The Chinese registrant of TataCoin.com used an interesting defense at the WIPO.
TATA Motors, the Indian company that is rolling out the Harrier car, lost a UDRP it filed against TataCoin.com.
The Respondent claimed the mark isn’t known in China, where cryptocurrencies are banned. According to their defense, that’s why they offered the domain for sale with a price of 30,000 yuan or about $4,360 dollars.
“The purpose of the respondent’s purchase of the disputed domain name is to establish a digital currency website for trading digital cryptocurrency. However, as the ban on China’s digital currency trading website has not been lifted, the respondent once sold the disputed domain name on the website at a price of 30,000 yuan (about 4,360 US dollars).”
The Respondent claimed that TATA is pinyin that makes sense to its Chinese visitors, and stated that “TATA” is a common prefix in several Chinese companies, unrelated to the Indian motor vehicle giant.
The sole panelist at the WIPO found that the domain violates the TATA Motors trademark, but that the registration and current use of the domain does not. The Respondent has added a disclaimer that claims no relation to the Indian company. The TataCoin.com web site asserts that it’s an upcoming project on cryptocurrencies. The web site appears to have been thrown together in a rush, and there is no logo; a message “We will coming soon” appears.
End result: Transfer request of TataCoin.com was denied; full details on this UDRP decision follow, translated from Chinese.
WIPO Arbitration and Mediation Center
Administrative expert panel
Tata Sons Pvt. Ltd. v. Shen Yu Kun
Case No.: D2018-2029
Both partiesThe complainant in this case is Tata Sons Pvt. Ltd., which is located in Mumbai, India and New Delhi, India. The complainant’s authorized agent is Anand & Anand, which is based in India.
The respondent in this case is Shen Yu Kun, who is located in Changzhou, China. The authorized agent of the respondent is Dalong Wang, which is located in China.
2. Disputed domain name and registration authority
The domain name disputed in this case is <tatacoin.com> (hereinafter referred to as “disputed domain name”). The registration authority for the above disputed domain name is Alibaba Cloud Computing (Beijing) Co., Ltd. (hereinafter referred to as “registered institution”).
3. Case procedure
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (hereinafter referred to as the “Center”) received an English version of the complaint on September 5, 2018. On September 5, 2018, the Center sent an email to the registration authority asking them to confirm the registration matters involved in the disputed domain name. On September 6, 2018, the registration body sent a confirmation reply by email. The registrant of the disputed domain name disclosed by the registration authority to the Center and its contact information are inconsistent with the registrant and its contact information listed in the complaint. The Center sent an email to the complainant on September 12, 2018, providing the registrant of the disputed domain name and related information disclosed by the registration authority and inviting the complainant to submit a revised version of the complaint. The Center received a revised version of the complaint filed by the complainant on September 12, 2018.
On September 11, 2018, the Center sent emails to both parties in the language of administrative procedures in both Chinese and English. The complainant requested English as the administrative procedure language on September 12, 2018. On September 12, 2018, the respondent requested the use of Chinese as the administrative programming language.
The Center confirmed that the Complaints and Complaints are in compliance with the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as “Policy” or “UDRP”), Uniform Domain Name Dispute Resolution Policy Rules (hereinafter referred to as “Rules”) and “World Intellectual Property Rights”. Formal requirements specified in the Supplementary Rules for the Organization of Unified Domain Name Dispute Resolution Policy (hereinafter referred to as “Supplementary Rules”).
According to Articles 2 and 4 of the Rules, the Center officially issued a complaint notice to the respondent in Chinese and English on September 18, 2018. The administrative procedure began on September 18, 2018. According to rule 5, the deadline for filing a reply is October 8, 2018. The respondent sent an email on September 15, 2018, and the complainant responded to the email on September 17, 2018. The respondent sent an email on September 18, 2018 asking the center to provide a Word version of the complaint. The respondent submitted a statement of defense to the Center on October 3 and 5, 2018. The complainant submitted additional materials on October 10, 2018, and the respondent submitted additional materials on October 11, 2018.
On October 25, 2018, the center appointed Joseph Simone to be the sole expert to hear the case. The expert group believes that it has been properly established. The Group of Experts submitted the Acceptance and Fair Declaration of Independence in accordance with the requirements set by the Center to ensure compliance with Rule 7.
4. Basic facts
The complainant, located in Mumbai and New Delhi, India, was founded in 1917 and is the main investment holding company of House of TATA, India’s oldest, largest and most well-known group company. “TATA” is derived from the surname of the complainant’s founder, Jamsetji Nusserwanji Tata. The business of the complainant and its affiliates and subsidiaries involves a number of industries, such as textiles, steel, energy, automobile manufacturing, electronics, communications, and finance.
According to the evidence submitted by the complainant (Annex P), the complainant has used TATA as the trademark and trade name of the complainant since 1917, and the complainant has TATA registered trademark and TATA series registration in India and many other countries and regions. Trademarks, including China (eg No. 3205191) Logo “Registered trademark, registration date is January 14, 2004; registered trademark No. 3205189” Logo “, the registration date is September 21, 2007; the registered trademark “Tata” No. 3778801, the registration date is October 7, 2005; etc.) In addition, the complainant also registered a number of domain names containing TATA, such as The domain name <tata.com> has been registered since 1996.
The disputed domain name was registered on January 22, 2016, and the respondent purchased the disputed domain name on the “www.godaddy.com” website for RMB135.01 through auction.
According to the evidence provided by the complainant, the disputed domain name was directed to a webpage that publicly sold the disputed domain name, and the disputed domain name was sold on the website at a price of 30,000 yuan. The current website of the Disputed Domain Name is a website that provides information sharing on blockchain technology and uses the words “TATACOIN”.
5. Both parties claim
A. Complainant
A.1 The disputed domain name is identical or confusingly similar to the trademark or service mark of the rights enjoyed by the complainant.
The complainant argued that the disputed domain name <tatacoin.com> and the complainant’s registered trademark “TATA” constituted a confusing approximation. The disputed domain name completely contains the complainant’s trademark and domain name TATA. When the consumer sees the disputed domain name, it is likely that the disputed domain name is associated with the complainant.
Therefore, the disputed domain name has been confusingly similar to the complainant’s trademark.
A.2 The respondent does not have rights or legitimate interests in the disputed domain name.
The complainant never permitted or permitted the respondent to use the complainant’s TATA trademark or apply for a domain name containing the TATA trademark. The respondent did not have rights or legitimate interests in the disputed domain name.
The disputed domain name does not lead to an effective website, but rather to a web page that publicly sells the disputed domain name.
A.3 The respondent has malicious registration and use of the disputed domain name
The complainant is a registered trademark owner of the TATA trademark worldwide. After the complainant’s large-scale use, its TATA trademark has enjoyed a high reputation. The respondent still purchased the disputed domain name containing the complainant’s TATA trademark when he knew the complainant’s TATA trademark popularity. The registration and use of a disputed domain name is a typical domain name cybersquatting. The unauthorized use of the complainant’s well-known trademark by the respondent may mislead the consumer into thinking that the respondent is related to the complainant or has obtained the authorization of the complainant. In addition, the fact that the disputed domain name leads to a webpage that publicly sells the disputed domain name also proves the maliciousness of the respondent.
For the above reasons, the complainant believes that the respondent’s registration and use of the disputed domain name is malicious.
B. Respondent
The respondent claimed that it did not have malicious registration and use of the disputed domain name.
First of all, when the respondent purchased the disputed domain name, he did not know the complainant company and its trademark. The complainant “TATA” trademark was not well known in China.
The purpose of the respondent’s purchase of the disputed domain name is to establish a digital currency website for trading digital cryptocurrency. However, as the ban on China’s digital currency trading website has not been lifted, the respondent once sold the disputed domain name on the website at a price of 30,000 yuan (about 4,360 US dollars).
Secondly, in China “TATA” is registered as a trademark and domain name by many companies, such as TATA brand wooden door “www.tata.com.cn”; TATA footwear “www.tatashoes.com.cn”; TATA office supplies (God) International Enterprise Co., Ltd. Tata Office Product Inc.).
Finally, the respondent’s purchase of the disputed domain name is also based on tata as a Chinese Pinyin, which will be loved by Chinese online users. And tata has the advantages of beautiful glyphs and good pronunciation in several national languages, and is therefore used by companies in different fields of different language and culture countries.
The respondent therefore requested that the complainant’s complaint be rejected.
6. Language of administrative procedures
The language used in the dispute domain name registration agreement in this case is Chinese. According to the provisions of Article 11(a) of the Rules, unless the parties agree otherwise or the registration agreement otherwise specifies, the language used in the procedure is the language of the registration agreement, but the expert has the right to decide otherwise according to the specific circumstances of the case. The expert noted that the complainant requested the language of the procedure to be in English and provided relevant reasons. The respondent requested that the programming language be Chinese.
In order to ensure fairness to both parties and to ensure prompt resolution of domain name disputes, Rule 10(b) and (c) are usually taken into account in the practice of determining the language of the procedure. The ruling of the procedural language should not increase the undue burden on the parties and should not lead to delays in the consequences of the procedure.
The expert group decided to take into account the specific circumstances of both parties and decided that the procedural language of the case was Chinese. However, in order to ensure that this decision would not cause additional burdens and language barriers for any party, the expert group did not require the complainant to translate the complaint materials into Chinese. The reasons are as follows:
(a) The language of the registration agreement for the disputed domain name is Chinese;
(b) The respondent clearly stated that it did not have sufficient knowledge of English to submit the information documents to be submitted in English and required the use of Chinese as the programming language;
(c) However, since the complainant is located in India, Chinese is not his or her native language. If the complainant is required to provide a Chinese translation of the complaint, it will result in financial burden and unnecessary delays.
In view of this, the panel decided to accept the English complaint submitted by the complainant in this case, did not require the complainant to provide the translated text, and decided to use the Chinese to make the case decision to ensure that the respondent fully understood the reasoning behind the decision.
7. Analysis and identification
In accordance with Article 4(a) of the Policy, the Complainant must provide the Panel with the following three elements in order to obtain the Panel’s support for its request:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) the respondent does not have rights or legitimate interests in the disputed domain name; and
(iii) The respondent is malicious about the registration and use of the disputed domain name.
A. identical or confusing similarity
According to the materials submitted by the complainant, the complainant’s “TATA” trademark has been approved for registration in many countries around the world, including China. The earliest registration date of the complainant TATA trademark in China was January 14, 2004, and the registration number was 3205189.
The Panel therefore believes that the complainant has submitted sufficient evidence to prove that it has a registered trademark right to “TATA”.
The disputed domain name in this case is <tatacoin.com>, which is the part of the domain name that can be identified as “tatacoin”.
“.com” is a generic top-level domain that does not have any distinction between the disputed domain name and the complainant’s trademark in this case ( WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.11 ).
“coin” is a common English word meaning “money; coin”, and its addition to the disputed domain name does not prevent the panel from identifying similarly confusing similarities. See WIPO Overview 3.0 , Section 1.8 .
The Panel believes that although the disputed domain name adds “coin” after the complainant’s TATA trademark, this does not exclude that the disputed domain name is similar to the complainant’s trademark.
In summary, the panel determined that the disputed domain name is similar to the complainant’s TATA trademark, and the complaint complies with the first element specified in Article 4(a) of the Policy.
B. Rights or legitimate interests
Article 4 (c) of the policy specifies how the respondent can respond to the complaint and indicate that it has rights or legitimate interests in the disputed domain name:
(i) before the respondent receives the notice of the dispute, the respondent has or may prove to be using the disputed domain name or the name corresponding to the disputed domain name in good faith in providing the goods or services; or
(ii) the respondent (as an individual, business or other organization) has not been granted a trademark or service mark but is known by the disputed domain name; or
(iii) The Respondent’s use of the Disputed Domain Name is legal, non-commercial or fair use, and is not intended to mislead the consumer’s attention or damage the reputation of the Disputed Commodity Trademark or Service Trademark for commercial gain.
In this case, the respondent did not explicitly claim that it had rights or legal rights in the disputed domain name; instead, it chose to submit other evidence that “TATA” is internationally registered and used by companies and individuals in many countries. It also filed a complaint in China for non-complaints to make “TATA” evidence of trademarks and domain names.
As the panel has concluded on the malicious issues discussed below, the panel does not need to agree on whether the respondent has rights or legitimate interests in the disputed domain name.
C. Malicious registration and use of domain names
According to Section 4(b) of the Policy, circumstances that constitute a malicious registration and use of a disputed domain name include, but are not limited to:
(i) indicate that the [respondent] is registered or obtained the main purpose of the [disputed] domain name in order to sell, rent or otherwise transfer the [controversial] domain name to the complainant who is actually a trademark or service mark registrant or its competition The opponent, in exchange for a higher than the [represented person] provable compensation for the value of the actual cost of the [disputed] domain name; or
(ii) [Respondent] Registration [Disputed] The purpose of the domain name is to prevent the registrant of the trademark or service mark from embodying its trademark with the corresponding domain name, provided that the [respondent] has engaged in such conduct;
(iii) [Respondent] Registration [Dispute] The main purpose of the domain name is to destroy the business of the competitor; or
(iv) By using the [Disputed] domain name, [Respondent] deliberately attempts to pass the source, sponsorship, affiliation or of the product or service on the [Respondent’s website or website or [Respondent] website or website The collateral creates a possible confusion with the complainant’s trademark to attract Internet users to access the [Respondents] website or other online address for commercial gain.
The panel believes that there is no convincing evidence in this case that the complainant knew the existence of the complainant and his TATA trademark when purchasing the disputed domain name.
The complainant’s official website on China (“www.tatachina.com.cn”) has a financial services section and will visit the website.
Guide to another website “www.tatamutualfund.com”, but the website only provides English service, its “Locate Us” page (“http://www.tatamutualfund.com/contact-us/locate-us “) There is also only information about the complainant’s office in India.
In addition, the Chinese government has adopted a cautious approach to foreign financial service providers. The expert group has not found any evidence that the complainant has achieved great success or high visibility in China’s financial services industry. Therefore, the expert group believes that the evidence submitted by the complainant It is not enough to prove that the complainant “TATA” trademark has a high reputation in China and has established a unique and stable relationship with the complainant.
First, the evidence submitted by the complainant is not sufficient to prove that the complainant “TATA” trademark has a high reputation in China and has established a unique and stable relationship with the complainant.
Secondly, the expert group considered “tata” as a common Chinese Pinyin double-syllable word. After the expert group searched itself, it was found that “TATA” was registered as a trademark and domain name by many companies in China, such as TATA brand wooden door “www.tata.com” .cn”; TATA footwear “www.tatashoes.com.cn”; TATA office supplies (Tata Office Product Inc.).
According to the respondent’s reply, the respondent purchased the disputed domain name in order to establish a digital currency website for trading digital cryptocurrency. However, as the ban on China’s digital currency trading website has not been lifted, the respondent once sold the disputed domain name on the website at a price of 30,000 yuan (about 4,360 US dollars). The expert group considered that the above reasons given by the respondent were reasonable.
The panel found that the disputed domain name does not currently lead to a web page that publicly sells the disputed domain name, but instead leads to a website that provides information sharing on the blockchain technology and uses the words “TATACOIN”.
According to the evidence submitted by the complainant, the Chinese trademark corresponding to the “TATA” trademark of the complainant is “Tata”. The Chinese used by the respondent on the disputed domain name-oriented website is “Treading COIN”. Although the two words “Tata” and “Tread” are the same, the meanings are obvious. It can be seen that the respondent did not adhere to the subjective malice of the complainant’s trademark popularity.
After considering the various situations in this case, the expert group believes that it cannot be considered that the respondent has maliciously purchased and used the disputed domain name. Therefore, the Panel determined that the complainant did not complete its third burden of proof under section 4(a) of the policy.
7. Ruling
For all of the above reasons, the complaint was rejected.
Joseph Simone
Independent expert date: November 19, 2018
