Tata Sons Ltd. v. US Citizen aka Sojan
Pulickal
Claim Number: FA0508000545232
PARTIES
Complainant
is Tata Sons Ltd. (“Complainant”)
represented by Sally M. Abel, of Fenwick and West, LLP, 801 California Street, Mountain View, CA
94041. Respondent is US Citizen a/k/a Sojan Pulickal
(“Respondent”), 3301 Salem Court, Rochester Hills, MI 48306.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue, <tata.us>,
is registered with Go Daddy Software,
Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Jeffrey
M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 22, 2005; the Forum received a hard copy of the
Complaint on August 23, 2005.
On
August 23, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <tata.us> is
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
August 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
The
Response was received after the deadline, the electronic version on September
21, 2005, and the hard copy on September 26, 2005. Therefore, the Forum does not consider the Response to be in
compliance with Rule #5(a).
Complainant’s
timely additional submission was received on September 23, 2005.
On September 27, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey M.
Samuels as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the principal investment holding company of the Tata Group, which is India’s
oldest, largest, and best-known conglomerate.
Since its inception over 100 years ago, Complainant has used its TATA
mark in connection with textiles, steel, power supply, automobiles,
electronics, financial services, mutual funds, computer software,
telecommunications, and tea. Tata’s
worldwide sales in 2003-4 equaled $14.25 billion, the equivalent of about 2.6%
of India’s GDP.
Complainant
owns over 180 trademark registrations around the world for its TATA and
TATA-based marks and also owns numerous domain names incorporating TATA,
including <tata.com> and <tata.org>.
Complainant
alleges that the domain name in dispute – <tata.us> – is identical
to Complainant’s mark. It further
contends that Respondent has no rights or legitimate interests in the domain
name <tata.us>. According
to Complainant, Respondent has no relationship with or connection with the TATA
name or mark and Respondent’s name, Sojan Pulickal, bears no relation to the
domain name.
With
respect to the issue of “bad faith” registration or use, Complainant notes that
Respondent is one of the most prolific cybersquatters in the .us TLD, having
obtained 16 such registrations.
Complainant points out that no less than seven of Respondent’s domain
names incorporate the names of companies with a major presence in the U.S. or
India, including Buckman Labs, Wipro Limited, Rashtra Deepika Ltd, and Malaya
Manorama Co., Ltd.
Complainant
further alleges that Respondent has made no use of, or demonstrable
preparations to use the disputed domain name, despite holding the name for
three years, and that the same is true with respect to all sixteen .us domain
names Respondent has obtained.
In
view of the above, Complainant maintains, the conclusion is inescapable that
Respondent registered the <tata.us> domain name for the purpose of
selling it to Complainant for an illegitimate profit and to otherwise prevent
Complainant from using its TATA mark in the corresponding .us domain name and
to disrupt Complainant’s business in the important U.S. market.
Further
evidence of the requisite bad faith, Complainant alleges, is found in the fact
that Respondent has provided false WHOIS contact information, listing its phone
number as 1.1111111.
Complainant
also relies upon usTLD Rule 2(d), which provides that a domain name registrant
bears the burden of ascertaining whether a domain name registration violates or
infringes upon someone else’s intellectual property rights. “Respondent clearly
violated Complainant’s trademark rights by registering tata.us,” Complainant
declares. “Clearly, Respondent knew that tata.com was unavailable and at a
minimum failed to conduct an investigation to determine whether the
registration of tata.us would infringe Complainant’s trademark rights. This constitutes bad faith registration and
use.”
B.
Respondent
As
noted above, Respondent’s “Response” was untimely. The response was due September 19, 2005. On that date, Respondent’s representative
contacted the National Arbitration Forum requesting an extension of time
because he was busy with work. The
Forum directed Respondent to complete and submit the appropriate extension
request form before the expiration of the response period. Respondent did not file the appropriate
extension request and filed its “Response” the following day.
In
view of the above, the Panel, exercising its discretion, declines to consider
the late-filed Response.[1]
C.
Additional Submissions
The
Panel notes that Complainant filed a timely “Additional Submission,” in which
it argued that Respondent’s submission should be rejected as untimely and that,
if such submission was considered, it merely bolstered Complainant’s contention
that the tata.us domain name was registered or used in bad faith. For example, Complainant contends that
Respondent’s “submission” reveals that Respondent identifies himself with Indian
culture, “mak[ing] it all the more implausible that Respondent was unaware of
Tata at the time he registered the <tata.us> domain.”
FINDINGS
The Panel concludes that the <tata.us>
domain name is identical or confusingly similar to a mark in which Complainant
has rights, that Respondent has no rights or legitimate interests in the domain
name, and that the domain name was registered or used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
The Panel finds that the domain name <tata.us>
is, for all intents and purposes, identical to Complainant’s TATA mark. It is also beyond argument, in view of
Complainant’s long use of, and registrations covering, the TATA mark that it
has rights in such mark.
Rights or Legitimate Interests
The Panel finds that none of the
circumstances set forth in the applicable policy as demonstrating rights to and
legitimate interests in the domain name is applicable. There is no evidence that Respondent owns a
mark that is identical to the domain name; that it uses the domain name in
connection with the bona fide offering of goods or services, indeed the
evidence indicates that the domain name has not been in use for three years;
that Respondent is commonly known by the domain name; or that Respondent is
making a legitimate noncommercial or fair use of the domain name.
The Panel concludes that the <tata.us>
domain name was registered in bad faith.
The evidence supports a determination that Respondent, knowing of
Complainant’s ownership of the TATA mark, registered the domain name <tata.us>
in order to prevent Complainant from reflecting its mark in a corresponding
domain name. Further evidence of “bad
faith” registration consists of Respondent’s numerous registrations in the .us
TLD for names that correspond to U.S. and Indian companies and the providing of
false contact information. See Big Dog Holdings, Inc. v. Red River Farms,
Inc. FA 93554 (Nat. Arb. Forum Mar. 9, 2000); see also Travis Hill v. Needalife.com, FA 95345
(Nat. Arb. Forum May 8, 2000) (holding that a domain name was registered in bad
faith where the application for the domain name contained a false telephone
number).
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <tata.us> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: October 11, 2005
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[1] The Panel is aware that Rule 10(b) of the usTLD Dispute Resolution Policy requires that “each Party be given a fair opportunity to present its case.” It is also sensitive, however, to the need for the parties to these proceedings to comply with the applicable rules. While this Panel is generally quite “liberal” in agreeing to consider late-filed submissions, under the particular circumstances of this case, where Respondent was specifically advised as to the procedure to follow to seek an extension to file its Response and chose not to follow such procedure, the Panel declines to consider Respondent’s late Response.