Memo of the Month.http://arbiter.wipo.int/domains/decisions/html/d2000-0479.html ADMINISTRATIVE PANEL DECISION Tata Sons Tata Sons is a promoter of the key companies of the Tata Group and holds the bulk of shareholding in these companies. It was established as a trading enterprise by Group founder Jamsetji Tata in 1868. The chairman of Tata Sons has traditionally been the chairman of the Tata Group. Limited v. D & V Enterprises Case No. D2000-0479 Re: Pornographic Web site - www.bodacious-tatas.com a) Domain Name "Identical or Confusingly Similar confusingly similar adj. in the law of trade marks, when a trade mark, logo or business name is so close to that of a pre-existing trade mark, logo or name that the public might mis-identify the new one with the old trade mark, logo or name. " It is clear to the Panel that an integral part of the Domain Name registered by the Respondent in this case, namely "tatas," is confusingly similar, and almost identical, to the Complainant's TM TATA. It is true, of course, that the Respondent, in its Domain Name registration, has used "tata" plus the addition of the letter "s" whilst the Complainant's trademark has no "s." This, however, is of no benefit to the Respondent. In the Complainant's submission, which is amply substantiated by copies of articles and reports submitted (see: Complaint - Annexures "E" and "F") the Tata Group The Tata Group is India's largest conglomerate company, with revenues in 2005-06 of Rs. 967,229 million (US $21.9 billion), the equivalent of about 2.8% of India's GDP, and a market capitalisation of US $57.6 billion now (only 28 of the 96 Tata Group companies are publicly listed). of Companies is collectively referred to as "Tatas" throughout the world. One might think, nevertheless, that the inclusion of the word "bodacious bo·da·cious also bow·da·cious or bar·da·cious Southern & South Midland U.S. adj. 1. Remarkable; prodigious. 2. Audacious; gutsy. adv. 1. Completely; extremely. 2. " in the domain name registered by the Respondent, taken together with the addition of the letter "s" to TATA, could create a sufficient distinction, for trademark purposes, between the Complainant's TM TATA, on the one hand, and the Respondent's Domain Name on the other. Such a contention, however, is untenable in the view of the Panel, by virtue of the very high level of goodwill that both TATA and TATAS have acquired. Further, TATA, without any vestige vestige /ves·tige/ (ves´tij) the remnant of a structure that functioned in a previous stage of species or individual development.vestig´ial ves·tige n. of doubt, constitutes a famous (or, in international parlance, well known) mark - a subject to which the Panel will return. ... It must be said, also, that it is now generally accepted in most countries that well-known marks, particularly those surrounded by an aura of high repute, excellent quality and respectability, deserve wide protection. This the Panel holds to be the case with the TM TATA and its corresponding service mark. In this area, therefore, the addition of a word like "bodacious" ["South Midland and Southern U.S.-1. "thorough"; "blatant"; "unmistakable"; 2. "remarkable"; "outstanding"; 3. "audacious"; "bold"; "brazen" - "Webster's Encyclopedic en·cy·clo·pe·dic adj. 1. Of, relating to, or characteristic of an encyclopedia. 2. Embracing many subjects; comprehensive: "an ignorance almost as encyclopedic as his erudition" Unabridged Dictionary of the English Language English language, member of the West Germanic group of the Germanic subfamily of the Indo-European family of languages (see Germanic languages). Spoken by about 470 million people throughout the world, English is the official language of about 45 nations. ": (1989)], and the addition of the letter "s", does not render the Domain Name less identical or less confusingly similar to a trade or service mark. Indeed, the opposite is true, particularly when one considers most of the meanings attributed to the word "bodacious." |
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