[Commons-Law] OKTaTaByeBye.com

[Sanjay Bhatia]

The panelist needs a refresher course in basics of trademarks law.
What next?  Will TATAs now sue every lorry owner in the country?

Sanjay



--- pranesh at cis-india.org wrote:

From: Pranesh Prakash <pranesh at cis-india.org>
To: Commons Law <commons-law at sarai.net>, NLS IP <nls-ip at googlegroups.com>
Subject: [Commons-Law] OKTaTaByeBye.com
Date: Thu, 03 Sep 2009 17:00:31 +0530

Dear all,
In one of the worst decisions ever to come out of the WIPO Arbitration
and Mediation Center, the domain name of a travel community site
(OKTaTaByeBye.com) has been found to be violative of the domain name
rights of the Indian conglomerate Tata Sons Ltd. by a single panellist
(Mr. Pavan Duggal).

The entire judgment is available here:
http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0646.html

As per ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP),
three elements have to be proved:
(i) your domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain
name; and
(iii) your domain name has been registered and is being used in bad faith.

On (i), the panellist found that OK and ByeBye are generic terms (but
that "TaTa", which is an informal English term for "goodbye" is a
"strong trademark", and is confusingly similar to "TATA" even when it is
sandwiched between OK and ByeBye).

On (ii), the panellists holds that the *travel site* has registered the
domain name <oktatabyebye.com> to capitalise on the brand value of the
TATA trademark, and that it has no legitimate interest in the domain
name <oktatabyebye.com>.

On (iii), and of particular importance is the part in the judgment where
he establishes bad faith on the part of OKTaTaByeBye.com (and it's
parent website, MakeMyTrip.com).  According to the panellist, the fact
that OKTaTaByeBye.com makes money is sufficient to establish _male fide_
intent, and make its registration and usage both "bad faith".

How one could establish bad faith (i.e., intending to disrupt the
business of another, domain squatting, attempting to get TATA's traffic,
etc.) solely on the basis of the fact that OKTaTaByeBye.com makes money
is incomprehensible.

This has to be one of the worst judgments ever on domain names.  It
easily beats the Narnia case I had written about earlier ('The
narnia.mobi dispute, or "English 101 for WIPO's arbitration panel"':
http://tr.im/xMFa).  It doesn't just stretch the legal imagination in
one or two counts, but all three of the UDRP criteria.

MakeMyTrip.com has also registered Cleartrip.net.in, when Cleartrip.com
is a competitor.  But instead of *that* getting flak, OKTaTaByeBye.com
gets handed over to Tata Sons Ltd. a good three years after the site was
created.  It's a crazy world we're living in.

-- 
Pranesh Prakash
Programme Manager
Centre for Internet and Society
W: http://cis-india.org | T: +91 80 40926283



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