Memo of the Month.http://arbiter arbiter n. in some jurisdictions the name for a referee appointed by the court to decide a question and report back to the court which must confirm the arbiter's finding before it is binding on the parties..wipo.int/domains/decisions/html/d2000-0479.html ADMINISTRATIVE PANEL DECISION Tata Tata (tä`tä), Parsi family of Indian industrialists, centered at Mumbai. The Tata enterprises, which encompass vast holdings in iron and steel, motor vehicles, power utilities, financial services, computer software, chemicals, textiles, and telecommunications, were founded by Jamshedji Nusserwanji Tata (1839–1904), who Sons 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. Such confusion may not be found if the products or businesses are clearly not in the actual or potential product markets or geographic area of the other." 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 of Companies is collectively referred to as "Tatas" throughout the world. One might think, nevertheless, that the inclusion of the word "bodacious" 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 TATAS - Transportation Aviation Test And Support 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 (v  s of doubt, constitutes a famous (or, in international parlance Parlance - A concurrent language.["Parallel Processing Structures: Languages, Schedules, and Performance Results", P.F. Reynolds, PhD Thesis, UT Austin 1979]., 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 service mark n. a word, name or symbol (or a combination) which identifies a person's services from any others, similar to a trademark which identifies the maker of a product. Example: Chet's Chimney Service is identified by an elf covered with soot holding a broom, with a big "C" on the elf's chest. That is Chet's service mark, which belongs to him. Like a trademark a service mark can be registered with the U. S. Patent and Trademark Office to protect it.. 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 Unabridged Dictionary of the English Language": (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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