A recent complaint in the WIPO Arbitration and Mediation Centre was made against Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Anirudh Sharma, a company which had registered the domain name <tata-groups.com> on March 28, 2019.
The disputed domain name resolved into a website which displayed a message instructing users to download the “TATA Application” for applying for jobs online. The said website also bore the registered trademark TATA of the Complainant. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019 and an amended Complaint was filed on June 7, 2019.
The Complainant’s trademark TATA has been declared as a well-known trademark by the Trade Mark Registry, India and evidence in support was also submitted.
The Complainant also stated that it witnessed several instances of fake job offerings (where fraudsters lure unsuspecting and innocent members of public by sending them fake job interview invitations and asking for money under the pretext of security deposits for such fake job interviews). In order to combat this menace, it had put up a disclaimer on its website informing the public about such scams.
The Respondent did not reply to the Complainant’s contentions.
The Panel observed that the disputed domain name <tata-groups.com> completely incorporated and subsumed the registered and well-known trademark TATA of the Complainant. Previous UDRP panels ruled that the incorporation of a trademark in its entirety was sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark. The Panel concluded that the disputed domain name <tata-groups.com> was confusingly similar to the Complainant’s trademark TATA.
The Panel was of the opinion that the Respondents had in mind the trademark of TATA due to the following facts:
i. The Complainant has prior rights in its registered and well-known trademark TATA and has adopted and used the trademark extensively for more than a century in India.
ii. That the Respondent resides in India where the Complainant, its affiliates and subsidiaries carry out widespread operations in India across a number of industries and domain names.
iii. The website to which the disputed domain name resolves, prominently displays the Complainant’s trademark TATA and also offers an option to Internet users to download a TATA application for applying for jobs online.
On the basis of the evidence filed in the proceedings, the Panel was satisfied that the Complainant had both statutory rights and common law rights in the trademark TATA and that said trademark had been recognized as a well-known trademark in India.
Vide order dated 7.08.2019, the Panel ordered that the disputed domain name <tata-groups.com> be transferred to the Complainant.
Team Anand and Anand: Pravin Anand, Achuthan Sreekumar and Akshay Agarwal.