DECISION

 

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.

 

Registration Or Use in Bad Faith

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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