or any other deceptively similar mark such as Taatas.
The disputed domain name has been registered and is being used in bad faith. The Respondent had constructive notice of the Complainant’s rights in the TATA trademark. The Respondent uses the mark Taatas, which is identical to the Complainant’s well-known trademark TATA, as a part of the disputed domain name despite being aware of the substantial reputation and goodwill associated with the Complainant’s trademark and/or service mark. The Complainant has overwhelming statutory and common law rights in the well-known trade and service mark TATA. The Respondent has restrained the Complainant from exercising its legitimate right of registering a domain name that incorporates its mark. There is a great likelihood that actual or potential unwary visitors to the Respondent’s present webpage will be induced to believe that (i) the Complainant has authorised or licensed the actions of the Respondent or authorized the Respondent to register the disputed domain name; (ii) the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the TATA Group or has been authorized by the Complainant to carry out these activities; and (iii) the sale of the disputed domain name has been authorized by the Complainant.
The Complainant has trademark registrations for the mark TATA in Sri Lanka. The Complainant is one of the most popular and reputed conglomerates based out of India and is popularly known as the Tata Group. Sri Lanka is located next to India and is part of the Indian sub-continent. The Respondent is therefore very well aware of the Complainant and its mark TATA which is also very popular in Sri Lanka. The only reason that the Respondent stated in his email of April 10, 2021 for the selection of the disputed domain name was based on numerology, which does not make any sense. The Respondent copied the Complainant’s mark TATA and added an extra “a” and an “s” with the aim of escaping liability.
In his initial email communication of April 10, 2021, the Respondent argued that: the pronunciation of <taatas.com> and <tata.com> was totally different; there is no chance of typographical errors; the disputed domain name contains two additional letters and does not include “tata”; and the font type is totally different. He argued that the disputed domain name does not have any meaning and was selected by numerology. He also argued that the Parties are in totally different businesses with different targeted customers. He denied allegations of bad faith. In the Response he argues that “taata” means “guarantee” in Finnish and “father” in East Africa and rural Sri Lanka, thus “taatas” is a plural form of a common dictionary word. The word “guarantee” is often used on the Respondent’s website. “Taatas” is also a surname in the Philippines.
The Respondent has a strong belief in numerology; therefore, his obvious choice was the generic word “taata” with a plural “s”. The numerological value of all the Respondent’s brand names, including “taatas” is 14. The repetition of letters in a business name is considered auspicious. The Respondent’s name also begins with a “t” and contains a double “a”. He also owns other domain names that begin with “t” and at least two brands that contain a double “a”. The disputed domain name is not a case of typosquatting. The Respondent has been commonly known by the disputed domain name since 2017 when he registered the company name Taatas Global (Pvt) Ltd. He registered the disputed domain name to match that corporate name. He has also registered the company name Taatas Global Export (Pvt) Ltd and has applied to register the company name Taatas (Pvt) Ltd. The disputed domain name has been actively used. The first page of results of a simple Google search for “taatas” refer to the Respondent and its products but not to the Complainant. The Excise Department of Sri Lanka has approved two labels for Jaffna toddy wine which refer to Taatas Global (Pvt) Ltd. The Respondent has also used social media accounts since December 2020. Numerous websites in Sri Lanka have been listing the Respondent and its products since January 2021. The Respondent’s company appears on Google Maps with an image of 40-50 employees although now, due to the pandemic, the company has 30-35 employees. The Respondent has issued invoices to business customers since January 2021. This UDRP proceeding is not a court or forum to decide civil disputes or any kind of trademark rights between the Parties. Domain name policies are designed to deal with cases of pure cybersquatting, not disputes between parties with competing rights acting in good faith, which are outside the purview of the Policy.
The disputed domain name was not registered and is not being used in bad faith. The Complainant makes very limited references to its presence in Sri Lanka; it only refers to products different from those of the Respondent, some of which are not even marketed under the TATA brand, such as Taj Hotels, while it has sold its stake in the tea plantations in Sri Lanka, the tea from which was marketed as Zesta and Watawala. There is no evidence of third party use of the Complainant’s mark in Sri Lanka. Overall, the Complaint does not provide reasons as to why the Respondent should have known of the Complainant or its asserted rights. Actual knowledge of the Complainant’s mark is required. Other than asserting trademark registrations for TATA in Sri Lanka and a single domain name in the “.lk” country code Top-Level Domain, the Complainant has not provided any evidence about its business, reputation, sales volumes, advertising, marketing, revenue, or any other facts that could establish that the Complainant and its mark were particularly well-known in Sri Lanka and that the mark carries a secondary meaning, as “tata” is a dictionary word as well. The disputed domain name is actively used in connection with the company website of Taatas Global (Pvt) Ltd offering various food products that mainly fall in class 30, where the Complainant has no trademark registration for TATA in Sri Lanka. The Respondent never solicited the Complainant, never used the disputed domain name to interfere with the Complainant or in any way which prejudiced or harmed the Complainant or in any way that could be genuinely considered bad faith.
6. Discussion and Findings
6.1 Supplemental Filings
The Complainant requests that the Panel accept its supplemental filing but it does not provide any justification. The Respondent objects to the Complainant’s request, arguing that the supplemental filing is unsolicited and that the Panel should guard against Parties attempting to add an entirely new, cumbersome, and costly layer to the UDRP which would diminish its efficiency as a dispute resolution process. Alternatively, the Respondent asks the Panel to accept its own supplemental filing in reply.
Paragraph 10(c) of the Rules requires the Panel to ensure that the administrative proceeding takes place with due expedition. Paragraph 10(d) of the Rules also provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Panel sees nothing in the Complainant’s supplemental filing that needs to be taken into account as it largely reiterates arguments in the Complaint, adding comments on the credibility of the Respondent’s reasons for choosing the disputed domain name that the Panel can assess on their face. The Complainant’s supplemental filing does not address the factual evidence annexed to the Response regarding such matters as the Respondent’s company name registrations and product labelling approval. If the Panel does not accept the Complainant’s supplemental filing, then the premise for accepting the Respondent’s supplemental filing in reply is not fulfilled.
Therefore, in the interests of ensuring that this administrative proceeding takes place with due expedition, the Panel declines to accept the Parties’ respective supplemental filings as part of the record of this proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the TATA mark. The Respondent argues that the Complainant has no trademark registration in Sri Lanka in respect of goods in class 30. Indeed, no trademark certificates were submitted and no online search of the Sri Lankan trademark register is available. Nevertheless, given inter alia that the Internet is a global medium, it is sufficient for the purposes of the first element of paragraph 4(a) of the Policy for the Complainant to have demonstrated its trademark rights in any jurisdiction (in this case, India). Further, the goods and services for which the TATA mark is registered are not considered relevant to the first element test, although they bear on the Panel’s substantive determination under the second element below. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2.
The disputed domain name contains all the letters of the TATA mark, plus an “a” inserted in the middle and an “s” added at the end, which combine to spell “taatas”. Contrary to the Complainant’s submission, this name is not identical to the TATA mark. However, “taatas” is at least phonetically very similar to the TATA mark.
The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Bearing in mind that the first element of paragraph 4(a) functions primarily as a standing requirement, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s mark. See WIPO Overview 3.0, section 1.7.
Therefore, the Panel finds that the disputed domain name is confusingly similar to two trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 noncommercial 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.
The Panel will assess the rights and legitimate interests of the Respondent as at the time of the filing of the Complaint. See WIPO Overview 3.0, section 2.11.
As regards the first and second circumstances set out above, the Respondent uses the disputed domain name in connection with a website that offers food, wine, and other products for sale under the Taatas brand. The Complainant submits that it has not licensed or otherwise permitted the Respondent to use its TATA mark or any other deceptively similar mark such as, in its view, “Taatas”. However, the Respondent is not using the TATA mark nor has he incorporated the TATA mark as such in the disputed domain name. Rather, the Respondent is using the name “Taatas” in logos that do not resemble any of the Tata figurative marks on record. Nothing on the Respondent’s website gives the impression that the website is owned, operated or endorsed by, or affiliated with, the Complainant. On the contrary, Taatas Global (Pvt) Ltd is the Respondent’s company name. Although the Respondent used an alias when he registered the disputed domain name and other domain names (usually with one of his company names), and although there are minor differences between his Taatas company names, the Respondent’s company contact details are displayed on the associated website. Further, the Respondent’s products are dissimilar from those of the Tata Group, with the exception of tea, a product that the Complaint mentions without elaboration.
The Complainant acknowledges that the name of the website operator is shown as “Taatas (Pvt) Ltd” but declined to engage with the website content, despite submitting an extensive Complaint with 61 annexes, two of them containing screenshots of that website. The Complainant’s case rests on the fame of the TATA mark and the similarity between that mark and the disputed domain name.
The Response shows that Taatas Global (Pvt) Ltd promotes itself online as a leading food and spices manufacturer and distributor. Taatas products include rice bran oil, ghee, henna powder, palm sugar, pickles, and spice (but not tea) that are advertised online, including on social media. The Respondent appears to have dozens of employees. The Respondent has issued invoices bearing the Taatas logo and the disputed domain name issued to domestic and foreign customers by Taatas Global (Pvt) Ltd in favor of Viain Holdings (Pvt) Ltd, and issued by Viain Holdings (Pvt) Ltd since the beginning of 2021, prior to the filing of the Complaint. The Respondent also provides details of Taatas’ invoices to domestic customers during a four-month period. Further, the manufacturer of Jac Miller toddy wine filed an application with the Excise Department of Sri Lanka in 2021, prior to the filing of the Complaint, for approval of bottle labels that include the words “Marketing by Taatas Global Pvt (Ltd)” “www.taatas.com”. Approval was granted on May 31, 2021. The top results of a Google search for “Taatas” are for the website associated with the disputed domain name and Taatas food products, not the Complainant.
The Complainant, despite making a supplemental filing, chose not to engage with any of this evidence. The Panel does not consider this to be a classic case of domain name squatting, contrary to the Complainant’s assertion. There is evidence on the record of this proceeding that the Respondent has made demonstrable preparations and is in fact using the disputed domain name in connection with a bona fide offering of goods or services. The evidence also shows that, at least in the particular sector of distribution of Sri Lankan consumer agricultural products, the Respondent, as a business, is commonly known as “Taatas”.
Although the Panel considers that the Respondent’s reasons for adoption of his company names lack credibility and are largely unrelated to the use that he is actually making of the disputed domain name, that alone does not support a finding of cybersquatting in this case. The Respondent chose the disputed domain name to match his company name, which was registered years earlier. And while the Panel notes that the registration of the Respondent’s company name, which bears remarkable similarity to the Complainant’s famous brand (which covers nearly all classes) may merit further legal inquiry, the Panel is not persuaded that this is a case of a registration of a company name as a pretext to justify a domain name registration and thereby to circumvent the application of the Policy. Notably this case differs in that material respect from cases such as Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, where a trademark (or corporate) registration was found to be a pretext for cybersquatting. In any case, the Panel recalls that, in such a nuanced case the Panel is not called upon to weigh up the Parties’ respective rights.
Therefore, based on the record of this proceeding, the Panel notes that the Complainant has failed to satisfy the second element in paragraph 4(a) of the Policy. In the Panel’s view, this case could be better adjudicated in a court.
C. Registered and Used in Bad Faith
Given the Panel’s findings in section 6.2B above, it is unnecessary to consider bad faith under the third element of paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent requests that the Panel make a finding of reverse domain name hijacking. It argues that there is no basis for the claim and that the Complainant (through its counsel) knew or should have known that they would not succeed in proving at least one of the three UDRP conditions.
The Panel notes that the Complaint, on one hand, contains relatively little addressing the actual use that the Respondent is making of the disputed domain name while, on the other hand, it speculates freely on potential uses that the Respondent might make of it, alleging that he might extract money from Internet users by portraying association or affiliation to the Complainant, or that he might sell the disputed domain name at an astronomical price, or that he might put up objectionable material. None of these speculations appears to be grounded in fact. The Panel notes that the Complainant is represented by counsel.
The Panel is not persuaded that the defects in the Complaint sink to the level of bad faith. The Complainant, a famous brand and moreover based in a jurisdiction close to that of the Respondent, appears to have genuinely believed that it had a case. Therefore, the Panel declines to make a finding of reverse domain name hijacking.
The Panel recalls that the Complainant may commence proceedings in a court of competent jurisdiction if it considers that it has valid grounds to allege trademark infringement or unfair competition. The disposition of such proceedings would inevitably address the registration and use of the disputed domain name.
For the foregoing reasons, the Complaint is denied.
Date: June 28, 2021