Okaytatabyebye appeal WIPO order in Delhi High Court

Adding to the slew of high profile intellectual property matters in cyberspace, the management of ‘oktatabyebye.com’ have filed an appeal today against Tata Sons Limited with respect to the order of a sole panellist of the WIPO Arbitration and Media Centre. Tata Sons Limited had earlier succeeded in obtaining an order in their favour from the WIPO, to transfer the domain ‘oktatabyebye.com’..Tata Sons Limited had filed a complaint against ‘oktatabyebye.com’, contending that they had been consistently using the trademark ‘Tata’ for their business activity. Tata averred that the domain ‘oktatabyebye.com’ includes the word ‘Tata’, which is identical in part and confusingly similar to their registered trademark and service mark ‘Tata’..Adding to the slew of high profile intellectual property matters in cyberspace, the management of ‘oktatabyebye.com’ have filed an appeal today against Tata Sons Limited with respect to the order of a sole panellist of the WIPO Arbitration and Media Centre. Tata Sons Limited had earlier succeeded in obtaining an order in their favour from the WIPO, to transfer the domain ‘oktatabyebye.com’..Tata Sons Limited, the principal investment holding company of the Tata Group of Companies had filed a complaint against ‘oktatabyebye.com’, contending that they had been consistently using the trademark ‘Tata’ for their business activity. Tata averred that the domain ‘oktatabyebye.com’ includes the word ‘Tata’, which is identical in part and confusingly similar to their registered trademark and service mark ‘Tata’ in which the Complainant has a statutory right as well as rights in common law. Tata, represented by the offices of Anand & Anand, sought the transfer of the domain name in their favour..The management of the portal okaytatabyebye.com also owns the leading Indian travel domain makemytrip.com. ‘oktatabyebye.com’ is a user based online travel portal sharing information about in India, among a host of other services. It was argued that the domain name was derived from the common parlance “OK Ta Ta Bye Bye” signifying travel, journey and related activities. It was contended that the expression “Ta Ta” has been used not as a standalone mark but as a generic description of bidding farewell since the website offers people an opportunity to record their journey at length to make it memorable..Chander Lall, name Partner at Lall & Sethi, told Bar & Bench, “The panellist has taken a narrow view of branding on the internet. This is a case of honest adoption and the order is plainly absurd.” He added, “I cannot conceive how the panellist thought that the mere use of ‘Tata’ in the domain name could indicate any bad faith. This action of the Tatas will only dilute their brand.”.This is the one of the few cases where corporate India has taken a domain name dispute to the WIPO. Domain disputes tend to be one sided, where a reputable company or an individual is filing for protection against cybersquatters..Indian companies like Sobha Developers, Mahindra have pursued aggressive strategy to defend their domain names that exist in their trademark.