WIPO Decision: "Ta Ta Bye Bye" to Domain Name

Ceres

New Member
I just came across a recent WIPO case between two Indian companies. The complainant is Tata Sons Ltd (part of the well-known TATA Group of companies). The respondent is also the owner of the popular travel websites MakeMyTrip.com and MakeMyTrip.co.in.

It took me a minute or two to figure out the domain name. It is: Ok Ta Ta Bye Bye .com. (farewell statement).

Unfortunately for the respondent, the panel ruled that it had to say Ta Ta Bye Bye to the disputed domain name. It ruled that the domain infringed on the well-known TATA mark, and was used and registered in bad faith:

A perusal of the aforesaid website hosted at the domain name <oktatabyebye.com> clearly shows that the Respondent has utilized the domain name <oktatabyebye.com> intentionally to attract for commercial game, Internet users to its website being <makemytrip.co.in>. The said been done by creating likelihood of confusion with the complainant’s mark. The purpose of utilizing the domain name <oktatabyebye.com> appears purely to funnel Internet traffic and thereby bring it to the website “www. makemytrip.com” for commercial gain.
To read more about this case, see the WIPO decision.
 
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Ceres

New Member
TATA is a trademark and TATA had a Soap product called OK.

That's interesting. I hadn't know about the OK soap product. Tata only relied on the TATA mark.

The panel stated that the addition of the words "OK" and "Bye Bye" do not take away from that fact that the disputed domain is confusingly similar in nature to "Tata."

Personally, I don't think it's a coincidence that the respondent used *two* Tata names (ie. OK and Tata) in the disputed domain....

But, I can't understand why MMT registered ClearTrip.net.in (ClearTrip.com is a competitor )
http://whois.domaintools.com/cleartrip.net.in

A future INDRP case in the making? :eek:
 
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pubdomains.in

New Member
This ruling is absurd and would set a wrong precedent if any phrase contains tata?
Internet traffic doesn't come just because of one part of domain name - it comes through content of a site and from what I have seen on the site, they are not using TATA anywhere other than in the domain name. Tata is not in travel business and this is an incorrect judgement - suitable to be taken to court for proper justice.
In India OK Tata Bye Bye is a common phrase to be found on majority of trucks - and I suggest TATA to go ahead and sue them as well!
 

Ceres

New Member
If a trademark is very strong and well-known, it doesn't matter if the domain name is used in a different area of business - it will still be infringing.

Aside from ta ta being a farewell term, can anyone confirm whether tata means anything else? Thanks in advance.
 

pubdomains.in

New Member
There are a few acronyms (not widely used though)

Acronym Definition
TATATime and Time Again
TATATenth Anniversary Trans Am
TATAThymine Adenine Thymine Adenine (part of box binding protein)
TATATransanal Abdominal Transanal Radical Proctosigmoidectomy

TATA is made up of TA so
TA
- Territorial Army
- Trans Am (Pontiac Model)
- Toyota Atlantic
- and dozen more ..

OKTATABYEBYE - is for farewell and tata is used all over india not for the company TATA but to bid farewell to folks, so rather than looking at micro level WIPO should have looked at the entire concept of oktatabyebye before passing the judgement.
 

Ceres

New Member
In India OK Tata Bye Bye is a common phrase to be found on majority of trucks

Thanks pubdomains.in, I didn't realise this farewell phrase was so popular in India.

Does the average person actually say "ok ta ta" or just "ta ta" ? The only reason I'm asking is to ascertain whether or not "ok" was included in the domain because of TATA's soap product called OK. If "ok" is indeed part of the phrase, then obviously that's not the case...

BTW, I just read that OkTataByebye.com intends to appeal the WIPO decision to the Delhi High Court. They certainly have a lot of supporting comments on their website.
 

pubdomains.in

New Member
Ceres, folks often say OK See you Later or OK Tata.

I didn't even know TATA had a soap by the name OK - thus enough indication that domain was not purchased to encash popularity of a soap bar (if that exists)!!!
 

Ceres

New Member
Ceres, folks often say OK See you Later or OK Tata.

I agree, but would you really include the "ok" part in a domain name? For example, I can see someone registering byebye.com but not okbyebye.com. I don't know, perhaps I'm just being too cynical :eek: ...it just struck me as odd...

I didn't even know TATA had a soap by the name OK - thus enough indication that domain was not purchased to encash popularity of a soap bar (if that exists)!!!

Whether or not the soap exists today, I didn't know about it simply because I don't live in India. ;)
 

Jeff

Administrator
Staff member
Country flag
oktata.co.in was registered by Tata as far back as 2002. Tata also owns oktata.in.

Kind of a borderline case. I think it's a generic term, but the fact that Tata has oktata and MMT registered ClearTrip.net.in makes me a bit suspicious of the motives behind the registrations.

Still, this is the kind of thing that should be decided in court, not on a UDRP, which is supposed to be aimed at cases of blatant cybersquatting.
 

pubdomains.in

New Member
Jeff,
Not sure if Tata owns oktata.in - though they did register OKTATA.co.in in 2002.
Website status for oktata.co.in - is inactive, so tata purchased the domain but never bothered to create a site or redirect to any of it's group.
If we look at other TLD's
oktata.com and oktata.net http://oktata.net were registered in 2000
oktata.com for travelogue (not sure how it was all these years - right now it is just a one pager on Rohtang pass) while oktata.net claims to give bestdeals on wheels - though it shows a blank page. Both are owned by single entity.

----
a. TATA's domain is inactive - so obviously I can't divert traffic from a non existent / inactive website
b. This appears more like a reverse domain name hijacking effort by TATA.
c. It is possible that TATA has TM on OK and TM on TATA, but do they have TM by the phrase OKTATA - I doubt, else all domains not owned by TATA could be next targets.
Lucky for them that owners of oktata.com / .net didn't register oktata as TM else TATA would have had to say tata bye bye to oktata.co.in for violating and tm infringement (considering it came in existent 2 years after .com / .net were registered!!!)
Btw - oktata.org / oktata.biz are still not registered ;) any takers!!!
 

Jeff

Administrator
Staff member
Country flag
Thanks for the comic!

I'm surprised how much coverage this case has received outside of the domainersphere.
 

Ceres

New Member
Oktatabyebye.com (aka MakeMyTrip) has now appealed the WIPO decision in the Delhi High Court.

In its petition, MakeMyTrip submitted that its domain name www.oktatabyebye.com does not clash with the registered trademark of Tata Sons and it had a mere phonetic similarity.

The matter will be again taken up by the court's registrar on January 11, 2010.
Source: MakeMyTrip moves Delhi HC against ruling favouring Tatas over domain name clash

It will be very interesting to see how the High Court decides this case...
 
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itssri

New Member
An observation:

The authorities concerned have not at all taken note of the fact that "tata" is also a popular generic word, widely used in India for bidding farewell, and when one says tata to someone it does not lead to recall of any company's trademark in the remotest sense.

And, a query:

If someone registers the domain name BatataWada.com (it's available) and sells "batata wada" from that site, will the concerned authorities conclude that batatawada.com is fishing for the customers of a particular company whose trademark happens to be present in the initial part of this name which is in fact a generic word (2 prominent companies can fight over this as there are 2 well known trademark names in this generic word, which means potato in the local language).

FYI, A batata wada is something similar to a vegetable cutlet. Batata is the local name for potato in western India and wada is the local name for a ball shaped cookie, and both words I believe, are 100% generic.

And, a recipe for lightening the moods:

To make "Batata Wada", you mash boiled potatoes, stir fry them in light spices with grated onions and a paste of ginger and green chillies, make balls of the resulting mixture, dip them in a batter of Bengal gram flour and cook in oil. Also called "bonda" or "aloo bonda" in many parts of India, it is available in street corner stalls for less than 10 cents a piece, whereas the same may cost upto a few dollars in hotels similar to the one's owned by... it's your guess?
 

Ceres

New Member
I'm having a hard time making my mind up about this case, as I can see both sides of the argument.

On the one hand, Tata is a well-known registered trademark. Seems like Tata Sons obtained a secondary meaning for the generic farewell term "ta ta" (just like Apple Inc did for "apple").

On the other hand, "Ok ta ta bye bye" is a common farewell statement, and MakeMyTrip did not use the disputed domain in the same channel of trade as Tata Sons.

It seems that Tata Sons registered OkTata.in a few months before OkTaTaByeBye.com was registered.

Lastly:

But, I can't understand why MMT registered ClearTrip.net.in (ClearTrip.com is a competitor )
http://whois.domaintools.com/cleartrip.net.in

ClearTrip.com was registered in 2005, while ClearTrip.net.in was registered in 2007. According to Archive.org, ClearTrip.net.in had links to both MakeMyTrip.com and MakeMyTrip.co.in...
 
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