Tata Sons Private Ltd. vs. Registration Private, Domains By Proxy, LLC / Victor TSB
WIPO Case No. D2021-1084
June 28, 2021
Panelist(s): Matthew Kennedy
TAATAS.com: The Indian Complainant is a part of well-known TATA Group, having business in multiple business sectors and Trademark rights in ‘TATA’. It is one of the top 100 global brands, having Trademarks registered in numerous jurisdictions, the first one dating back to 1942 in India. The Respondent is based in Sri Lanka having registered the domain name <taatas.com> in October 2020. The Complainant claimed it as a matter of cybersquatting, given the popularity of TATA brand with a good presence in Sri Lanka as well in relation to automobiles and housing. While the Respondent having an active website at the disputed domain name, was already offering a range of consumer agricultural products and indicating registered business name as well containing ‘TAATAS’.
The Respondent mainly relied upon the registered business name he had in Sri Lanka since 2017 – TAATAS Global Pvt. Ltd. and demonstrable preparations to use the domain name. The active website, registered business name, government approval, sales invoices, product listings and so on, considerably proved the legitimate interests in favor of the Respondent and hence the complaint was denied. The panelist noted that the registration of the Respondent’s company name, which bears remarkable similarity to the Complainant’s famous brand may merit further legal inquiry. Therefore, concluded that the Complainant may commence proceedings in a court of competent jurisdiction if it considers that it has valid grounds to allege trademark infringement or unfair competition.
Keywords: Dismissed, Bona Fide Business, India, Tata, infringement, Matthew Kennedy, WIPO, June 28, 2021