Cyber Crime Branch Advisory The Nigerian Scam

Important Links • Cyber Crime Investigation Cell • Delhi Police • Delhi Traffic Police

TATA WINS DOMAIN NAME "TATA.ORG"

BY

SHRI PAVAN DUGGAL, CYBERLAW CONSULTANT, PRESIDENT, CYBERLAWS.NET MEMBER, MAC, ICANN

Yet another win for an Indian Corporate comes in the field of domain names. The domain name "tata.org" has been legally won by Tata Sons Ltd. In a recent decision dated 4.4.2000,the WIPO Arbitration and Mediation Center in its administration panel decision of even date has held that the domain name "tata.org" standing in the name of The Advanced Information Technology Association, Mumbai should be transferred to the complainant being Tata Sons Ltd.

In the present case, the complainant, Tata Sons Ltd., filed their complaint with WIPO Arbitration and Mediation Centre on 19.2.2000 under the Uniform Domain Name Dispute Resolution Policy, Rules and supplemental rules made thereunder. The respondent in the case namely The Advanced Information Technology Association, Mumbai was duly served by email, facsimile and by courier service. The respondent did not choose to contest the complaint and as such the respondent was proceeded ex-parte.

Under the provisions of the aforesaid rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. As such, the WIPO Centre panel decided the case on the basis of the complaint.

>From the perusal the complaint as also the documentary and other evidence placed on the record, the WIPO Center came to the conclusion that the name/mark TATA is a "well-known" mark and that the said mark has been granted protection by means of various orders passed by various courts in India.

It was further held "The mark/name TATA is synonymous with quality products and the same signifies a sense of reliability. Consumers from all classes of society consisting of urban, rural, semi-urban etc., are familiar with the TATA mark/name. The word TATA apart from being a rare surname, has no obvious meaning and is entitled to a very high degree of protection".

The WIPO Centre concluded that since the respondent belongs to the same city as that of the complainant, the respondent is obviously aware of the long standing, enormous reputation of the name TATA and has adopted an identical domain name. The WIPO Center further held that the respondent is merely "hoarding" the said domain name as is clear from the fact that though the domain name was registered about 3 years back, the same had not been activated till date. The WIPO Center further held that even if a website under the domain name had been activated, in the facts and circumstances of the case, it would be still constitute dishonest adoption and misappropriation.

The WIPO center further agreed with the complainant that the respondent's domain name "tata.org" is identical to the trade mark TATA in which the complainant has rights and that the respondent has not legitimate interest in the said domain name. The WIPO Centre further came to the categorical conclusion that the registration of the domain name "tata.org" is a "bad faith registration" as potential customers would be induced to subscribe to the services of the impugned websites or to deal in some matter with the respondent believing them to be licensed or authorized by or having a direct nexus or affiliation with or endorsed by the complainant.

The said decision by the WIPO Arbitration and Mediation Center is of tremendous importance with specific reference to the context of India as lots of people have deliberately indulged themselves in cybersquatting in the hope of earning quick millions. The judicial principles of "hoarding", "dishonest adoption" and "misappropriation of domain name" as spelt out by this judgement are likely to have a far reaching consequence for further domain name dispute litigations in the country. The said judgement has also gone ahead to establish another important principle in this emerging field of law that if the cybersquatter is based in the same city in which the complainant is also based or has a presence there in, then it has to be presumed that the cybersquatter is and would be aware of the reputation of the name /trademark/businessmark/ housemark/ corporate name of the complainant when he adopts an identical domain name. Further the said judgement lays down that the operation or otherwise of a website, under the said domain name, would not change the factum of coming to the conclusion of dishonest adoption and misappropriation of the domain name. The previous judicial recognition of the complainant's domain name in different litigations have been made as a very sound basis by the WIPO Centre for arriving at the conclusion about the recognition of the complainant's rights in the impugned name/trademark/businessmark/ housemark/corporate name.

This decision in case No. D2000-0049 marks an important chapter in the growth of the relevant principles of law concerning domain name disputes resolution with specific reference to India.