World Intellectual Property Organisation orders an Israeli company to transfer its confusingly similar ‘tata-communications.com’ domain to Tata. Registered in bad faith, respondent’s goal was to “clearly compete” with Tata Communications.
Tata Sons Ltd. filed a complaint on behalf of affiliate Tata Communications Ltd. before the Administrative Panel of the World Intellectual Property Organisation, disputing the confusingly similar domain registered by the respondent.
Tata Communications provides information technology services in over 200 countries and owns the internet domain ‘tatacommunications.com’.
The infringing domain, tata-communications.com’, was registered in Australia by an Israeli company under the guise of ‘Accounting Tata Communications, Tata Communications Limited’. It was claimed the respondent carried on a networks and telecommunications business, similar to Tata Communications.
The Administrative Panel noted that TATA and formative marks were registered by Tata Sons Ltd. and its group companies, in Israel. In fact, the respondent’s application to register TATA COMMUNICATIONS as a trademark had been refused by the Israeli Ministry of Justice.
The respondent also appeared to be targeting many of its services to “clearly compete with those offered” by Tata Communications. Moreover, though the respondent claimed to be carrying on the business of network and telecommunications it had tendered no evidence to substantiate the claim.
The Panel accepted that Tata had established its trademark rights and the requirements for proving the disputed domain confusingly similar under the Uniform Domain Name Dispute Resolution Policy had been satisfied.
The Panel admonished the respondent for its tacit awareness of Tata’s website at that domain name, which exactly corresponded to its company name. It most likely motivated the hyphenated domain tata-communications.com.
The respondent had also failed to disclose that its trademark application for TATA COMMUNICATIONS had been rejected before the hearing.
It never proffered reasons for adopting the ‘Tata’ name for its own company and domain, particularly since ‘Tata’ is neither descriptive nor a Hebrew or English dictionary word. The Panel assessed the respondents to have adopted the disputed domain in bad faith.
The Panel ordered the disputed domain be transferred to Tata.
But that’s not quite the whole story. Part 2
Tata Sons Ltd. v Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Accounting Tata Communications, Tata Communications Limited