Crime Branch Advisory
The Nigerian Scam
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
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
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/
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.