TATA MOTORS Limited V. Shay Rahman
Disputed Domain: TAMO.in
The Complainant is India’s largest automobile company, with consolidated revenues of Rs 2,75,561 Crores in 2015 -16. The Complainant is the India’s market leader in commercial vehicles and among top three in passenger vehicles. Complainant launched its brand new sub-brand TAMO, an incubating center of innovation working towards new technologies, business models and partnerships in order to define future mobility solutions.
Further that the RACEMO, a 2-seater concept is the first innovation from TAMO and an emotional, unexpected leap to the future symbolizing the change that is taking place at TATA MOTORS. It further claims that it has registered its Trademark TAMO and its variant which is distinctive and has an established reputation both in India and internationally. Complainant advertised the mark TAMO in mass media such as print, electronic media and also through participation in motor shows, etc. The TAMO had extensive reviews on various online platforms such as QUIKR since 2016.
The complainant claims the Respondent has no right or legitimate interests in respect of the disputed domain name TAMO.in. The Respondent has wrongfully and fraudulently adopted and registered the impugned domain name www.tamo.in in order to utilize the name and reputation without having any rights thereto and in spite of having full knowledge of the Complainant’s iconic stature in India and Internationally. Further, Respondent is trying to en-cash on the goodwill and reputation associated with the Trade mark TAMO, although the Respondent has no connection with the complainant and the other TATA Group of Companies.
Complainant also claimed that inaction in the use of Domain Name is within the concept of ‘BAD FAITH’ is supported. Further, the Complainant claims that the domain name was registered and is being used in bad faith. The Complainant further claims that, the Respondent exemplifies a habitual “Cyber Squatter” engaged in a pattern and practice of registering and using bad faith domain name. Moreover, the Respondent has offering the domain name for sale.
The Disputed Domain Name clearly incorporates Complainants trade mark TAMO in its entirely and such use of the disputed domain name is considered evidence of bad faith registration and use, under the ‘UDRP’.
Respondent claims that the Domain Name is acquired from a Dictionary word “TAMO” and it also has a generic meaning in Buddhism. As well as, there are several companies around the world in their domain name (ex: tamo.com, tamo.co.uk are two different companies)This is not a made-up word (as its being done when combining Tata and Motors). The Respondent further claims that the word “TAMO” is not commonly associated with the Complainant’s brand.
The Respondent claims that, the Domain Name was created before the Trademark application date of the Complainant. Therefore, this Domain Name was not registered in any form of Bad Faith.
The Respondent claims that :”UNDEVELOPED.COM” is a passive sales page where anyone an hold a domain name, when it is not yet developed. It allows the Respondent to gauge the market, see visitor analytics and receive communications. Further, the Respondent claims, that it is unreasonable to accuse the Respondent for Bad Faith just because the Respondent is the owner and has not regulations / rules saying that he cannot sell a Domain Name for sale page that has no reference to anything related to the Complainant’s brand.
The Respondent claimed that all Annexes are inappropriate as refer to events post registration of the Domain Name www.TAMO.in. Further, screenshots as to Google Results are geo-location based, it hows location of Complainant’s attorney,while Respondent is located in UK.
I. Similarity to the Trademark
The filing of Trademark Applications by the Complainant upheld as valid in support of Trademark. Also Complainant owning similar TAMO.co.in, though it registered 3-4 months after the Respondent, held in favor of the Complainant.
II. Legitimate Interest
Held that Domain being parked, the Respondent doesn’t have any legitimate interest, no weight given to the generic nature of the Domain Name. Further, Arbitrator states that Respondent hasn’t provided any evidence to substantiate it is commonly known by the disputed domain name or the Respondent actually engages in any business or commerce under the name “TAMO”. Therefore second element of the INDRP held as proved !
III. Bad Faith
The inaction / passive holding and also demand by the Respondent from Complainant has been upheld as Bad Faith.
The date of Registration of the Domain Name whih pre-dates Trademark Registration has been taken into account only to analyze that Domain Name has not been registered in Bad Faith. But use of the Domain Name has been upheld as Bad Faith, which is enough to prove the third element of the INDRP.
Accordingly, the Domain Name has been ordered to be transferred by the Arbitrator and no orders as to costs.
Our Opinion: We think the Respondent had legitimate rights to hold the domain name, as not only registration of disputed domain name Tamo.in predated TAMO.co.in but also before any application was moved before the Trademark Registry or any publicity for done for TAMO (pending) mark of the complainant. Above all, TAMO mark never has been registered and has a generic meaning as well… similar things have been upheld in UDRP decisions, where even when the domain was offered for sale.
The only thing Respondent defense lacked was that he did not use any UDRP precedents to support the facts of the case, which could only have helped in the given circumstance and it is always advisable to sought help of some legal professional/expert or get in touch with us for basic Free Guidance in such matters !