WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tata Sons Ltd v. mmt admin / Oktatabyebye.com

Case No. D2009-0646

1. The Parties

The Complainant is Tata Sons Ltd of Mumbai, India, represented by Anand & Anand, India.

The Respondent is mmt admin / Oktatabyebye.com of Gurgaon, India, represented by Lall

& Sethi Advocates, India.

2. The Domain Name and Registrar

The disputed domain name <oktatabyebye.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on

May 13, 2009. On May 14, 2009, the Center transmitted by email to eNom a request for

registrar verification in connection with the disputed domain name. On May 14, 2009, eNom

transmitted by email to the Center its verification response disclosing registrant and contact

information for the disputed domain name which differed from the named Respondent and

contact information in the Complaint. In response to a notification by the Center that the

Complaint was administratively deficient and also on the basis of the registrar-confirmed

registrant information as forwarded by the Center to the Complainant on May 26, 2009, the

Complainant filed an amendment to the Complaint on May 29, 2009. The Center verified

that the Complaint together with the amendment to the Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or

“UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the

Respondent of the Complaint, and the proceedings commenced on June 2, 2009. In

accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2009.

The Response was filed with the Center on June 22, 2009.

The Center appointed Pavan Duggal as the sole panelist in this matter on July 1, 2009. The

Panel finds that it was properly constituted. The Panel has submitted the Statement of

Acceptance and Declaration of Impartiality and Independence, as required by the Center to

ensure compliance with the Rules, paragraph 7.

On July 10, 2009, the Complainant made an unsolicited supplemental filing. On July 21,

2009, the Panel was pleased to pass the Administrative Panel Procedural Order No. 1 of

even date, by means of which the Panel, without giving its findings on the admissibility of

any supplemental filings at that stage, permitted the Respondent to file its sur-response. The

Respondent filed its supplemental filing (hereinafter, the “Respondent's Supplemental

Filing”) on July 30, 2009.

According with paragraph 10 of the Rules, the Panel required the extension of decision's

deadline.

4. Factual Background

The Complainant is Tata Sons Limited which is a company duly incorporated under the

Indian Companies Act, 1913 having its registered office at Bombay House, 24, Homi Mody

Street, Mumbai – 400 001, India. Its principal place of business is Mumbai, India, although

the Complainant does business in virtually every state within India and in several foreign

countries as well.

The Complainant is the principal investment holding company of the TATA Group of

companies, which is India's oldest, largest and best-known conglomerate, with a turnover

that is over USD 62 Billion. Total turnover for 2007-08 is stated to be Rs.251,543 crores

(USD 62.5 billion). Its genesis was in 1868 when Jamsetji Nusserwanji Tata set up a private

trading firm with a capital of Rs. 21,000 (equivalent to USD 428, approximately as per

current exchange rate). This sowed the seeds for one of India's most trusted business houses,

which has, over the years, become a household name, synonymous with excellence in almost

every field of business activity.

Since its inception, the Complainant has been continuously and consistently using the

trademark TATA for its business activities. The enterprises promoted by the Complainant

and the TATA Group have laid the foundation in the industrial core sectors, pioneering the

textiles, iron & steel, power, chemicals hotels and automobile industries in India. Today, the

TATA Group has a major presence in the field of automobiles, steel, power, chemicals,

telecommunications, retailing, computer software, tea, financial services and mutual funds.

The first TATA Enterprise was founded by Jamsetji Tata over 100 years ago with a textile

mill in Central India. Over the years, TATA enterprises entered various fields of commercial

activities. Most of these companies use TATA as the initial part of their trade name, like

Tata Steel, Tata Power, Tata Communications, Tata Motors, Tata Chemicals, Tata

Consultancy Services, etc. Thus TATA has become a house mark of the TATA Group and

source indicator of the diverse goods and services that are provided by the Group.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name infringes the right of its registered

trademark/service mark TATA.

The Complainant has based its contentions on the various grounds detailed in the Policy. It

is averred that the disputed domain name <oktatabyebye.com> includes the word TATA,

which is identical in part and confusingly similar as a whole to the well-known and

registered trademark and service mark TATA in which the Complainant has a statutory right

as well as rights in common law, by virtue of a long and continuous use and being its

registered proprietor thereof.

Thus the Complainant submits that the scope of confusion in the minds of the relevant group

of consumers by the Respondent's impugned website <oktatabyebye.com> is enhanced

further due to the fact that it incorporates the Complainant's corporate name and registered

trademark in full.

Furthermore, the use of the word TATA in the initial part of the domain name would be

understood as a reference to the Complainant because it is a registered and well-known

trademark.

It is further averred by the Complainant that since the disputed domain name comprises of

the well-known and famous trademark TATA it is evident that the Respondent cannot have

any rights or legitimate interests in the domain name. Further it is apparent that the sole

purpose of registering the disputed domain name <oktatabyebye.com> is to misappropriate

the reputation associated with the Complainant's well-known and famous trademark TATA.

Further the Respondent is not commonly known by the domain name <oktatabyebye.com>

nor has he made any demonstrable preparation to use the disputed domain name in

connection with a bona fide offering of goods or services. It is thus the Complainants

contention that the Respondent has no rights or legitimate interest in the domain name as:

- The Respondent is not a licensee of the Complainant and neither has the Complainant

granted any permission or consent to the Respondent to use the trademark TATA in any

manner or to incorporate the same in a domain name.

- The Respondent is not commonly known by the disputed domain name

<oktatabyebye.com>. In fact the Respondent is commonly known as MakeMyTrip. By the

Respondent's own admission, the name of his business is MakeMyTrip and not

“oktatabyebye” as is the case with the Complainant's business. The Complainant submits

that the Respondent has already registered a separate domain name <makemytrip.com> that

incorporates its company name in full. According to the Names View WhoIs Database this

domain name has been registered since May 05, 2000.

- The Complainant submits that the fact that the Respondent already has an existing domain

name completely resembling its own name and instead of using that domain name, it has

registered a domain name which does not show any connection whatsoever with its initial

registered domain name is prima facie proof of the Respondent's mala fide intentions to

benefit from the Complainant's world famous mark and reputation.

It is further averred that the Respondent has not shown any demonstrable preparation to use

the domain name in connection with a bona fide offering of goods and services.

It is further averred that the domain name <oktatabyebye.com> registered by the Respondent

incorporates as a whole the Complainant's well known and famous trademark TATA, which

shows that the Respondent has registered and is using the said domain name in bad faith.

The Complainant submits that it is open to the Respondent to register and cultivate a

separate domain name which incorporates his company name in full thereby avoiding

confusion with the Complainant's business. The Complainant submits that the fact that the

Respondent has made no such efforts is prima facie proof of the Respondent's mala

fide intentions to benefit from the Complainant's world famous mark and reputation.

The Complainant further contends that after having received the information about the

alleged website of the Respondent, the Complainant made an earnest effort to settle the

matter with the Respondent, via their letter dated July 3, 2008 to the representatives of the

Respondent, requesting them to inter alia:

(i) Discontinue use of domain name of <oktatabyebye.com>;

(ii) Transfer the aforesaid domain name to the Complainant in accordance with the

applicable procedures;

(iii) Refrain from all manner of use of the aforesaid domain name or any other mark, name,

domain name, etc that is confusingly similar to the trademark of the Complainant.

Although the Respondent through its representative replied to the aforesaid letter by a letter

dated July 11, 2008, it refused to accept the just demands of the Complainant by giving

vague reasons.

The Complainant has further pointed out that the services being offered by the Respondent

through the domain name <oktatabyebye.com> are similar to those being offered by its other

domain name <makemytrip.com>.

It has been contended that this fact clearly illustrates the ill intention of the Respondent

behind creation of the domain name <oktatabyebye.com> in order to infringe the intellectual

property rights of the Complainant, in spite of the fact that it already has another domain

name <makemytrip.com> and the same is providing similar services as that of the

<oktatabyebye.com>.

The remedy requested by the Complainant is to get the disputed domain name transferred to

it.

B. Respondent

The Respondent replied to the Complaint on the grounds that the usage of the word “tata” as

a gesture finds its mention in the origin of a place called Ta Ta Creek as far back as in the

year 1860. It is vehemently denied that the Respondent has no rights or legitimate interests

in the disputed domain name. It is vehemently denied that the domain in question is

confusingly similar to the trade mark TATA of the Complainant.

The Respondent has stated that the Respondent's primary website, “www.makemytrip.com”

began as a great idea and has gone on to pioneer the online travel industry in India.

<makemytrip.com> was launched in the year 2000 for the booming “USA to India” travel

market. It empowered Non Resident Indians (NRIs) with unmatched convenience of a 24/7

online travel portal and travel consultancy support. It was niche and then the Respondent hit

early success and then launched India operations in September, 2005 in real time bookings

of flights, hotels, holidays in the United States. Since its inception, it has been growing at a

fast pace to emerge as the foremost travel website in the United States to India market.

MakeMyTrip.com commands a 4% share of this NRI market, which is pegged at Rs. 4500

crore (USD 1 billion). The Respondent also acquired 1 million customers in 2007. Thanks to

<makemytrip.com>, over one million people have traveled with the 100% assurance that got

the best deals possible.

It has been further averred that <oktatabyebye.com>, on the other hand, is India's first online

travel community. This community is all about travel in India and the best place for travel

enthusiasts to find and share experiences and travel advice on India. It enables travelers to

capture and share travelogues, photos, features and recommendations with friends, family

and members. Reviews and votes ensure that the information is always up-to-date, useful

and remains transparent. It is averred by the Respondent that the services offered by both the

sites are entirely different with no relation whatsoever. Both cater to separate class of

persons. While <makemytrip.com> offers discounts and easy access to travel plans,

<oktatabyebye.com>, launched in 2006, lets these travelers make an online records about

their journey.

It is also stated that <oktatabyebye.com> lets travelers create personal travel blogs, or travel

journals, with detailed route maps, embedded photos and recommendations, and allows

them to easily share these with friends, family and others. Travel blogs, written by real

travelers, are a proven source of trusted information for people researching and planning a

trip. Travel shoppers can then easily find this travel information, including advice on hotels

and restaurants, from like-minded travelers. Prominently featured on <oktatabyebye.com>

are “hotel reviews” written by real travelers, “first person travelogues”, “travel photos”, and

“videos”, “member contributed destination features and reviews written by travelers”, “event

calendars” plus “travel related member queries & answers”.

The Respondent has stated that the impugned domain name is derived from the common

parlance “OK Ta Ta Bye Bye” since it signifies travel, journey and related activities. The

expression bidding farewell has been used by using the generic word “Ta Ta” in the same

flow as “OK” and ending at “Bye Bye”. Therefore, the expression “Ta Ta” has been used

not as a standalone mark but as a generic description of bidding farewell for this website

offering people an opportunity to record their journey at length to make it memorable.

It is further averred that the word “Tata” in “Horn Please, OK, Tata”, the original order of

the words, was written into the slogan to mean “farewell”. The sign was born when trucks

first came onto the Indian highway, long before the Complainant began manufacturing

lorries.

The Respondent has further stressed that the use of the domain and the services offered are,

as what the title signifies, for building a mammoth travel community. Neither at any point of

time or any link whatsoever of the Respondent's site, takes a user to a site of Complainant's

competitor or any material which is infringing trade mark of the Complainant. In fact, all the

trade marks or services referred by the Complainant have no conflict whatsoever with the

services offered by the Respondent.

The Respondent further has contended that the use of the generic expression “Ta Ta” by the

Respondent in the domain name <oktatabyebye.com> is not for any of the followings:

- Bad faith;

- Diverting business of the Complainant;

- Confusing the general public about the source of the Respondent's services; or

- Deriving illegal benefits from the domain.

It is further averred that “OK Ta Ta Bye Bye” and “Ta ta” together as a whole, do not find

any similarity or resemblance in sound or in vision from the point of view of common

subscriber to the website in question which can give rise to reasonable probability of causing

confusion or deception in his mind while accessing the website in question which may lead

him to think that he is using services of the Complainant. The Respondent has pressed for

the dismissal of the complaint.

6. Discussion and Findings

Before dealing with the merits of the dispute, it is important to note that Rules 10(a) and (b)

require that the proceedings be conducted in accordance with the Policy and Rules and that

each party is given a fair opportunity to present its case.

Rule 12 permits the Panel in its sole discretion to request further statements or documents

from either party.

The UDRP and Rules thereunder demonstrate a strong preference for single submissions by

the parties absent extraordinary circumstances. The Panel believes that this is a wise

procedure, given the nature of these proceedings. Although the Complainant may have been

surprised by the breadth of the Respondent's response, the Panel does not find this to be an

extraordinary circumstance.

The Panel has examined both the Supplemental Filings. In the facts and circumstances of the

present case, the Panel is of the considered view that the Complainant's Supplemental Filing

raises no new material issues that were not or could not have been presented in the

Complaint, and introduces new material beyond the scope of the Response. The

Respondent's Supplemental Filing is in reply to the Complainant's Supplemental Filing and

is similarly of little use to the Panel.

Paragraph 15(a) of the Rules instructs that the “Panel shall 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.”

Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the

existence of the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain

name; and

(iii) The disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant relies on its registered trademark TATA and alleges that TATA is a very

strong trademark.

The disputed domain name is very similar to the trademark owned by the Complainant. The

Panel is of the opinion that the usage of the generic words “OK” and “Bye Bye” in the

domain name does not really take away the identically and confusingly similar nature of the

domain name with the registered trademark of the Complainant.

The disputed domain name is confusingly similar to the Complainant's trademark as it

wholly incorporates a Complainant's registered mark. As numerous prior panels have held,

the fact that a domain name wholly incorporates a complainant's registered mark may be

sufficient to establish identity or confusing similarity for purposes of the Policy despite the

addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No.

D2000-0096 (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off

Road Equipment Parts, NAF Claim No. FA0095497 (“parts” added to mark CAT in

<catparts.com>); Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995 (“-parts” added

to mark KOMATSU in <komatsu-parts.com>).

In this regard, the panel further relies upon the decisions in Oki Data Americas, Inc. v. ASD,

Inc., WIPO Case No. D2001-0903; See also: EAuto, L.L.C. v. EAuto Parts, WIPO Case No.

D2000-0096; Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995; Wal-Mart Stores,

Inc. v. MacLeod, WIPO Case No. D2000-0662; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a

Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The

Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha

Hitachi Seisakushuo (d/b/aHitachi, Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-

1105; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; adidas-

Salomon AG v. Mti Networks Ltd., WIPO Case No. D2005-0258.

There have been cases where the disputed domain name, consisting of a complainant's

trademark and generic terms, has been considered as confusingly similar. For instance,

see ERGO Versicherungsgruppe AG v. Idealist, WIPO Case No. D2008-0377 where the

panel held that “it is clear that the disputed domain name, consisting of the Complainant's

trademark plus the generic word “finance” is confusingly similar to the Complainant's

trademark”.

Further, it has been pointed out that the addition of the generic terms “store” and “fashion”

were not sufficient to avoid confusion: L.L.C. v. Triple EAuto Parts d/b/a Kung Fu Yea

Enters, Inc., WIPO Case No. D2000-0047 and Chanel, Inc. v. Estco Group, WIPO Case No.

D2000-0413; See also: Parfums Christian Dior .v. Netpower, WIPO Case No. D2000-

0022 and Compagnie Generale Des Etablissements Michelin - Michelin & Cie. V. Graeme

Foster, WIPO Case No. D2004-0279.

Given that the disputed domain name incorporates the Complainant's TATA trademark, the

Panel is of the opinion that the Complainant has met the burden of proof as required by

paragraph 4(a)(i) of the Policy.

Thus, the Complainant has demonstrated to the satisfaction of this Panel that the domain

name is confusingly similar to a trademark in which it holds rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or

legitimate interests in the domain name. Paragraph 4(c) provides examples of circumstances

that can demonstrate the existence of such rights or legitimate interests:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use,

the domain name or a name corresponding to the domain name in connection with a bona

fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by

the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or

service mark at issue.

The Panel is of the opinion that no evidence has been provided which would support a

finding under paragraph 4(c)(i) and (ii) of the Policy, i.e., the Panel is of the opinion that the

evidence of record does not show use of, or preparations to use, the domain name in

connection with a bona fide offering of goods or services nor does it show that the

Respondent has commonly been known by the domain name. The Panel is also of the

opinion that the circumstances do not warrant a finding of rights or legitimate interests under

paragraph 4(c)(iii) of the Policy.

Once a complainant establishes a prima facie case that a respondent lacks rights in the

domain name at issue, the respondent must come forward with proof that it has some rights

or legitimate interests in the domain name to rebut this presumption. Document

Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.

D2000-0270.

Since the adoption and extensive use by the Complainant of the trademark TATA predates

the first entry of <oktatabyebye.com> as domain name, and since the Complainant has made

a prima facie case as to Respondent's rights of legitimate interests, the burden is on the

Respondent to establish the Respondent's rights or legitimate interests the Respondent may

have or have had in the domain name.

In this case, the Respondent has not conducted any prior business under the names

“oktatabyebye” in connection with the bona fide offering of goods and services. It has also

not used the domain name in connection with the bona fide offering of goods and services.

The Respondent has not been commonly known by the subject domain name as a business.

It is not authorized by the Complainant to use its trademark. It is not making legitimate

noncommercial or fair use of the domain name.

It is apparent that the Respondent registered the domain name <oktatabyebye.com> for the

purpose of capitalizing on the Complainant's trademark TATA and profiting from the global

goodwill that the Complainant has built up in its trademark.

These facts support a clear inference that the Respondent does not have rights or legitimate

interests in the subject domain names and the Respondent has done nothing to rebut that

inference. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No.

D2003-0174.

Also, the Respondent is making commercial gain out of the disputed domain name by

putting link of its site i.e. <makemytrip.com>. The Panel finds that the Respondent already

has hosted the said site <makemytrip.com> for commercial gain and is using the domain

name <oktatabyebye.com> for the purposes of fishing for new customers and then diverting

them to its main website, being “www.makemytrip.com”. The said conduct of the

Respondent itself shows that the Respondent has no legitimate rights or interests in the

domain name in question and is merely using the same as “fishing net to catch new fish”.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the

disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Rules, for the purpose of paragraph 4(a)(iii) of the Policy, the

following circumstances, in particular but without limitation, if found by the Panel to be

present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that [the respondent] has registered or has acquired the domain

name primarily for the purpose of selling, renting, or otherwise transferring the domain

name registration to the complainant who is the owner of the trademark or service mark or

to a competitor of that complainant, for valuable consideration in excess of the holder's

documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent] has registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain name,

provided that [the respondent] has engaged in a pattern of such conduct; or

(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for

commercial gain, Internet users to [the respondent's] website or other online location, by

creating a likelihood of confusion with the complainant's mark as to the source, sponsorship,

affiliation, or endorsement of the holder's website or location or of a product or service on

[the respondent's] website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

Pursuant to paragraph 4(a)(iii) of the Policy it is incumbent on the Complainant to prove that

the Respondent has registered and is using the domain name in bad faith.

From a perusal of the documentation on the record of the case, it is apparent that the

Respondent appears to have registered and is using the domain name solely for commercial

gain. Respondent derives a financial benefit from the web traffic that is diverted through the

domain name <oktatabyebye.com>.

The undersigned panelist visited the website “www.oktatabyebye.com” on August 11, 2009.

On the home page of the said website is the by-line “OkTataByebye.com: The Online Travel

Community for travelers to find and share personal travel experiences, honest hotel reviews,

holiday ideas and travel advice on India destinations and cities”.

It is pertinent to note that the said home page at the very centre prominent position has a

section called “Featured Hotels”. In the said section, a number of hotels are featured along

with their photographs and details. When one clicks at the said featured hotels, the visitor is

transported to the website being http://hotels.makemytrip.co.in.

To examine the said phenomenon in greater detail, the undersigned panelist went on to

examine further the said website “www.oktatabyebye.com”. Therein, on the home page, was

featured the hotel “Udaipur, Udaipur, Devi Garh, Udaipur, 3 D / 2 N, Rs. 2999 /-, 5 star all-

suite luxury property.” When clicked on the said featured hotel, the panelist was first taken

to a progress page being

“http://hotels.makemytrip.co.in/makemytrip/searchHotelProgress.do?method=searchHotels”

and thereafter the panelist was taken to the URL being

“http://hotels.makemytrip.co.in/makemytrip/searchHotels.do?

residentOfIndia=Y&method=searchHotels.”

The said web page at the domain name <makemytrip.co.in> provided various commercial

links for the recommended hotel and also gave the facility of booking the rooms for the

same. A perusal of booking room links showed the links for making payments by means of

Visa and MasterCard credit cards as also by American Express credit card. It also provided

links to pay by debit card, pay by net banking and pay by cash card.

A perusal of the aforesaid website hosted at the domain name <oktatabyebye.com> clearly

shows that the Respondent has utilized the domain name <oktatabyebye.com> intentionally

to attract for commercial game, Internet users to its website being <makemytrip.co.in>. The

said been done by creating likelihood of confusion with the complainant's mark. The

purpose of utilizing the domain name <oktatabyebye.com> appears purely to funnel Internet

traffic and thereby bring it to the website “www.makemytrip.com” for commercial gain.

Further, the Panel finds that the home page at the website “www.oktatabyebye.com” has a

prominent advertisement banner for the website “www.makemytrip.com”, which when

clicked, takes the netizen to the said website, which is the website set up by the Respondent

for commercial gain.

This is itself evidence of registration and use of the domain name <oktatabyebye.com> in

bad faith as per the requirements of paragraph 4(b)(iv) of the UDRP. There have been

various cases whereby such a conduct has been found to be proof of the bad faith

registration and use of domain names.

Some of the important decisions in this regard are as follows:-

In Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, the panel

held that:

“It can reasonably be presumed that Respondent has entered into commercial agreements

whereby he benefits financially from visitors to his site who “click” on the different banner

adds. It can therefore be said that Respondent's current use of the Domain Name is aimed at

creating traffic to his website which is predominantly used as an advertising space. The

presence of the trademark NOKIA in the Domain Name is thereby a key factor in the

financially driven attempt to draw internet users, some of which will be browsing for

Complainant's website(s), to Respondent's website…In the opinion of the Administrative

panel, Respondent is thereby taking a free ride on the goodwill of Complainant's NOKIA

trademark.”

In Playboy Enterprises International, Inc. v. Tonya Flynt Foundation WIPO Case No.

D2001-1002, the panel held that:

“As the Complainant has shown, the Respondent is using the disputed website to show

commercial advertising that leads the public to other sites that sell goods such as videos. The

public would expect the Complainant to offer these goods but they in fact have nothing to do

with the Complainant (Bloomberg supra, and the Complaint Annexes G and H). The Panel

finds it only logical to infer the Respondent derives income from this business operation at

the disputed domain name. Therefore, the Panel finds the Respondent registered and is using

the domain name in clear violation of the Policy at 4b(iv).”

In Expert Travel Services, LLC v. Texas International Property Associates - NA NA WIPO

Case No. D2008-0307, the panel held that:

“Internet users who type in the disputed domain name are taken to a searchable portal

website that contain a number of links. Many of the links, which refer to various forms of

“expert witness”, appear to be unrelated to the Complainant's marks or related services. But

the website also includes links for “Expert Flyer” and “Become an Expert Flyer”, under

which appears the following text: “Find seats open/taken on over 100 airlines. Find upgrade

and award inventory on AA and others. All fares and flight info worldwide. We make you

an Expert Flyer by giving you an edge.” Beneath the text is a link for the Complainant's

website. The Panel determines that there is ample evidence that the Respondent

“intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's]

website, by creating a likelihood of confusion with the complainant's mark as to the source,

sponsorship, affiliation, or endorsement” of the Respondent's website or of products or

services on the website, as described in paragraph 4(b)(iv).”

In PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a

EMS), WIPO Case No. D2003-0696, the panel after taking into consideration the facts of the

case held that:

“The Complainant has proved that the Respondents have intentionally attempted (and

apparently succeeded) to attract, apparently for commercial gain, Internet users to

Respondents' wWebsite, by creating a likelihood of confusion with the Complainant's

trademark (Policy, Paragraph 4(b)(iv)). See PepsiCo, Inc. v. Diabetes Home Care, Inc. and

DHC Services, WIPO Case No. D2001-0174, (March 28, 2001), -where the use of domain

names to capture goodwill of PEPSI mark and profit from the goodwill associated with

complainant's sponsorship of certain sporting events was found to be in bad faith. It is

difficult to believe that any party would undergo the difficulties and expenses relating to the

registration of more than seventy domain names, all of which encompass the trademark

“PEPSI,” and then have such domain names resolve to a electronic gaming facility, in order

to conduct a non-commercial operation. Thus, commercial use is presumed.”

In the facts and circumstances of the present case, the Panel finds that the term “Ta Ta” is so

popular through out the globe that it is impossible for the Respondent that it has never heard

of this name which shows the bad faith of the Respondent (reference is made to Nokia

Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 where it was held

by the panel: “The trademark NOKIA is currently enjoying such fame internationally that it

cannot reasonably be argued that Respondent/IBCC could have been unaware of the

trademark rights vested therein when registering the Domain Name.”)

Since the TATA trademark is widely known and the Respondent has no rights in it, the most

likely reason why the Respondent could have wanted to register and use a domain name

incorporating the TATA mark was that it knew of this mark and wanted to use it in the

domain name in order to profit from the traffic generated by the fame of the mark, and not

for any legitimate noncommercial or fair use purpose. The aforesaid conduct of the

Respondent in diverting web traffic for commercial gain is a manifestation of the bad faith

registration and use of the said domain name.

The Panel finds that the registration has been done in bad faith as the Respondent could not

have been unaware of the TATA trademark. Further, the Panel finds that the Respondent has

registered and is using the domain name in dispute, that incorporates the mark TATA with

the intent to deceive Internet users in regard to the source or affiliation of the domain name

and that itself is evidence of bad faith.

In American University v. Richard Cook, NAF Claim No. 208629 was held that:

“Registration and use of a domain name that incorporates another's mark with the intent to

deceive Internet users in regard to the source or affiliation of the domain name is evidence of

bad faith.”

The Panel finds that evidence on the record of the present case is sufficient to establish the

necessary elements of bad faith under the Policy paragraph 4(b).

The Panel finds that the Respondent has registered and is currently using the domain name

in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15

of the Rules, the Panel orders that the domain name <oktatabyebye.com> be transferred to

the Complainant.

Pavan Duggal

Sole Panelist

Dated: August 11, 2009