A decision in favour of Tata Sons Limited has been rendered in an International Arbitration under the aegis of the World Intellectual Property Organization (WIPO) cancelling a pornographic website registered as bodacious-tatas.com. This is an important decision in establishing the transborder reputation of the TATA mark.

The Arbitrator, on being satisfied that each of the following three elements prescribed by the Internet Corporation for Assigned Names and Numbers (ICANN) were fulfilled, ruled in favour of Tata Sons:

1. Domain name identical to Tata Sons Trade Mark or Service Mark:

While the ICANN Rules provide for the protection of registered trademarks infringed by the registration of an unauthorized domain name, in the present case, Tata Sons were faced with a domain name which used their trade mark TATA in the plural.

The Trade Marks Cell of Tata Sons, headed by Farokh Subedar, researched the Tata archives and the Internet and came up with a host of articles which referred to the Tata companies collectively as ‘Tatas’. "This helped in demonstrating to the Arbitrator the wide reach of Tatas, their presence within the country as well as internationally – not only in diverse businesses ranging from iron and steel to information technology but also in community development, sports promotion and charitable and philanthropic activities," said Subedar. Based on this material, the Arbitrator accepted that the mere use of the plural ‘tatas’ and the use of the word ‘bodacious’ as a prefix thereto by the respondent did not constitute a sufficient distinction because of the "very high level of goodwill that both TATA and TATAS have acquired". The Arbitrator further held that "Tata, without any vestige of doubt, constitutes a famous (or in international parlance, a well-known) mark" and that "well-known marks, particularly those surrounded by an aura of high repute, excellent quality and responsibility deserve wide protection".

2. Rights and legitimate interests in domain name:

Tata Sons contended that theRegistrant aimed at taking a "cash-ride on the image and status of the TATA Mark". The Arbitrator accepted the contention that the unauthorized adoption of the domain name benefitted the Registrant trading on the Tata reputation and goodwill.

3. Registration and use of domain name in bad faith:

Tata Sons contended that the results produced by Internet search engines while searching the word/name TATA led the surfer to this unauthorized  pornographic website. The Arbitrator confirmed that the provision of sexually explicit and pornographic material on the website under the name of Tatas is likely to cause bewilderment, if not astonishment, on the part of the customers. He further stated that many of them would be unable to come to terms with a situation whereby a company, having philanthropic concerns for its clients, would be prepared to lend its name and well-known mark to pornography -- something which is so contrary to Indian values.

Pravin Anand of M/s. Anand & Anand has been advising Tata Sons in all Trade Mark related matters and the filing of complaints with WIPO Arbitration Center in domain name cases. The above decision is the third successful order obtained by Tata Sons in domain name cases which has established the high reputation and goodwill of the TATA Mark internationally as well.