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.
Very fair and well argued! Any person with a child’s common sense can understand the fallacy in TATA’s arguments. May there be light and wisdom dawn on the TATA’s.
Deepak – I second your views -the order is completely misconceived in facts and law. I can understand if they had used TATA per se as the domain, but this is a case where TATA is just part of the domain and is adopted in a context other than a surname! I would think that Makemytrip.com has a better chance before the Delhi High Court
I completely agree with you.. the WIPO panel’s decision is beyond me too… Esp. in the light that the likelihood of confusion amongst the two sites.. is nil!!!
I AGREE WITH THE VIEWS AND COMMENTS OF SAI DEEPAK as well as LATHA R.NAIR.
Entirely it is misconceived in facts and law.
As Latha R.Nair ‘s suggestion , MAKEMYTRIP HAS DECIDED TO APPEAL AAGAINST THIS RULING BEFORE DELHI HIGH COURT SINCE THEY SHOULD DO WITHIN 10 DAYS FROM THE RULING.
Previously also TATA had won domain battle against bodacious-tata .com. But, it was logically and legally appropriate. But, here it is total stupidity.
Had TATA had good IPR cell, why didn’tt they oppose Trade Marks ‘TATA’ registered by some others in different classes.
Examiner of Trade Marks
New Delhi
Looks like a ridiculous litigation in the first place.
Meanwhile, on the ihateapples.com note, what if you have a ihateipod.com and it is exactly what it sounds like i.e. a forum for unhappy iPod users to share problems faced and other rants? Would n’t freedom of expression as well as the fact that you are a valid customer with unresolved issues or prospective customer researching beore buying count?
WIPO’s stand is completely justified that Tata is a well known trademark by virtue of its long use.
And anyone in India at least seeing the word Tata will directly relate it to Ratan Tata’s Group. However, it will always be a debatable issue, as to what is the level/boundary of protection which trademarks can provide to the trademark holder. Me an IP literate might not have confused with this domain name, but think of a any other person who is not in the field, he/she is bound to draw a relationship between the “okbyebyetata” and our Tata group.
WIPA’s decision is way biased and give you a hint that how can mighty dictate the terms.
It seems that the panel of WIPO is incompetent in judging this case. The defendant given cited two good examples for the experts of WIPO. WIPO is a Organization, where politics matters not the quality of competency. PriceWaterCooperHouse in his report 2006 submitted to the WIPO, they found more 500 job descriptions and suggested that there should not be more than 200 job descriptions. All the posts P-5 to Dy. Director General are considered on political approach. Under the leadership of the present Director Genera, Francis Gurry (Australian national) – pro developed world and the most unsecured person on this planet. By nature, he is an arrogant, self-centered, frustrated, racist… I hope in September 2009, the member states will discuss seriously his actions which are biased and dangerous to the developing countries like India, Brazil, China, South Africa etc.
May God help to Developing Countries and WIPO.
Even as most of the Indian blogs and local internet write in favour of oktatabyebye.com, there is an concerted attempt to use fake comments to attack the online travel website. Another example of ‘soft social networking power’ being used to turn public opinion.
http://www.techgoss.com/Story/251S11-Tata-Vs-OkTataByeBye–Fake-comments-from-Mumbai.aspx
It is not wrong or against the law for MakeMyTrip to create or maintain a portal to augment its business but it is definitely wrong and against law if for the said purpose, MakeMyTrip violates others rights and interests which are recognised and protectable by law. The WIPO’s decision can be analysed considering on this perspective as well:
1.It is not the common word and generic use of which that WIPO has ruled against but a mark which is protectable.
2. Though the definition of a ‘mark’ includes, amongst others, word( generic or coined), a “mark” is different from a word per se. Emphasis is on the word ” mark” because a “mark” has got a value- commercial and taxable- which as a word the same lacks.
3. The law of trade marks contemplates ‘Likelihood’ of confusion/deception/association and so these factors need not be established.
4. Generations have grown knowing and using the ‘TATA’ brand in one way or the other; thus making the mark TATA well known, popular and recognisable irrespecive of goods or services for which such a mark is applied and/or used.
5. A mark like that of TATA having globally diversified businesses with repute and goodwill, cannot/ought not to be diluted/humbled or justified by deceptive and camouflaged usages of others who are unauthorised by that company.
6. Interestingly, the Tata’s have a brand called ‘OK’ for salts which too is popular amongst the masses. He-he!!
7. And ofcourse, Indian roads are ubiquitous with ‘ OK TATA HORN PLEASE’ signs!!!
Do we find a case of multiple violations of Tata’s marks and interests by MakeMyTrip??
bye-bye!!!!
Dear Sai
Your post though entertaining, seems poorly researched.
The first point to understand in this matter is that this is a domain name dispute before WIPO under the UDRP and not a suit in the High Court. Therefore, standards applied to a trademark dispute in the High Court cannot be applied in this particular case.
It is important to note that there is not yet a convention like the NICE convention for the internet so it would be stupid to have domain name such as “XYZCLASS9.com” (XYZ being the trademark ) to denote the goods from XYZ in class 9 and restrict oneself to class 9 and hence internet is “classless”.
Your example about “ihateapple.com” is completely out of place as that would be one of a “gripe site” ( as you pointed out to criticize APPLE Inc) something on the lines of the “walmartsucks.com” decision and such sites are meant to critique a brand or a mark and well the whole purpose of these sites would be to critique famous marks.
So that might amount to fair use of the domain name( in case of gripe sites) but here this example is completely out of place.
And as per the comment of Vijay I would implore you to find out whether TATA has any rights in the mark OK.
Otherwise I applaud your legal acumen but I reserve my comments on the rest of your post for later.
The use of a generic term which connotes travel or related activities is justified. The Counsel for makemy trip gave some very valid reasons for the apotion. The decision was not fair to say the least.
First, let me thank Ms.Nair for taking time out to comment and thereby share her views on this important development or regression (depending upon which side of the argument one stands). I also thank Divs for being one of those rare commentators who always comes up with thought-provoking ideas and possibilities which tickle one’s brains, and yet remains well within the limits of civility and decorum observed by and on the forum. I agree with most of the other comments, but would specifically like to address the ones posted by Vijay and Anon.
@Vijay: Thanks for enlightening us with your knowledge of the rudiments of trademark law. Probably, when I raised certain questions, I should have phrased them in a manner I actually intended them to be received, so I take the blame if my questions gave the reader, particularly a seemingly articulate reader such as you, the impression that my logic was incomplete. I shall address your concerns along with the ones raised by Anon.
@Anon: Dear Anon, thanks for being generous with your words about my post being entertaining and for being charitable with your opinion about my legal acumen. I have never considered my posts entertaining given that they tend to be long, and therefore not exactly a model for good blogging. Looks like my attempt at being crisp have achieved their goal, albeit with attendant criticisms for being poorly researched. As for the research, the purpose of the post was to inform the readers about the development/regression before it went cold, and to raise certain questions in order to give readers an opportunity to lead the discussion, which they seldom get because of the amount of extensive research we, at SpicyIP generally put in.
Once in a while, it must be understood, that the purpose of certain posts is to elicit reactions from readers rather than force feed our views on them and this particular post was in the same vein; although this does not mean that I can get away with scant research. Probably, given the seriousness (or lack of it) of the judgment and more importantly the standing of this blog, I ought to have put in more research. That said, my lack of research does not translate into the decision being right. And my reasons for the same are as follows (this may run into a few comments):
I notice that Vijay’s comments and yours revolve around the reputation of Tata’s marks, likelihood of confusion, dilution, presence of classes in trademark registration and standards applied to a trademark dispute in and by a Court of law. In short, Vijay seeks to apply the traditional principles of trademark law to domain disputes and you state that because the forum is not a High Court, similar standards ought not to be applied. Interestingly, both of you are right but only in parts.
Vijay wants to apply principles of trademarks, but forgets that a standard is different from a principle and the application of a principle depends on the standards set for a particular context based on the nature of the context. As for your point, you ought to understand how principles of trademark have been adapted to domain disputes; in other words, how principles of real world have been adapted to the virtual world.
Principles of conventional trademark law would be the first choice for regulating domain disputes and the reasons for the same are obvious, but they have to be applied with certain modifications taking into the account the nature of the medium, the levels of literacy and awareness of a reasonable user, behavioural patterns of the reasonable user, the extent of benefit accrued by a mischief-maker and consequently the loss incurred by the affected party.
It is not difficult to arrive at a conclusion when the domain names and products are identical or similar, because then one could apply established principles of trademark law. However, when the factual matrix isn’t so straightforward, the situation enters a grey realm, or ‘highly subjective’ would be a better alternative to grey. For instance, there have been cases where a particular site, in its initial days, has attempted to increase visitor traffic by using a well-known mark without authorization, which use is generally in, what is called as, “bad faith”. But wallowing on a normative plane on “bad faith” and applying it to the facts of a particular case are not one and the same. The reason I raise this issue is because the WIPO panel has alluded to MakeMyTrip’s use of the word (not mark Vijay) ‘tata’ to be in bad faith and any reasonable and sensible practitioner of trademark law would agree to this.
Vijay has rightly made a distinction between a word and a mark, but he forgets that despite a particular mark having achieved tremendous popularity or “secondary significance”, the possibility of such popularity or secondary significance being completely relegated to the background by using it as a word, cannot be ruled out. If and when this happens, it means there has been no attempt to cash in on the relatability of the mark by a consumer because the mark has been reduced to the status of a word; naturally, this puts in doubt any merit in claims of likelihood of confusion or deception. Of course, a claim of dilution may still lie but for such a claim to find a sympathetic audience, the mark must be seen and read as a whole and others facts peculiar to the case ought to be given their due such as the possibility of a valid justification of use of the word (again, not mark Vijay) by the defendant.
As I said, a particular mark may be demoted to the status of a word, but how? If it is sandwiched between two words, as in the instant case, like ‘ok’ and ‘bye bye’, it is clear that the word ‘TaTa’ is not used in the same sense as the mark ‘Tata’. Please note that I distinguish ‘TaTa’ from “Tata”. The word ‘TaTa’ is typically pronounced Ta-Ta with a slight yet unmistakable pause, which is not the case with the mark TATA (so Vijay, phonetic similarity is an issue you should have raised given your knowledge of trademark law, but I am surprised you did not. Is it because you think there is no similarity?) Of course, the counter to my argument could still be that an ordinary reasonable user would not notice these finer details and would probably go with the gross feel or the idea the word/mark conveys. Be that as it may, it is difficult to conclude that ‘oktatabye’ would lead one to equate it to the source identifier TATA.
The other extremely relevant factor that both Vijay and you have missed is the crucial point about who would constitute a reasonable user in a domain name dispute. Though the principle or notion of a ‘reasonable consumer’ is common to both conventional trademark law and domain name disputes, the standard is not and cannot be the same. Why? I shall explain this to you indirectly; there have been cases where though a consumer may not have been confused as to the identity of the site, he may have been diverted away from the site of the plaintiff thereby giving the plaintiff/trademark owner a genuine and justified cause of action. Nowhere in the decision in the instant case has the panel or the complainant Tata established this aspect to prove that Tata a valid cause of action.
Pertinent to the factor of the standard of a reasonable consumer in the virtual world is the aim of the consumer or the surfer i.e. what exactly is the consumer searching for and how, if at all, has been confused/deceived/misled by an impugned site. This goes to the root of the issue for it places the user of the World Wide Web at a higher pedestal than a real world consumer in terms of his awareness. Barring bald conclusions in the decision, the panel has again not established how this factor or requirement has been established by Tata. This is because if someone is searching for advice on how good a particular destination is, I don’t see the person searching for any service or product offered by Tata, so if he visits OkTaTaByeBye, it ought to be presumed that he did so on account of a dedicated search or by reference. It is for Tata to rebut this presumption, but the way the decision has been worded, it appears that MakeMyTrip had had an uphill battle right from the beginning trying to appeal to the impartial side of the Panel.
Continuing in the same vein, in certain cases, use of a trademark as a metatag i.e. something which is invisible to the user, but visible to the search engines, has been held to infringe the mark because metatags appears when a person searches for a site on search engines. Tata did not prove that this was so with OkTataByeBye.com.
And here’s something the Panel relied on to rule against MakeMyTrip, but in fact it should have been used in MakeMyTrip’s favour. The Panel deemed the presence of a link on OkTaTaByeBye.com as a proof of its malafides to “fish for new customers”; why can’t one turn this the other way round and say that the very presence of a link on the impugned site to the parent entity is proof enough of the fact that MakeMyTrip wanted its consumers to take notice of its identity and that this was done in good faith? Besides, the valid justification for the presence of another site tendered by the MakeMyTrip was cursorily dismissed to say the least.
So I think I have fairly made out a case for OkTataByeBye.com for a reasonable person, don’t you think so Vijay? I hope the research is not bad because I am hard-pressed for time, so I could not read up much and had to rely on what I had come across earlier, though this may not match up to your standards Anon.
In the second comment, in the last line of the first para,it should have been “The reason I raise this issue is because the WIPO panel has alluded to MakeMyTrip’s use of the word (not mark Vijay) ‘tata’ to be in bad faith and any reasonable and sensible practitioner of trademark law would not agree with this.”