The Viewpoint: The TATA domain name dispute: Is the game of fame enough?

Recently, the TATA Group filed a complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre for recovery of the domain <taatas.com> on the ground that it was identical to the well-known TATA trade and service mark.

The respondent in the matter is an individual and the sole director and shareholder of the Sri Lankan companies Taatas Global Export (Pvt) Ltd and Taatas Globan Export (Pvt) Ltd, (incorporated in the years 2017 and 2021 respectively). He registered the disputed domain <taatas.com> on October 09, 2020, after which he operated an active website showcasing a wide range of consumer agricultural products including food, ghee and toddy wine.

Contentions of TATA

• That the disputed domain name is identical to the complainant’s well-known mark TATA;

• That the disputed domain name has been registered and is being used in bad faith and is a classic example of cybersquatting;

• That the disputed domain name resolves to an active website through which various food products are being sold under the name TAATAS by a company called Taatas (Pvt) Ltd;

• That the respondent does not have any plausible reason for adoption and use of the mark TAATAS, which is deceptively similar to their well-known trademark TATA;

• That the general public might believe that the respondent is associated with the complainant in terms of nexus or affiliation with the TATA group and/or has been authorized by the complainant to carry out such activities;

• That the respondent has registered the impugned domain in bad faith and had constructive notice of the complainant’s rights in the mark TATA;

• That the TATA Group is one of the most popular and reputed conglomerates based out of India and considering its geographical proximity to Sri Lanka, the respondent was aware of the substantial reputation and goodwill associated with the trademark TATA;

• That the complainant has trademark registration for the mark TATA in Sri Lanka;

• That the respondent’s reasoning for adopting the said domain (being based in numerology) does not make any sense;

• That the respondent has copied the trademark TATA and is only escaping liability by adding the additional ‘a’ and ‘s’ therein;

• That the TATA Group has overwhelming statutory and common law rights in the well-known trade and service mark TATA including rights over the domain <tata.com>.

The respondent's defence

• That the pronunciation of <tata.com> and <taatas.com> is very different. The disputed domain name has two additional letters ‘a’ and ’s’ and does not include the word ‘Tata’, thus making it totally different;

• That any chance of consumers arriving on the respondent’s website owing to typographical errors is very less;

• That the disputed domain name does not have any meaning and was selected by numerology;

• That all of the respondent’s brand names have the numerological value of 14 and the repetition of letters in a business name is considered auspicious. Further, the respondent has claimed that his name also begins with a T and contains double A;

• That the parties are engaged in totally different businesses with different target customers;

• That, as per the respondent, the word ‘Taata’ means guarantee in Finnish and “father” in East Africa and Sri Lanka, and ‘Taatas’ is a plural form of a common dictionary word. Further, the word 'guarantee' has also been used extensively on the respondent’s website and that the word ‘Taata’ holds different meanings in various languages and is a commonly used word;

• That the respondent owns other domain names that begin with a T and at least 2 brand names that contain double A and hence this is not a case of typosquatting;

• That the respondent has claimed to have been known by the name Taatas since 2017, when he registered his company name and registered the domain name to match the corporate name;

• That on typing 'Taatas' on Google search, the respondent’s (and not the complainant’s) company and its products are shown in the first page of search results;

• That the respondent has also used the name/mark Taatas on social media websites since December 2020 and various Sri Lankan websites have listed the respondent’s products since January 2021;

• That the complainant has not provided much evidence to prove its presence in Sri Lanka and has referred to products different to that of the respondent, some of which are not even marketed under the brand name TATA, such as Taj Hotels. Further, the respondent has stated that while the TATA Group has sold its stake in the tea plantation in Sri Lanka, it was previously marketed as Zesta and Watawala. Thus, the respondent claimed that there is no evidence of use of the complainant’s mark TATA in Sri Lanka;

• That the complainant has not provided any reasons/ evidence that would determine that the respondent was or should have been aware of the complainant’s mark;

• That apart from asserting trademark registration for TATA in Sri Lanka and a .lk country code top level domain, the complainant has not produced any other evidence regarding their business, reputation, sales volumes, advertising, market revenue or any facts that may substantiate their claims of being well-known in Sri Lanka or show that the mark TATA has acquired a secondary meaning in Sri Lanka;

• That the respondent is using the impugned domain name in respect of the company Taatas Global (Pvt) Ltd and offers a variety of food products that differ from the complainant’s goods and services for which the complainant does not even possess trademark registrations in Sri Lanka;

• Lastly, Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings are not to be used as a court or a forum to decide civil dispute or adjudicate with respect to trademark rights. As per the respondent, the said proceedings should strictly deal with cases of cybersquatting and not be used to resolve disputes between parties competing for trademark rights, which are outside the purview of the Policy.

Issues and findings

As per paragraph 4(a) of the UDRP Policy, the complainant must prove each of all the following elements for the transfer of the disputed domain:

1. If the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights

Even though the complainant has no trademark rights in the name/ mark TATA in Sri Lanka, the WIPO Panel was of the opinion that the Internet being a global medium, is sufficient for the complainant to have demonstrated its trademark rights in any jurisdiction (in this case India) irrespective of their not possessing trademark registration in Sri Lanka.

Further, the Panel stated that the goods and services for which the TATA mark is registered is not relevant to establish the first element of the Policy (although relevant for the second element).

As regards determination of similarity/ identity between the domain <TAATAS.COM> and the Complainant’s mark TATA, the Panel held that contrary to the complainant’s submissions the domain name is not identical to the TATA mark. However, the Panel held the mark TAATAS to be phonetically very similar to the TATA mark.

Additionally, the Panel stated that keeping in mind that the first element functions primarily as a “standing requirement”, the disputed domain name was confusingly similar to the complainant’s mark.

2. The respondent has no rights or legitimate interest in respect of disputed domain name:

The Panel assessed the rights and legitimate interests of the respondent as at the time of filing the complaint.

The Panel was of the view that the respondent is not using the mark TATA nor is it incorporated in the disputed domain name and that in fact, the respondent is using the name TAATAS (as part of logos) that do not resemble any TATA-formative marks on record. Further, the Panel held that nothing on the respondent’s website gives an impression that the same is owned/affiliated/endorsed by the complainant. Rather, the respondent’s company name Taatas Global (Pvt) Ltd and its contact details are displayed on the impugned website.

The Panel was also of the view that the respondent’s products are dissimilar from those of the TATA group, except tea, a product which the complainant has mentioned “without elaboration”.

It was further stated that even though the complainant has acknowledged that the disputed domain name relates to a website wherein food products are being sold by a company called Taatas (Pvt) Ltd and has submitted an extensive complaint along with 61 annexures, they have declined to engage with the website content. Accordingly, the Panel opined that the crux of TATA's complaint rests on the fame of the TATA mark and its similarity with the name TAATAS.

As regards the response to the complaint, the Panel considered the submissions and evidence tendered by the respondent, in particular:

• Promotion of the respondent’s goods and services under the TAATAS mark;

• Invoices bearing the TAATAS mark and the impugned domain <taatas.com> issued to domestic and foreign customers by Taatas Global (Pvt) Ltd since prior to filing of the complaint;

• Application filed by the manufacturer of Jac Miller toddy wine with the Excise Department of Sri Lanka (prior to filing of the complaint) for approval of bottle labels that include the words “Marketing by Taatas Global (Pvt) Ltd” and “www.taatas.com”;

• Google search results for TAATAS making reference to the respondent’s disputed domain name and Taatas food products and not the complainant;

However, the Panel observed that despite making supplemental filings, the complainant did not rebut any of the evidence tendered by the respondent.

Given the above, the Panel came to the conclusion that this is not a case of domain name squatting, as there is evidence on record demonstrating the respondent’s bona fide offering of goods and services from the domain <taatas.com>. Although the respondent’s reasons for adoption of the name of his company lacks credibility, the Panel stated that alone does not warrant a finding of cybersquatting. Further, the Panel was of the view that the respondent adopted the domain name <taatas.com> to correspond with their company name Taatas Global (Pvt) Ltd, which was registered years earlier.

The Panel opined that even though the respondent’s domain name bears a remarkable similarity to the complainant’s famous mark TATA (which may merit further legal enquiry), this case does not appear to be one where the respondent has registered a company name as a pretext to justify the domain name registration. In any case, the Panel declined to weigh upon the respective rights of the parties citing the same as being “nuanced.”

Therefore, based on the above, the Panel held that the complainant failed to satisfy the second element of the UDRP and in their view, this case could be better adjudicated in a court.

3. If the disputed domain name has been registered and is being used in bad faith.

Given that the Complainant was unable to establish the second element of the UDRP, the Panel deemed it unnecessary to consider the aspect of bad faith under the third element.

The Panel therefore declined the complaint and stated 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, which would inevitably address the respondent’s registration and use of the disputed domain name.

Reverse domain name hijacking

The respondent requested the Panel to make findings of reverse domain name hijacking, alleging that there was no basis for the claim and that the complainant (through its counsel) should have been aware that they would not succeed in proving all three elements under the UDRP.

In this regard, the Panel observed that even though the complaint contains relatively less information about the actual use that the respondent is making of the disputed domain name, it speculates freely about the future use the respondent might make of the domain name, including allegations about extracting money from Internet users and sale of the disputed domain name at an exorbitant price. The Panel held that none of these speculations appear to be grounded in fact.

However, the Panel declined to make a finding of reverse domain name hijacking on the basis that the complainant genuinely believed that it had a case as it was a famous brand located in a jurisdiction close to that of the respondent. Accordingly, the Panel was not persuaded that the defects in the complaint signify bad faith on behalf of the complainant.

Analysis and conclusion

This decision of the Panel makes it evident that while adjudicating domain name disputes, mere averments as to the well-known nature of a mark and bare allegations of bad faith are not sufficient to establish cyber-squatting.

The Panel pointed out various deficiencies in the complainant’s submissions, such as:

• Non-rebuttal by the complainant of the factual evidence tendered by respondent;

• Lack of submissions regarding similarity of goods/services offered by the respondent;

• No justification provided for the respondent’s actual bona fide use on their website;

• No submissions regarding the respondent’s long running company and business under the mark TAATAS;

• Unsubstantiated allegations of bad faith against the respondent such as extracting money from Internet users and sale of the disputed domain name at an exorbitant price;

The Panel took note of TATA's selective rebuttals and observed that it had acknowledged the use of the respondent’s company incorporating the name/mark TAATAS. However, it had declined to comment on the content hosted on the impugned website.

Further, though the complainant placed heavy reliance on the fame and repute attached to their TATA mark, it could not substantiate the same with any evidence of use in Sri Lanka that would overlap with the respondent’s services or otherwise. Additionally, the complainant could not show a nexus between their mark TATA and its mala fide use and adoption by the respondent as part of the domain <taatas.in> in respect of sale of agricultural products.

The Panel did acknowledge that the marks were phonetically similar and that the complainant had a bona fide interest in recovering the domain <taatas.in>, given their fame in India and geographic proximity to Sri Lanka. However, given that the Panel had a limited purview of adjudication, i.e. over the use and registration of the domain <taatas.in>, the Panel declined to comment on the respective trademark rights of the parties and further advised the complainant to commence proceedings in a court of competent jurisdiction.

It is yet to be seen if TATA will pursue its case against the respondent’s use of TAATAS in Sri Lanka till its logical end. However, the Panel’s decision makes it evident that only fame is not enough to win the game!

Lucy Rana is a Partner and Sanjana Kala is an Associate Advocate at SS Rana & Co.

For more information, please write to: info@ssrana.com