Domain name dispute: Okaytatabyebye for MakeMyTrip as WIPO rules in TATA’s favor
INTRODUCTION
Tata Sons Ltd. v. oktatabyebye.com[1] is a domain name dispute between Tata Sons and MakeMyTrip in 2009 before the WIPO Arbitration and Mediation Center’s administrative panel. The two relevant documents for the dispute are UDRP (Uniform Domain Name Dispute Resolution Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules).
UDRP is an ICANN (International Corporation for Assigned Names and Numbers) policy that resolves domain name disputes between parties. As per the policy, such disputes can be resolved by an agreement, court proceedings, arbitration that can lead to cancellation, suspension, or transfer of the disputed domain name. The aggrieved trademark owner can file a complaint in a competent court or approach a dispute resolution service provider.
FACTS
The complainant, in this case, was Tata Sons Ltd., a well-known Indian conglomerate with a group of companies functioning under its name. The respondent was MakeMyTrip because of its disputed domain name ‘oktatabyebye.com’. The question before the panel was whether the respondent had adopted a confusingly similar domain name.
A domain name can be understood as a mark for identification that indicates ownership and control of a particular website on the internet. Since domain names have to be unique and URL addresses, they come under the ambit of trademark law in many domestic legal systems.
After admitting the case, the WIPO panel initiated the proceedings, giving a fair opportunity to both the parties to present their arguments.
ARGUMENTS
Complainant
The contention of the complainant was based on three significant grounds:
- That the respondent had used a confusingly similar mark, infringing its right of a registered trademark.
- It did not have a demonstrable preparation in offering goods or services for the disputed domain name.
- They already had a domain name registered as ‘makemytrip.com’ and, with an ill intention, were using the domain name to misappropriate the complainant’s reputation.
Further, the complainant stated that they made an effort to settle the matter through a letter in 2008. In the letter, the complainant requested the respondents to discontinue the use of the disputed domain name, transfer it to the complainant and refrain from its use in any manner. As the respondent disagreed with complying with the requirements put forward, the matter reached the WIPO. One of the most significant reliefs that the complainant sought was the transfer of domain name from the respondent.
Respondent
The respondent submitted that ‘oktatabyebye’, launched in 2006, was India’s first online travel community platform for sharing travel experiences and recommendations. It also stated that its use of the word ‘tata’ in the domain name was based on the gesture, ‘ta ta’ used synonymously to ‘bye’ while traveling or going on a journey.
On the other hand, it claimed that MakeMyTrip started in the year 2000 as a travel consultancy, travel planning, and hotel/flights reservation website. Both websites were for entirely different classes of persons. Thus, it contended that both websites were unrelated, and the use of ‘tata’ was fair and bona fide.
It submitted that ‘tata’ in this context is generic and not distinctive. It further concluded that based on the given contentions, the domain name ‘oktatabyebye.com’ is not confusingly similar to the complainant’s registered trademark. The respondent is carrying out a genuine business service. Therefore, it asked the complaint to be dismissed.
DECISION
The panel held that the domain name used by the respondent is confusingly similar to the registered trademark of the complainant. It referred to earlier decisions of the WIPO panel. It held that if a domain name includes the complainant’s registered mark, it would be sufficient to establish confusing similarity for the marks even if other generic words are added to it. (EAuto, LL.C. v. EAuto Parts[2], Wal-Mart Stores, Inc. v. MacLeod[3], ERGO Versicherungsgruppe AG v. Idealist[4]).
Also, it did not find any evidence that the respondent intended to use the domain name to offer goods or services in good faith. The panel also established the bad faith concerning using the domain name ‘oktatabyebye’ as the respondent was using the website to advertise and make commercial gains by mentioning its prior registered MakeMyTrip on the website containing the disputed domain name.
Thus, the panel asked the respondent to discontinue the use of ‘oktatabyebye.com,’ transfer the domain name to the complainant, and refrain from using it in any manner in the future as per paragraph 15 UDRP and UDRP Rules.
Also read: What Is In That Basket- Infringement Or Bullying?
Comments
Interestingly, the panel did not consider ‘tata’ as a generic expression in this case, which is quite questionable as the word is often used with a synonymous phrase in common parlance. Also, it might be noted that even though both the websites of the respondent were offering different services, the panel did not find the differentiation to be sufficient or bona fide. Especially considering the diverse nature of both parties’ business, perhaps a more elaborate discussion on this issue was needed. Usually, well-established and reputed brands have the upper hand in trademark infringement/domain name disputes. And if there is not enough consideration on such core issues in a case, it might hinder the growth of new businesses.
References:
[1] Tata Sons Ltd. v. oktatabyebye.com, WIPO Case No. D2009-0646.
[2] EAuto, LLC v. EAuto Parts, WIPO Case No. D2000-0096.
[3] Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662.
[4] ERGO Versicherungsgruppe AG v. Idealist, WIPO Case No. D2008-0377.
Authored by: Anurag Kushwaha; Student, Department of Law, PIMR, Indore
Disclaimer: This article is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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