The Tata Group vs. bodacious-tatas.com ruling.

[mookydooky]

For a while now, there has been quite a bit written about cybersquatters who register names of famous celebrities and companies and then try to sell them. Quite reasonably, the cybersquatters have frequently lost. Lately, though, perhaps things are going to far, as in the case of Tata Group vs. bodacious-tatas.com.

The following is excerpted from an article in the NY Times.

By JAMES GLEICK

Before there was an Internet, Ratan N. Tata of Bombay, chairman of the Tata Group, India's pre-eminent business empire, had no occasion to butt heads with an American pornographer, but he cares about his name and its value. He has controlled Tata Steel, Tata Engineering, Tata Power, Tata Chemicals, Tata Finance, Tata Telecom and Tata Tea, not to mention Tata Sons Ltd. and the Sir Ratan Tata Trust.

Then a New Jerseyan registered the domain name BODACIOUS-TATAS.COM and used it to display what subsequent legal proceedings referred to as ''sexually explicit material.'' The House of Tata went to court, arguing that the Web site was taking ''a cash ride'' on its good name. Tata won an injunction in 1999. This, however, as handed down by the Honorable High Court of Delhi, had no practical effect on the porn site in New Jersey. So the company filed a complaint with the World Intellectual Property Organization, demanding the cancellation of the domain name.

The arbitrator's decision has become notorious.

First, he ruled that TATA is an exemplary trademark: ''It is now generally accepted in most countries that well-known marks, particularly those surrounded by an aura of high repute, excellent quality and respectability, deserve wide protection.''

Then he considered the problem of the extra word, BODACIOUS. The problem was whether TATA and BODACIOUS-TATAS were ''confusingly similar'' -- the canonical test of trademark violation. He decided they were: ''The addition of a word like bodacious ['South Midland and Southern U.S. 1. thorough; blatant; unmistakable; 2. remarkable; outstanding; 3. audacious; bold; brazen' / Webster's Encyclopedic Unabridged Dictionary of the English Language, 1989], and the addition of the letter s, does not render the Domain Name less identical or less confusingly similar to a trade or service mark. Indeed, the opposite is true, particularly when one considers most of the meanings attributed to the word bodacious.'' Because of the Internet's ''tremendous reach,'' he ruled, people might well be fooled into thinking that the Tata Group had gone into the pornography business. Domain name canceled.

This caused a mild Internet storm. James Love, director of the Consumer Project on Technology, which tracks many WIPO decisions on name disputes, considers this one an abuse of power. ''I can't imagine that anyone would think that a domain called BODACIOUS-TATAS had anything to do with this industrial giant, or that they would type it in by mistake,'' he said.

End of article.

What do you think?

[Gizmo]

Well, being from Missouri, and speaking Southwest Mozarkian as I do, there is absolutley no confusion in my mind whatsoever as to what the phrase 'Bodacious-Tatas' means.

The real question is, would it be reasonable for someone from another country, not familiar with the word bodacious, be confused by this? I wouldn't think so, but my viewpoint is somewhat biased.

[danrok]

I know the word bodacious, but bodacious-tatas means nothing to me. I hadn't heard of the Tata Group before now either.

There will always be problems with words on the internet and elsewhere. I think Esso use the name Exxon becuase Esso means something unpleasant in somewhere like Japan - I can't remember where now.

People who live in S****horpe in England also have problems, becuase their town name often gets censored.

EDIT: just like that!

[Daniel ~]

From the Court of the British Admiralty:

"You shall not side with the mighty against the weak"

They bought that decision as sure as I'm sitting here.

[cloasters]

Years ago there was a lousy(so I read) porn flick named Bodacious Tata's. India is said to like its movies with no sex at all, perhaps this added to Mr Tata's discomfort?

[Daniel ~]

One can only hope! ":O}

[SteveI]

This is dangerous precedent.
I guess this means that if I am able to make a business for myself using my own name, I can go out and sue about 100 or so major corporations...

You see, for those who don't know it, My name is INN!

[Gizmo]

Hey. As lawsuit-crazy as this country has gotten, ANYTHING is possible!

[Daniel ~]

Think LARGE! Start a class action suit for all the INN's of this world!

[mookydooky]

Originally Posted by SteveI

This is dangerous precedent.
I guess this means that if I am able to make a business for myself using my own name, I can go out and sue about 100 or so major corporations...

You see, for those who don't know it, My name is INN!

Actually, it might be the other way around. Those corporations might sue you to stop you from using your name.

[SteveI]

Originally Posted by mookydooky

Actually, it might be the other way around. Those corporations might sue you to stop you from using your name.

I wish...
Since I can directly tie my surname to my family tree for about 600 years, and the same itself as a real family name for over 2000 years, I can make the assertion that my name existed before the English Language, and as such have precendent and legal rights to the name in all English speaking countries.

[mookydooky]

Originally Posted by SteveI

I wish...
Since I can directly tie my surname to my family tree for about 600 years, and the same itself as a real family name for over 2000 years, I can make the assertion that my name existed before the English Language, and as such have precendent and legal rights to the name in all English speaking countries.

Sorry, doesn't work that way. You would be able to use your name privately, but you wouldn't be able to use it in a business enterprise. For example, just because my family name has been McDonald for over 200 years, if I open up a burger joint and called it McDonald's, I would get sued before I could say, "you want fries with that?" Not only would I get sued, they would win. It's already happened dozens of times and McDonald's Corp. has won every lawsuit and has now set a precedent. Same deal with the name Howard Johnson. There's something in trademark law called dilution and basically it means if people can remotely confuse the two entities, the trademark holder wins, and they win legal fees and treble damages if they can prove willfulness. The simple fact that you have either the good or bad fortune to have a widely recognized name doesn't give you the right to use it in a business entity, let alone trademark it. With trademark, it's basically who did it first and how widely it's spread.

EDIT: This is why companies are now busy making up previously non-existant words and trademarking them. Take Altria as a recent one, but this has been common practice for a while with names like Kodak being among the most famous. Recently, car makers have been getting into it with names like Lexus and Acura.

[danrok]

Lord Macdonald, Premier Clan Chief of Clan Donald is not too happy with "McDonalds".

http://www.inwap.com/u/joe/mcmunchies.html

They should be aware - have they not watched the film 'Highlander'? LOL

You can't open a burger joint called McDonalds, but you can use that name under certain circumstances, for example if you were a self-employed painter/decorator you should be ok. This is a very complex area of law which is why things often get settled out of Court. It can also become very expensivein legal costs.

[mookydooky]

Originally Posted by danrok

Lord Macdonald, Premier Clan Chief of Clan Donald is not too happy with "McDonalds".

http://www.inwap.com/u/joe/mcmunchies.html

They should be aware - have they not watched the film 'Highlander'? LOL

You can't open a burger joint called McDonalds, but you can use that name under certain circumstances, for example if you were a self-employed painter/decorator you should be ok. This is a very complex area of law which is why things often get settled out of Court. It can also become very expensivein legal costs.

You can use the name "McDonald's" under certain circumstances, but those are very few and very limited. Your painter/decorator might be one. A good part of it depends on whether dilution is supposed to have happened or not. For example, if the painter uses a take off on the double arches thing in his letterhead, especially if it's yellow, people might very well believe it's affiliated with the burger company. Then they would lose in court. This has already happened in McDonald's Corp vs. McSleep, a motel chain. If however, it's something like "John McDonald's and Sons Designs," and doesn't use a stylized "M" he's pretty safe.

There are certain provisions under the law to allow people to use their names in business even though they are trademarked. One of the provisions is that it be geographically limited. For example, if your name is Howard Johnson, you MIGHT be able to use it for something like "Howard Johnson Landscaping." You won't be able to open a bed and breakfast though. Trademark law is really annoying and complex and I have to deal with it all the time in my businesses. There are issues with abandoned trademarks, issues with dilution, issues with willful fraud and misrepresentation and a host of other crap.