Tata Sons claims (and gets) domain name oktatabyebye.com
I could not have been more surprised when I read about Tata Sons making a claim for the domain name oktatabyebye.com
Tata Sons had filed a complaint with WIPO in June, claiming that “domain name <oktatabyebye.com> includes the word TATA, which is identical in part and confusingly similar” to their trade mark – ‘tata’. The sole panelist Pavan Duggal, who chaired the arbitration between the parties awarded the case in favour of Tata Sons and has asked the domain name to be transferred to Tata Sons.
One of the observations in the panel states that “a domain name wholly incorporates a complainant’s registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” and “Panel is of the opinion that the evidence of record does not show use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services”.
The panel also supports its argument by stating that the domain name is owned by Make My Trip, who should use the domain ‘makemytrip.com’ instead of oktatabyebye.com. They further state that some links were found on the homepage of oktatabyebye.com, which pointed to makemytrip.com and hence, oktatabyebye.com is used just to generate traffic to makemytrip.com. What is surprising here is that the panel conveniently omits the fact that there are also many internal links that lead to services offered to travellers within the domain of oktatabyebye.com.
Partha, an AVP at Make My Trip who manages oktatabyebye.com says in an email to their community members that –
“Oktatabyebye.com domain name is importantly a representative of the colloquial ‘OK Ta Ta Bye Bye’ phrase, which represents travel & journey related activities, referring to the generic word ‘Ta Ta’. We all regularly use the term for travel & goodbyes in our country, and across many others.
Would you say it is bizarre, that a word as generic in use as ‘Ta Ta’ used in our domain name could infringe a copyright and cause confusion? Or that oktatabyebye.com, in bad intention, or otherwise, seeks to cause confusion with TATA Sons, for its own gains?”
I would agree with Partha. A whole lot of community members also seem to agree. It also makes me wonder, if the panel verdict also means domain names highperformancenyc.com (a physical training facility in NYC) can be claimed by hp and cribmaster.com (an inventory management system) by IBM!
Also read:
http://www.gonomad.com/traveltalesfromindia/2009/08/oktatabyebyecom-cant-use-word-tata.html
http://www.flyyoufools.com/2009/08/30/tata-vs-oktatabyebye/