In a decision delivered on the 25th of last month, WIPO ruled in favour of Tata sons requiring Gurgaon-based travel portal MakeMyTrip to transfer the domain oktatabyebye.com to Tata.
On behalf of Tata, it was submitted that ‘TATA’ is a well-known and registered trademark and service mark over which Tata, being the registered proprietor had statutory rights as well as common law rights by virtue of a long and continuous use. Therefore, there was scope for confusion in the minds of relevant group of consumers (by the way, who are they?). It was also argued that the use of the word ‘tata’ in the first part of the domain name could lead to consumers assuming it to be a site maintained by them. More importantly, it was alleged that MakyMyTrip did not establish “any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services” when it already had a site makemytrip.com in connection with its business.
On behalf of MakeMyTrip, the defendant, it was argued that the reason behind the creation of the site oktatabyebye.com was different from that of its parent site which justified the presence of the impugned domain. It contended that while the parent site was an online travel portal rendering travel consultancy services, the impugned site was meant to be a community portal for travellers to share their experiences and give first-hand travel advice to other wanderlusts.
It further submitted that the word ‘tata’ had been used in a colloquial sense which is to bid adieu and this was clear from the way it had been placed between the words ‘ok’ and ‘bye bye’. A relevant submission by the defendant was that the word ‘tata’ could be found on practically every truck on an Indian highway and this was used in a generic sense.
Surprisingly, the WIPO panel did not concur with this argument and said the use of the word in a generic sense did not take away anything from the allegation of confusion on grounds of being identical/similar with Tata’s trademark and service mark. The discussion on the merits of the issue in question is also very crisp in the decision. According to the panel, the use of other generic terms such as ok and byebye were immaterial and did not help to support the defendant’s case; but one doesn’t understand why the issue of the generic nature of the word ‘tata’ or its generic use was not given due attention because unless this question has been answered, the presence of other generic terms is but secondary.
The panel also went on to observe that the defendant was making commercial gain out of the disputed domain name by putting link of its site makemytrip.com on the impugned site with the intention of “fishing” new customers by cashing on the popularity of the TATA mark. First, I am not sure how was it wrong for the defendant to maintain another site, which though related to its field of business, served a different purpose; and secondly, MakeMyTrip is not running a charity after all and every decision that it takes as a prudent business entity would naturally and justifiably be directed towards furthering its interests, but this would have been germane if and when the core issue had been addressed satisfactorily, which was not the case.
If a particular portal opens another site in a bid to increase its ‘soft power’ and thereby augment its overall reach and popularity, how is it wrong? Given that the defendant in this case is not a non-entity in so far as its field of business is concerned, shouldn’t it have been given the benefit of due consideration of the merits of its case before imputing malafide motives to it?
Out of curiosity, I ran a search for sites which use the word ‘tata’ in one way or the other and I came across oktata.com and prakashindiantata.com; one would like to hear the panel’s views on these two sites. And here’s a question- if I were to run a site called ‘ihateapple.com’, where I am probably referring to the fruit, would I be guilty of infringing the rights in the domain ‘apple.com’? This is not to simplify or trivialise the issue, but to understand the ratio of the panel’s decision.
We would like to hear the opinion of our readers on the decision.