Worst UDRP decision ever? Company says Ta Ta to WIPO.
An Indian company is taking a domain battle to court after a WIPO domain panelist handed its domain owner to conglomerate TaTa Sons.
The domain at issue is OKTaTaByeBye.com, a travel web site based on the colloquial saying “Ta Ta”, as in bye-bye or see you later.
OKTaTaByeBye.com is run by a large online travel company that operates MakeMyTrip.com.
TaTa Sons stated in its complaint that “the Respondent has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”
OKTaTaByeBye refuted that in its response, stating that the site is a travel journal and community site. A look at historical DomainTools thumbnails shows that the site has been operating since at least 2006 with active traveler discussion boards.
But the response by WIPO panelist Pavan Duggal is almost humorous in nature. Despite the overwhelming evidence presented by OKTaTaByeBye.com that it is a legitimate, online travel community, Duggal focuses on on how the site links back to the company’s MakeMyTrip.com site, where people can book trips online. This, according to Duggal, shows that OKTaTaByeBye.com is actually trying to use TaTa’s trademark to “fish” for new customers to its MakeMyTrip.com site. Apparently operating an online travel community that supports a related web site is not OK.
The company is discussing the fight on its blog in a post that has received 1,256 comments.
Snoopy says
It is a pretty hard argument to buy, how the heck would they just think up something incorporating India’s largest company and not realise there is an issue?
Ace says
It seems that OK is a brand of soap manufactured by TaTa
Andrew Allemann says
Snoopy, but in this case the word is also a generic term and is being used in its generic nature.
Snoopy says
“Snoopy, but in this case the word is also a generic term and is being used in its generic nature.”
Tata the company is far better known than the “generic” term, every Indian would know this company well. What is the chance the person really registered that name because of the generic nature of the name?
It would be like some living in Silicon Valley registering helloyahoomahoo.com and setting up a site about pets. At some point you have to call it for what it is.
Andrew Allemann says
Snoopy – I guess I shouldn’t create a site called “You are the apple of my eye”. After all, I know of the tech company Apple.
Greg says
Bad decision, but have seen much much worse. They need to start screening panelists via IQ tests and disallowing those who don’t fall into at least the “below average” zone. I don’t know how some of these panelists ever graduated from anything. Don’t lawyers have to understand logic to pass the bar?
Naresh says
All those people who support the Tatas in this are completely devoid of common sense. They do not understand the context in which the word Tata has been used in ok-ta-ta-bye-bye. I respect the Tata group for a lot of good things that they have done. But that does not mean I will support them in their wrongdoings. No person in his/her right senses would do that. This claim by tatas is an infringement of one’s freedom of expression. Even if some people think this case is too trivial, etc, it is still necessary to fight this case to give a good fight to a muscle wielding corporation employing unfair and unjustified means to gain what does not belong to it.
And one more thing, guys pls don’t compare generic usage of Ta-ta with that of Google. Google is a term that came into existence bcoz of the Google corp. Ta Ta is a term which has been used in India and elsewhere to say good bye even b4 Tatas started doing business. So tatas cannot claim the right to something that they DID NOT CREATE or OWN. If they have a problem, they should change their brand names. Nobody with common sense would think that the Tatas have a case, as there is no infringement of Proprietary IP here. In fact the Tatas are infringing upon Common Intellectual Property – the language that people speak. Tata’s claim is only technical and is far from truth and reality.
Snoopy says
“And one more thing, guys pls don’t compare generic usage of Ta-ta with that of Google. Google is a term that came into existence bcoz of the Google corp.”
Who is comparing it with Google? The comparison is with Yahoo which is an english word.
CommonSense says
Who cares, its a rubbish name and not worth spending any money to defend.
Tim Davids says
crap…I just realized my yellowpage ad points to my business
Johnny says
Snoopy….you are dead wrong on this one.
TaTa makes cars. The use here was a travel site…..non-competing interests.
Ta Ta is a generic term.
It would be like saying don’t buy Apples.com even though it is free because Apple.com is so well known.
Your argument is very poor Snoopy.
Andrew Allemann says
Johnny – Although I disagree with Snoopy in general on this one, it’s worth pointing out that TaTa is a massive conglomerate that makes a lot more than cars.
Anthony Mitchell says
Within MakeMyTrip’s target market ‘Tata’ is in NO WAY a descriptive term. As India’s second largest corporate group, Tata has a stronger branding salience than Exxon and Rolex and Ford and US Steel and Harley Davidson all rolled into one.
The decision is sound. The respondent is grasping for straws. Respondent should be happy that this is not a CC TLD in India, where punitive awards are allowed.
Andrew Allemann says
Anthony – TaTa’s assertion, and the panelists agreement, that the company made no demonstrative plans to use the domain for a legitimate purpose just doesn’t match the record of the domain’s use since 2006.
Kieren McCarthy says
Actually, we’ve been here before with an even more amusing decision regarding
bodacious-tatas.com
No, really. See the decision here: http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0479.html
Kieren
Andrew Allemann says
Kieren – nice. It’s as if they have an automated UDRP filing system.
Snoopy says
“Snoopy – I guess I shouldn’t create a site called “You are the apple of my eye”. After all, I know of the tech company Apple.”
I think that example would be several rungs lower in terms of potential trademark issues. Firstly Apple is a far more used term than “Ta Ta” in a generic sense and secondly the target market for the travel site is the same as Ta Ta’s (being India’s largest company).
If it was an English or American company using the term “Ta Ta” I think it would be far more defendable, but it isn’t, the are in the same backyard as TaTa, the potential issue should have been obvious when registering it.
Jirgo says
Pavan Duggal heads a law firm in India.
http://www.pavanduggalassociates.com .
How does WIPO choose the arbiters?. Won’t there be a clash of interest?
WulfTheSaxon says
@Johnny
apples.com, ironically (I do agree with you):
400 Bad Request
Request cannot be handled by the server.
Reason: Connection with Host: header containing unknown local host name “apples.com”. Received on IP address 130.205.150.16, which is not bound to any virtual server. Cannot proceed.
Patently Yours says
I had blogged about this last week in my blog.
While i do not agree with this WIPO decision, i would like to point out that Make my trip have been cybersquatting clearmytrip.net.in
Clearmytrip is in the same business and mmt has no legitimate rights to register this.
See the whois registry shows that it is in your name. http://whois.Domaintools.Com/cleartrip.Net.In
On what moral ground are they asking for support in appealing against this decision.