SAMUEL CONTI, United States District Judge
WHEREAS, Plaintiff Tata Sons Limited is an Indian corporation that constitutes a world-famous group of companies that provides a vast array of goods and services internationally in such diverse areas as metals and minerals, automotive and engineering, information technology services, chemicals, agro-business, hotels and power;
WHEREAS, Tata Chemicals Limited, a company within Tata Sons's group of companies, established in 1939, is one of India's leading manufacturers of inorganic chemicals and fertilizers, owning and operating the largest and most integrated inorganic chemical complex in India;
WHEREAS, Tata Iron Steel Company Limited ("TISCO"), a company within Tata Sons's group of companies, was established in 1907 and operates the single largest steel works operation in the India and exports its products throughout North America, including in the United States;
WHEREAS, as early as 1917, Tata Sons (through and with its related group of companies) has continuously used the TATA name and mark and numerous other TATA-based Names and Marks in connection with its vast array of products and services and, as a result, through great expense and effort, Tata Sons has developed extensive goodwill in the United States and throughout the world in its distinctive TATA-based company names, trademarks, and trade names, under which its various goods and services have been marketed and sold;
WHEREAS, Tata Sons owns and has used the following United States trademark registrations: TATA (U.S. Reg. No. 955, 879), TATA (U.S. Reg. No. 789, 432), TATA CONSULTANCY SERVICES (Stylized) (U.S. Ser. No. 78/094, 642), TATA CONSULTANCY SERVICES (Stylized) (U.S. Ser. No. 78/094, 626), and TATA T (and Design) (U.S. Ser. No. 75/831, 987);
WHEREAS, in addition to the foregoing, over the course of the past 134 years, Tata Sons Ltd., through and with the Tata Sons's group of companies, has adopted and intends to continue adopting numerous other TATA-based marks and names for use with its wide range of products and services. Included in such Names and Marks are the following TATA-based trade names and house marks that Tata has adopted and is using are Tata Industries Limited, Tata Ryerson Limited, Tata Engineering Locomotive Company Limited, Tata SSL Limited, Tata Cummins Limited, Tata Sponge Iron Limited, Tata Holset Limited, Tata Metaliks Limited, Tata AutoComp Systems Limited, Tata Yodogawa Limited, Tata Johnson Controls Automotive Systems Limited, Tata Refractories Limited, Tata Toyo Radiators Limited, Tata Advanced Materials Limited, Tata Auto Plastic Systems Private Limited, Tata Teleservices Limited, Tata Yazaki Autocomp Private Limited, Tata Telecom Limited, Tata Ficosa Automotive Systems Private Limited, Tata Internet Services Limited, Tata Yutaka Autocom Private Systems Limited, Tata Infotech Limited, Tata Projects Limited, Tata Elxsi (India) Limited, Tata Korf Engineering Services Limited, Tata Technologies Limited, Tata Construction and Projects Limited, Tata Interactive Systems, The Tata Iron and Steel Company Limited, Tata Tea Limited, Tata Tetley Limited, Tata Coffee Limited, Tata Infomedia Limited, Tata Ceramics Limited, The Tata Power Company Limited, Tata Chemicals Limited, Tata MG Life Insurance Company Limited, The Tata Pigments Limited, Tata TD Waterhouse Securities Limited, Tata Finance Limited, Tata Finance Merchant Bankers Limited, Tata Finance Amex Limited, and Tata HomeFinance Limited;
WHEREAS, Tata Sons intends to adopt additional, although as yet unknown, TATA based trademarks and service marks in the future in connection with its varied businesses;
WHEREAS, Tata Sons also has registered and owns numerous domain names incorporating TATA, including TATA.COM, TATASJNFO, TATA.ORG, TATA-SONS.COM, TATA.CO.IN, TATASONSLTD.COM, TATA.COM.RU, TATASONSLIMITED.COM, TATA.CO.NZ, TATASONS.CO.IN, TATA.WS, TATAONEWORLD.COM, TATA.WS, TATAWORLD.COM, TATAIMMA.COM, TATAWORLD.NET, TATAS.ORG, TATAWORLD.ORG, TATAS.BIZ, TATAMAIL.COM, TATACHEMICALS.COM, TATAPOWERCO.COM, TATAHYDRO.COM, TATAWESTSIDE.COM, TATAHONLYWELL.COM, TATAYODOGAWA.COM, TATATELESERVICES.COM, TATASSL.COM, TATATIMKEN.COM, TATABAZAR.COM, TATAAMEX.COM, TATA AMEX.COM, AMEXTATA.COM, TATAVSNL.COM, VSNLTATA.COM, TATAENGINEERIING.COM, TCSINDIA.COM, TATAAIRLIINES.COM, TATAINDUSTRIES.COM, TASCAREERS.COM, TATARACING.COM, TATATKK.COM, TATAMASTERCRAZFT.COM, TRDTATA.COM, RATANTATA.COM, RATANTATA.NET, RATANTATA.ORG, RATANTATAANFO, RATANTATA.BIZ;
WHEREAS, in or about November 2001, Defendant registered tatasons.net, tatasons.org, tatasons.info, tatasons.biz, tatachemicals.biz, tisco.biz and voltas.biz and Defendant's husband Rajesh Pendse registered tatafinance.biz and tatafinance.info (all domain names collectively referred to as the "Pendse Domain Names) through the registrar eNom, Inc. or eHost, Inc., for which the Registries include Network Solutions, Inc. ("NSF"), Neulevel, Inc. ("Neulevel"), and Afilias Limited;
WHEREAS, the Pendse Domain Names all resolve to an identical or nearly identical, multicolored, static web page which simply states "Welcome," and provides the email address chitrarp@yahoo.com or pendsefamily@yahoo.com which are Defendant Pendse's email addresses;
WHEREAS, Defendant is not nor has ever been operating any legitimate website at or conducting any legitimate business through the Pendse Domain Names;
WHEREAS, Defendant was aware of Tata Sons and its TATA Names at the time she registered the Pendse Domain Names;
WHEREAS, Defendant secured the Pendse Domain Names only after Tata Sons and the Tata Sons's group of companies began using in interstate commerce the TATA Names and Marks, TISCO mark and VOLTAS mark and after they had become famous;
WHEREAS, a dispute has arisen between the parties regarding the Pendse Domain Names;
WHEREAS, it is now the desire and intention of Tata Sons and Defendant to settle on mutually agreeable terms, all disputes and claims relating to Defendant Pendse's registration of the Pendse Domain Names, and to avoid costly litigation;
IT IS THERFORE STIPULATED, by and between the parties hereto or their counsel, who have been authorized to execute this Stipulation for Permanent Injunction and Final Order Thereon on their own and on their clients' behalf, that, as of November 8, 2002, Defendant Pendse, her agents, servants, employees, and any and all persons in active concert or participation with them who receive actual notice of the injunction or restraining order are hereby permanently enjoined and restrained as follows:
1. Cessation of Use of TATA-based Names. Marks and Domain Names. Defendant agrees as follows:
(a) On or before November 15, 2002, Defendant will take all steps required by the current procedure of the registrar for the Pendse Domain Names, for the complete transfer of each and every one of the Pendse Domain Names. Defendant will further assist and promptly cooperate with Tata Sons in completing any documents, providing additional information or assistance, necessary to initiate or complete transfer of the Pendse Domain Names in order to effect a complete transfer of the Pendse Domain Names as expeditiously as possible.
(b) On or before November 15, 2002, Defendant will cease all use of the Pendse Domain Names and any other trade name, trademark, service mark, or other designation containing or consisting of the word TATA, or any other trade name, trademark, service mark or other designation confusingly similar to any trade name, trademark, service mark or other designation of Tata Sons.
(c) Defendant will not, in the future, adopt or use any domain name, trademark, trade name, or service mark that includes the word TATA, alone or as a prefix or suffix, regardless of stylization, design or device, or any other trade name, trademark, service mark or other designation confusingly similar to any trade name, trademark, service mark or other designation of Tata Sons.
2. Written Confirmation. On or before November 22, 2002, Defendant shall confirm to Tata Sons in a writing executed under penalty of perjury, that it has complied with all of the terms and conditions of this Stipulation for Permanent Injunction. Such written confirmation shall state with specificity each and every action taken by Defendant to comply with Paragraphs 1(a) and 1(b). Said written confirmation shall be addressed to:
Kathryn J. Fritz, Esq. Fenwick West 275 Battery Street, Ste. 1500 San Francisco, California 94111
3. Defendant Pendse agrees to notify Tata Sons, through counsel as designated in Paragraph 2, above, within five (5) days of her registration or use of any domain name, trademark, trade name, or service mark that includes the word TATA, alone or as a prefix or suffix, regardless of stylization, design or device, or any colorable imitation of TATA, or any other trade name, trademark, service mark or other designation confusingly similar to any trade name, trademark, service mark or other designation of Tata Sons.
IT IS FURTHER STIPULATED that upon entry of the above Stipulation for Permanent Injunction as an Order of the Court, the above-captioned action shall be concluded and no further action will be taken or will be necessary, except and unless Tata Sons is required to seek the Court's assistance to enforce this Order. Each party shall bear its own costs and attorney's fees in connection with this action.
ORDER
The above stipulation of the parties is hereby entered as a final order of permanent injunction by the Court.