Tata Sons Private Limited Bombay House,
24 Homi Mody Street Mumbai – 400001. India
… THE COMPLAINANT
11, Chandkheda Nagar Gandhinagar. Gujarat. 382 424. India
… THE RESPONDENT/ THE REGISTRANT
IN THE MATTER OF DISPUTED DOMAIN NAME: – TATAJOB.IN1
ARBITRATION PANEL: – MR.S.C.INAMDAR, B.COM. LL.B., F.C.S.
DELIVERED ON THIS 18th DAY OF DECEMBER TWO THOUSAND EIGHTEEN AT PUNE, INDIA.
II SUMMARISED INFORMATION ABOUT THE DISPUTE: –
SR. NO. PARTY TO THE DISPUTE NAME ADDRESS
01 COMPLAINANT Tata Sons Private Limited Bombay House, 24, Homi Mody Street, Mumbai. 400 001. India
02 AUTHORISED REPRESENTA TIVE OF THE COMPLAINANT Achuthan Sreekumar Anand & Anand Plot No. 17A, Sector 16A, Film City, Noida. 201 301. INDIA
03 RESPONDENT / REGISTRANT Akash Patel 11, Chandkheda Nagar, Gandhinagar, Gujarat. 382424
04 DOMAIN NAME REGISTRAR Godaddy.com GoDaddy Legal Deptt., 14455 North Hayden Rd, Suite 219, Scottsdale, AZ-85260
CALENDER OF MAJOR EVENTS:-
Sr. No. Particulars Date (All communications in electronic mode)
01 Arbitration case referred to me by NIXI 29.11.2018
02 Acceptance given by me 29.11.2018
03 Hard copy of complaint received 06.12.2018
04 Notice of Arbitration issued, with the period to file reply, if any, latest by 16.12.2018 06.12.2018
05 Purported Registrant / Respondent sent mail requesting to send further mails to his email id, different from registered email id and also showing willingness to act as per directions 09.12.2018
06 Above email forwarded to the Complainant with instruction to file his say if any, latest by 12.12.2018 09.12.2018
07 Notice of closure of arbitration issued 17.12.2018
08 After issue of Notice of Closure of Arbitration, emails received from Registrant showing willingness to surrender domain name 17.12.2018 & 18.12.2018
09 Award passed 18.12.2018
III PARTICULARS OF DISPUTED DOMAIN NAME & REGISTRATION:
1. Disputed domain name is TATAJOB.IN’.
2. Date of registration of disputed domain name by Respondent is 02.07.2018
3. Registrar is GoDaddy.com LLC (IAEA ID 146)
IV. PROCEDURE FOLLOWED IN ARBITRAION PROCEEDINGS: –
1) Arbitration proceedings were carried out as per .In Domain Name Dispute Resolution Policy (INDRP) read with INDRP Rules of Procedure, Indian Arbitration Act, 1996 and Code of Civil Procedure, wherever necessary.
2) The parties were requested to expedite their submissions so as to enable this panel to pass award within the 60 days time frame prescribed.
3) Copies of all communications were marked to both the parties and NIXI.
4) No personal hearing was requested / granted / held.
VI BRIEF INFORMATION OF THE COMPLAINANT: –
The Complainant in these arbitration proceedings is Tata Sons Private Limited, which represents entire Tata Group of companies. The complaint is based on the registered trademark TATA of the Complainant. The Complainant has, among others, a subsidiary by the name Tata Industries Limited (founded in 1975). The Respondent stated on the said website that it is a website of Tata Industries and they are recruiting people to market its FMCG products in every city and therefore it is evident that the Registrant has created this website to defraud people and extract money from the innocent public.
The Complainant which was established in the year 1917 as a body corporate, is a promoter and principal investment holding company of the house of Tata group which is India’s oldest, largest and best-known business conglomerate, having a total revenue of about US $ 103.27 billion in the year 2016-17. The Complainant, along with its group companies, subsidiaries and companies promoted by it are the country’s largest private sector employer consisting of over 100 major operating companies.
The TATA group of companies are found in various sectors such as textiles, iron and steel, power, chemicals, hotels, automobiles, computer software, electronics, telecommunications, financial services, insurance, mutual funds, tea, technology, retail, engineering, housing and real estate development, infrastructure, consulting, aviation etc. in India.
The Complainant is the registered owner of about 82 trademarks containing the word TATA as tabulated in Annexure D of the Complaint. For the sake of brevity, the repetition has been avoided here.
VII SUMMARY OF THE COMPLAINT: –
The Complaint is, inter-alia, based on the following points, issues, representations or claims in brief:-
(A) CONTRAVENTION OF THE REGISTERED TRADEMARKS AND DOMAIN NAMES OF THE COMPLAINANT (CONTRAVENTION OF POLICY PARA 4(i) OF THE .IN DOMAIN NAME DISPUTE RESOLUTION POLICY) (INDRP) : –
i The Complainant has furnished a list of registered marks in India comprising the word and marks TATA1. There are about 82 marks listed in Annexure D of the Complaint.
ii The Complainant is proprietor of TATA trademark as also TATA formative marks having exclusive rights in the same and is entitled to take action against any unauthorised use of the same by third parties.
iii. The Complainant also owns trademark registrations for the mark TATA as well as various TATA formative marks in over 50 countries besides India. A list of such registered trademarks is furnished in the Annexure – S.
iv. The Complainant has devoted an enormous amount of time, effort and energy in promoting and advertising the said mark in print and online media and the said mark is consequently identified solely with the Complainant. The Complainant has provided a list of several domain names comprising its registered mark TATA such as www.tata.com, www.tatacapital.com, www.tatasecurities.com, www.tatahousing.com, tatametaliks.com and so on.
v,. The Complainant further states that several judgments / court orders have been passed in its favour by various courts including High Court of Delhi such as Tata Sons Ltd. V/s Manu Kosuri (2001), Tata Sons Ltd. V/s A.K.Chaudhary & others (2009), Tata Sons Ltd V/s Mahaveer Parmar & Anr (2015) and so on. Several awards have been passed in favour of the Complainant by WIPO Arbitration and Mediation Centre in international disputes related to its registered marks. Few of them are Tata Sons Ltd. V/s Ramadasoft, Tata Sons Ltd V/s Tata Telecom Inc/ Tata telecom.com, Tata Tea Ltd. V/s Gem Lifts Ltd, and so on. Thus the Complainant has established exclusivity and reputation associated with the registered trademarks owned by it.
The Respondent’s registration of the disputed domain on 02.07.2018 (as per whois data base) is quite subsequent to the Complainant’s use of its well known, registered and internationally reputed TATA marks.
vi. The disputed domain name www.tatajob.in is identical to the well known trade / service marks of TATA of the Complainant. By registering this domain name the Registrant attempts to associate itself with the Complainant by incorporating the name TATA in full in the said domain name. This is also an attempt to mislead innocent public by stating that they are a part of Tata Industries which is a subsidiary of the Complainant. Incorporation of a trademark in entirety in a domain name is sufficient for establishing confusing similarity is a settled principle of law and has been upheld in numerous UDRP adjudications such as Magnum Piering Inc. V/s The Mudijackers – WIPO case NO. D2000-1525.
vii. The Registrant has not been associated with nor has been in any manner, licensed, authorised or endorsed the use of its famous and well known mark TATA. Such use would confuse the internet users and unsuspecting members of the public who do not know about the facts.
viii. The disputed domain name has been registered with mala fides which is evident from the fact that Registrant has been asking the innocent and unwary public to provide them with their personal data, send out bulk whatsapp to people in their contact list, post a notification on their Facebook wall, download their app from the Google Store and register themselves for making an application to Tata Industries after paying a registration amount. Extracts from the website hosted on the disputed domain name are enclosed as Annexure AAC.
ix. Registration of disputed domain name by the Registrant has prevented the Complainant from using the same legitimately wherein it has established interests. It is a clear case of domain name squatting by the Respondent.
(B) NO RIGHT OR LEGITIMATE INTEREST IN DISPUTED DOMAIN NAME (PARA 4 OF INDRP):-
i The Respondent is taking advantage of innocent public who may or may not enquire about the authenticity of the Respondent or its relation with the Complainant. The Complainant has not licensed / permitted the Respondent to use the said trademark or formative domain name including the word TATA.
ii. There can be no plausible explanation for the registration and use of the impugned domain name by the Respondent as the trade / service mark TATA of the Complainant is exclusively used by the Complainant, its group companies, subsidiaries, and the companies promoted by it.
(C) REGISTRATION AND USE IN BAD FAITH (PARA 4(iii)) OF INDRP: –
i The Respondent should have known of a Complainant’s trademark in wide use on the internet or otherwise, and such knowledge of the Respondent is an indicator of the bad faith of the Respondent in registering the disputed domain name. (Research in Motion Limited V/s Privacy Locked LLC / Mac Collicot -WIPO Case No. D2009-320)
ii The disputed domain name was created by the Respondent on 02.07.2018. At that time the Respondent was aware of the commercial value and significance of the various domains owned by the Complainant of which the word TATA forms a conspicuous part. It is for the exact reason why the Respondent has grabbed the impugned domain name.
iii The sole purpose of the Respondent acquiring disputed domain name was to misappropriate the same along with the goodwill and reputation accruing to it and to dupe the public into paying money for illegal gains and profits.
iv. According to the Complainant, the website requests the name of the user and then resolves into a webpage which directs the user to send out the link to this website to five of their contacts, once that is done it requests the user to post the webpage’s link on their Facebook wall, after that it requests the user to download their mobile application and finally they request the user to pay registration for making the application. Thus the Respondent is not only indulging in infringement and fraudulent activities but are also committing the offence of spamming and collecting the personal data of public which they can use for phishing. The data collected in this manner can also be used for making false ids which can be further used in committing other crimes.
The Complainant has no control over the nefarious and illegal activities as is being carried out by the Respondent through the impugned domain name and he may be held accountable for the same.
v. The Respondent has blocked the Complainant from using legitimately, the impugned domain name to which it is lawfully entitled.
vi. In every likelihood, actual or potential visitors to the website parked on the impugned domain name, will be induced to believed that the Complainant has authorised, endorsed or licensed the use of its trade / service mark TATA by the Respondent and that the Respondent has some connection with the Complainant in terms of a direct nexus of affiliation with the TATA group or has been authorised by the Complainant to carry out their activities of recruiting for the Complainant’s subsidiary, Tata Industries through the impugned domain name.
(D) REMEDIES SOUGHT BY THE COMPLAINANT: –
On the above background of the Complaint and reasons described therein the Complainant has requested for TRANSFER OF DISPUTED DOMAIN to the Complainant, and imposition of heavy costs.
VIII RESPONDENT’S DEFENSE: –
The Respondent has sent two emails as follows: –
(a) On 5th December 2018, he has categorically stated that domain can be closed, he won’t mind. Copy of his email is as follows: –
To: ics_pne@yahoo .co.uk
5 Dec at 17:41
Your email address is available to us. If you have any questions, please do not hesitate to contact us.
If you want to close, you can close the domin www.tataiob.in. We do not mind.
INDRP Case no-1054 Tata industries Ahmedabad Gujarat, India email@example.com
(b) On 17th December 2018 and 18th December 2018, he writes to say ‘give domain to anyone who has right over it. Please do not trouble myself and my web designed ……, case should be filed against him who has sold this domain name.’ These two emails are sent from email id different from the one which appeared in whois data.
Another email was received in Hindi on 18th December 2018:-
Tata Industries <firstname.lastname@example.org>
To: ics_pne@yahoo. co.uk
18 Dec at 08:36
Patel Shailesh jayantilal Tata industries Gujarat, India email@example.com
Briefly, the Respondent claims to be the owner of Tata Industries (may be a firm). However he has not furnished any document such as registration document, Shop Act license, PAN card etc. in support of his claim. Importantly, he has requested in many mails not to send emails on the email id – firstname.lastname@example.org, which is provided at the time of registration of domain name in his name. Providing wrong information to register domain name is another offence he has committed.
Since he could not substantiate his claim in any manner provided in INDRP Rules of Procedure, his contention of being owner of Tata Industries cannot be considered for present arbitration proceedings.
On the other hand he has shown willingness to cancel / transfer disputed domain name in his mails, from which it appears that he has confessed his mistake / wrong doing in registering disputed domain name.
VIII REJOINDERS OF THE PARTIES: –
In view of the email dated 5th December 2018, the Complainant was asked to file his rejoinder / say on the same. However no such say / rejoinder has been filed by the Complainant.
IX EVIDENCE RELIED UPON: –
This panel has, inter-alia, placed reliance upon the following evidences / details thereof, submitted by the Complainant: –
1. Copies of trademarks registered in India and in other countries in the name of the Complainant
2. Copy of printout of the whois details
3. Emails received from the Respondent dated 5th December 2018, 17th December 2018 and 18th December 2018.
XI FINDINGS: –
Based on the complaint, contentions and annexures attached to it, this panel has drawn following findings: –
1. The Complainant has registered trade / service marks incorporating the word TATA in which it has legitimate interests and rights.
2. The registrations of these marks is much prior to the registration of the disputed domain name.
3. The Complainant has not authorised / licensed to the Registrant to use the said word TATA’ and thus such use by the Registrant in his registered / disputed domain name is illegal and unauthorised as also infringement of legal rights and interests of the Complainant in impugned domain name.
4. The Respondent, in his emails dated 5th December, 2018, 17th December, 2018 and 18th December 2018, has clearly stated that domain name may be given to TRUE OWNER. Thereby he has admitted that he is aware that he does not have legitimate interests or rights in the disputed domain name.
5. On perusal of the screenshots of disputed domain, furnished by the Complainant, it is evident that the Respondent has designed it in such a way that it would appear to be official website of the Complainant. It is an overt act of the Respondent to attract innocent internet users to disputed domain and to make them to believe it to be official or affiliated website of the Complainant. It is crystal clear from the procedure prescribed for application of job and also modus operand! to collect personal data of not only of the applicant but also of other five persons, is definitely a design to misuse the same for the purpose of making illegal money by encashing the Complainant’s reputation.
6. The Respondent is also collecting money for registration for the purported employment in Tata Industries. The job descriptions are general. Expected educational qualifications and experience are stated just for the sake of stating only. No specific description of products to be sold has been furnished. This panel does agree with the Complainant that it is a mala fide attempt on the part of Respondent to scam the innocent members of the public and make illegal economic gains and profits by misusing and free riding on the goodwill and reputation associated with the registered and well known trademark TATA of the Complainant.
7. From the emails dated 17.12.2018 and 18.12.2018, it is observed that the Respondent apprehends of some action that would be taken against him and his web designer. This apprehension comes out of fear which is a result of purposeful act to deceive innocent people.
8. The Respondent is not known by the word TATA or any resembling word to it.
9. The Respondent is not making use of disputed domain name for non-commercial or charitable purposes.
10. The Respondent has totally failed to establish any nexus with the impugned domain name.
XII CONCLUSION: –
On the basis of the averments in the Complaint, citations, documentary evidence and other substantiating points, this Arbitration Panel has come to the following conclusions: –
a. the registered domain name contains its registered trade / service mark in its entirety and is totally identical or confusingly similar to a name, trademark in which the Complainant has legitimate rights and interests.
b. the Respondent has no rights or legitimate interests in respect of the domain name, nor he has been authorised, licensed / permitted to use the said domain name.
c. the disputed domain name is registered and is being used in bad faith by the Registrant / Respondent.
On the basis of above findings on issues, foregoing discussion, conclusion and as per the remedies requested by the Complainant, this panel passes the following award:-
a. The disputed domain name “TATAJOB.IN” be transferred to the Complainant.
b. The Respondent shall pay cost of Rs.50,0007- to the Complainant.
Place:- Pune, India
NATIONAL INTERNET EXCHANGE OF INDIA