Tata obtains transfer of 'oktatabyebye.com' in controversial decision

International
In Tata Sons Ltd v mmt admin (Case D2009-0646, August 11 2009), in a controversial decision, a World Intellectual Property Organization (WIPO) panel has ordered the transfer of the domain name 'oktatabyebye.com' to Tata Sons Ltd.

mmt admin - commonly known as MakeMyTrip - is the owner of the domain name 'oktatabyebye.com', an online forum for the travel community. Tata filed a complaint with WIPO's Arbitration and Mediation Centre, arguing that the domain name included the word 'tata', which is identical to its well-known registered trademark and service mark TATA. Tata further argued that it had statutory and common law rights in the mark by virtue of its long and continuous use. Tata also contended that because the domain name incorporated its TATA mark in full, there was a likelihood that the relevant public would be misled into believing that the domain name was associated with, or had been authorized by, Tata.

Furthermore, Tata contented that mmt was not usually known by the name Ok Tata Bye Bye and, therefore, the sole purpose of registering the domain name was to misappropriate the reputation associated with the TATA mark. Tata also stated that mmt:

  • offered no legitimate goods and services through the website attached to the domain name; and
  • conducted its main business activities through a separate domain name, 'makemytrip.com', which was registered in 2000.
In addition, Tata alleged that since mmt did not conduct any commercial activities through the website attached to the domain name 'oktatabyebye.com' (but rather routed all commercial queries through 'makemytrip.com'), the latter had registered the domain name only for the purpose of taking advantage of the reputation and goodwill attached to the TATA mark.

mmt raised several arguments in its defence. First, mmt alleged that:

  • the word 'tata' is commonly used in India and other countries to say goodbye; and
  • the domain name consisted of the common phrase 'ok tata bye bye', which denotes travel, journey and related activities, particularly in Indian parlance.
mmt also emphasized the fact that it used the word 'tata' as a generic way of saying goodbye, and not as a standalone mark. Finally, mmt argued that use of the domain name did not:

  • constitute bad faith;
  • derive illegitimate gains from the domain name;
  • divert Tata's business (as Tata did not offer travel services); and
  • confuse the public as to the source of its services.
Having evaluated the arguments of both parties, the panel was of the opinion that because the domain name incorporated the TATA mark in full, the addition of the words 'ok' and 'bye bye' were insufficient to avoid a likelihood of confusion.

Further, the panel pointed out that mmt did not conduct any activities under the name Ok Tata Bye Bye. The panel also observed that mmt offered no goods and services through the website attached to the domain name, but rather used the domain name to direct users to its main website. The panel concluded that mmt had no legitimate rights or interests in the domain name and was merely using it as a “fishing net to catch new fish”. Interestingly, the panel stated that the most likely reason why mmt had registered a domain name incorporating the TATA mark was that it wanted to profit from the traffic generated by the reputation of the TATA mark. Moreover, the panel concluded that such conduct was a manifestation of the bad-faith registration and use of the domain name.

Finally, the panel observed that mmt had no rights in the TATA mark (even though mmt never made such a claim), but did not address the issue of whether a third party would be able to use the word 'tata' in its everyday meaning. On the contrary, it seems that the well-known status of the TATA mark has entirely overshadowed the dictionary meaning of the word 'tata'.

mmt has now appealed the decision. Although WIPO does not provide an appeal mechanism, WIPO orders can be stayed by applying to a national court with competent jurisdiction.

Avantika Mehta, Legasis, Mumbai

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