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“Tata Massage” can keep its domain

In a recent domain name dispute over the domain, www.tatamassage.com, a single member Panel  denied a request to transfer. See Tata Sons Limited v. Tata Massage (WIPO Case No. D2012-2467 , March 4, 2013). Complainant Tata Sons Limited is a company established in 1917, with business activities from a predecessor dating back to 1868. The company includes approximately 100 major companies, 28 of which on are the stock exchange. Some of its companies include Tata Steel, Tata Motors, Tata Power, etc. Complainant owns many trade marks involving the words “TATA” in the U.S. and around the world. Complainant operates a domain at  www.TATA.com. The disputed domain was registered in 2011. Respondent provided a response and was represented internally.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2)  Respondent has no rights or legitimate interests in respect of the domain name; and (3)  the domain name has been registered and is being used in bad faith.

Regarding the first element, the Panel agreed that Complainant proved up rights to its marks. The Panel explained that “The disputed domain name is not identical to any of the Complainant’s trademarks as, even disregarding the “.com” extension, none of the Complainant’s trademarks include the alphabetical string “massage”. Even so, the disputed domain name is plainly confusingly similar to the Complainant’s trademarks.” Therefore, according to the Panel, the use of TATA in the domain was enough to satisfy ¶4(a)(i) of the Policy.

In addressing the second prong, the Panel noted “the Respondent claims that the massage services being promoted at the website to which the disputed domain name resolves are being provided by the wife of the individual disclosed in the WhoIs details for the disputed domain name and her nickname, or the name by which she is commonly known amongst her friends and family, is Tata.” To support this claim Respondent submitted exhibits showing reporters discussed visiting the services of Respondent and that the masseuse was introduced as Tata. The Panel also found it convincing that Respondent was operating a legitimate massage business, although explaining that a storefront is not required for the Policy.  Third, and hold the laughter please, the Panel found that the nature of massage services offered was different from anything covered by Complainant’s marks.  The decision provides no details, but simply states that the technique used is “face slapping.” Interestingly a review of the disputed domain explains the following “Face slapping is well known internationally and uses Thai wisdom to bring out your own beauty that is 100% chemical free. Most importantly nothing is forever and this is what you call natural beauty. Tata massage is unique beauty, and is a profession of true wisdom.”
Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy. The Panel declined to review ¶4(a)(iii) of the Policy

As a result, the Panel DENIED Complaint’s request to transfer the disputed domain.

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