Tata Motors Limited v Aaron Thomas

WIPO Case No. DAI2025-0002

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tata Motors Limited v. Aaron Thomas

Case No. DAI2025-0002

1. The Parties

Complainant is Tata Motors Limited, India, represented by DePenning & DePenning, India.

Respondent is Aaron Thomas, Canada, self-represented.

2. The Domain Name and Registrar

The disputed domain name <fleetedge.ai> (the “Domain Name”) is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2025. connection with the Domain Name. On January 15, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy Service provided by withheld For Privacy ehf) and contact information in the Complaint. The Center sent an email to Complainant on January 17, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 20, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2025. Respondent sent emails to the Center on January 22 and

February 12, 2025. The Response was filed with the Center on February 12, 2025. In its discretion, the
Panel considered the Response even though it was submitted one day late.

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The Center appointed Robert A. Badgley as the sole panelist in this matter on February 17, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a large industrial firm based in India. It has been manufacturing commercial vehicles since 1954 and exporting such vehicles and automobiles since 1961. According to Complainant, it launched on July 13, 2020, a digital platform called FLEETEDGE to enhance the management of vehicle fleets.

Complainant asserts:

“The platform shares action-able insights in real time on vehicle status, health, location and driver behavior of every vehicle connected to it. This enables owners and fleet managers to take better decisions for enhancing operational efficiency, lowering logistics costs and improving profits.”

Complainant alleges that the FLEETEDGE software has acquired a “huge customer base.” The record, however, contains no evidence of sales or the number of customers, either before the Domain Name was registered or since.

Annexed to the Complaint are several magazine articles mentioning Complainant’s “Fleet Edge” platform. Three of these articles are from July 2020, roughly five months before the Domain Name was registered. Most of the articles annexed to the Complaint are from 2024, long after the Domain Name was registered.

The headlines of the July 2020 articles are as follows: “Tata Motors introduces Fleet Edge” (Commercial Vehicle July 13, 2020); “Tata Motors Introduces Fleet Edge, Next Gen Digital Solution For Optimal Fleet Management´(PlantandEquipment.com July 19, 2020); “Tata launches Fleet Edge, digital fleet management

platform” (Team-BHP.com July 13, 2020).

Complainant holds various registrations for the word mark FLEETEDGE, including: Uganda Reg. No.
UG/T/2022/76206 (registered on August 3, 2023, effective July 26, 2022); South Africa Reg. No.
2022/18082 (registered on June 10, 2022); India Reg. No. 4571907 (registered on May 20, 2022, effective
July 16, 2020).

The Domain Name was registered on December 12, 2020. At the same time, Respondent also registered, via the same Registrar, the domain names <fleetedge.ca> and <fleetedge.io>. The Domain Name resolves to a parking page set up by the Registrar.

Respondent asserts that these domain names were registered “as part of a cohesive branding strategy for fleet management and IIOT [Industrial Internet of Things]-related services.” Respondent states further:

“The Respondent’s professional activities have centered on developing and delivering automation and IIOT
solutions. The term ‘Fleetedge’ reflects the Respondent’s legitimate plans to innovate in this area and

provide technology solutions for fleet optimization.”

There is no evidence in the record to corroborate Respondent’s alleged “professional activities” or plans.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.

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B. Respondent

Respondent asserts that it registered the Domain Name – along with two other domain names incorporating the term “Fleetedge” – in order to pursue a legitimate business.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel finds that Complainant has rights in the mark FLEETEDGE through registration demonstrated in the record. The Panel also finds that the Domain Name is identical to the mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii)       you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii)      you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel need not decide this issue, given its conclusion below on the “Bad Faith” element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

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(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided that Respondent has
engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.

The Panel concludes, on the record provided here, that Complainant has failed to carry its burden of proving bad faith registration and use under the Policy. At the time the Domain Name was registered, Complainant had been using its FLEETEDGE mark in commerce for five months. As noted above, it is not apparent from the record provided here how much renown that mark had acquired by December 2020, when the Domain Name was registered. Complainant annexed three July 2020 articles from rather specialized trade publications that made reference to Complainant’s “Fleet Edge” platform.

In the Panel’s experience, in many instances where a new brand is announced in the media and a confusingly similar domain name is registered in bad faith, the domain name registration typically follows quickly upon the news coverage. Here, there was a five-month gap between the handful of July 2020 articles (again, in rather arcane trade periodicals) and the Domain Name registration in December 2020.

The Panel notes further that all trademark registrations mentioned by Complainant occurred well after the mark is in Canada, Respondent’s country.

Domain Name was registered, even though the priority date for the India trademark registration predates the

In addition, while the mark FLEETEDGE is a coined term, it is a combination of two ordinary dictionary terms. Respondent submitted no evidence to corroborate his alleged business plan. Even so, in these circumstances, the Panel finds Respondent’s lack of use of the Domain Name for five years, plus the fact that he registered two other domain names including “fleetedge” at the time he registered the Domain Name, to be consistent with an alleged, albeit unfulfilled, business plan.
Unlike in the case of an entirely fanciful mark, it is not inconceivable that someone could decide to combine
“fleet” and “edge” for some legitimate business or other purpose. To be sure, the Panel is not convinced that

In sum, the key question here is whether Complainant has carried its burden of proving that Respondent more likely than not had Complainant’s FLEETEDGE mark in mind when registering the Domain Name. On this fairly sparse record, the Panel cannot conclude that Complainant has carried its burden.

The Complaint fails.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

Respondent has asked the Panel to find RDHN against Complainant. In this case, Complainant had been using a trademark for several months before Respondent registered the Domain Name. Complainant’s trademark is a coined word (even if comprised of two ordinary words). At the time the Complaint in this proceeding was filed, there was no evidence that Respondent had put the Domain Name to any legitimate

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use. This Complaint was dismissed simply because Complainant failed to carry its burden of proof, and not

because of any improper conduct.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: March 3, 2025