TRADEMARKS ON THE INTERNET
CONTENTS
Introduction
As the concept of global village is holding ground, and globalisation, liberalization and privatization is finding its way in the minutest of the commercial activities in developed, developing, and least developed countries, the importance of trademark is growing multi-fold. One cannot deny the value, a businessman attaches to its trademark. People identify the product of a particular manufacturer through its trademark. With the Internet being used in a big way by the businessmen for not only advertising and promoting their products, but also for selling them, the principles of trademark, infringement of trademark and passing off are being applied even in the online environment. There is an increasing awareness that any kind of activity with the aid of technology which would made the consumer believe that the goods and services being offered on the Internet might be coming from a particular source and thus, induces the consumer to accept such goods and services, should be discouraged. One of the primary areas is Domain Names which has been legal protection equal to that of a trademark. Others areas we will be discussing is the effect of use of somebody else’s trademarks/names in Meta-tags and whether that constitutes trademark infringement. Lastly, we will touch upon the issues of Framing and Linking and their impact on trademarks.
DOMAIN NAMES
With the advent and acceptance of Internet by people across the globe, the notion of trademark took a new turn. To access a website, one requires a web address. This web address comprises of domain names. As the number of Internet users increased, the importance of domain name increased. People started identifying the domain name with its owner. For example, if one is to access the website of TATA, one would, in a natural process, presume the website to be www.tata.com or www.tata.org. This gave the website address/domain name a further impetus and gave it an importance equivalent to that of a trademark. Domain names no longer were considered to be merely a tool to gain access to the website. Rather, they came to be used to identify the goods and services which a particular company is offering, be it online or offline. If a company has acquired a distinguishing mark (like TATA) with respect to a particular product, the company would be entitled to acquire that domain name (www.tata.com or www.tata.org) as well. Domain name has thus been given legal privileges of a trademark and anyone registering the domain name is required to show good faith use.
Once hooked to the Internet, we would like to access certain websites. Each website is nothing but a set of information, programes and webpages stored on the some server across the Internet. This server would have an Internet Protocol (IP) address. For example, keying 64.233.161.99 takes us to the popular search engine, Google. However, it is difficult to remember the complicated numbers specially if we are to access a number of websites. A system was thus evolved linking each such number to a name. So, instead of typing 64.233.161.99, we can type www.google.co.in to get the same result. Much simpler!
Internet Corporation for Assigned Names and Numbers
The Internet Corporation for Assigned Names and Numbers (ICANN) is a technical coordination body for the Internet. It was created in October 1998. it has responsibility for Internet Protocol (IP) address space allocation, protocol identifier assignment, generic (gTLD) and country code (ccTLD) Top-Level Domain name system management, and root server system management functions. These services were originally performed under U.S. Government contract by the Internet Assigned Numbers Authority (IANA) and other entities.
ICANN is governed by an internationally diverse Board of Directors overseeing the policy development process. ICANN's President directs an international staff, working from three continents, who ensure that ICANN meets its operational commitment to the Internet community.
gTLD
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for example: .com, .net and .org.
In addition to the above, seven new gTLDs were also selected by ICANN on November 16, 2000 .
.aero: It is only intended for use of the members of the aviation community. Registration of a .aero domain name is done in 2 steps: (a) Identification: before a registrant can submit an application for a .aero domain name, the registrant must be recognized as a member of the aviation community and obtain an Aviation Membership ID from the Registry; (b) Registration: once the registrant has obtained an Aviation Membership ID, the Registrant can obtain a .aero domain name from an accredited Registrar. (See .aero Domain Management Policy for details)
.biz: It is only intended for domain names that are or will be used primarily for a ‘bona fide business or commercial purpose’.
.coop: It is a sponsored gTLD for cooperatives. One has abide by the .coop Charter.
.info: It is an open gTLD without restrictions (anyone can register any domain name)
.museum: It is a sponsored TLD for museums. One has to abide by the .museum charter.
.name: It is an open gTLD for registration of personal names or names of ficticious characters on the second level or on the second and third level (e.g. <Smith.NAME> or <John.Smith.NAME> or <Smith.John.NAME> or <J.Smith.NAME>. However, it permits only for personal names (described as the legal name or the name by which the person is commonly known) of an individual or of a fictional character provided applicant has a trademark in that name. Further, additional distinguishing elements (e.g. numbers) permitted
.pro: It is open for unsponsored TLD for qualified professionals meeting the registration restrictions. See the Appendix of the .PRO Registry Agreement for details. Registration is permitted on the third level only. The second level will indicate individual professions (<smith.law.pro>, <smith.cpa.pro>, <smith.med.pro>). In an initial phase, domain name can only be registered by lawyers (.law.pro), medical doctors (.med.pro) and chartered accountants (.cpa.pro).
ICANN is currently exploring possibilities to add additional gTLDs. See a Report on Review of new gTLDs and assess for yourself how advisable it is to have more gTLDs.
ccTLD
Two letter domains, such as .uk, .fr or .au (for example), are called country code top-level domains (ccTLDs) and correspond to a country, territory, or other geographic location. The rules and policies for registering ccTLDs vary significantly and a number of ccTLDs are reserved for use by citizens of the corresponding country. A few of these ccTLDs were established in the 1980s, but most of them created in the mid and later 1990s.
See policies governing the establishment, delegation and operation of ccTDLs.
The administration of a ccTLD is left to the specific country concerned. For example, the Administration of Domain Names within the .in (Indian) ccTLD is looked after by the NCST. The IANA provides for a Root-Zone Whois Information Index by TLD Code. This Index enlists all the countries with this ccTLD which makes for an interesting reading. With the gTLDs being over-used and short in supply, one is now turning to ccTLDs. There are quite many instances where the ccTLDs are proving to be more apt to indicate more meaningfully one’s business or profession. Take for example, .tv (of Tuvalu Republic of Moldova Mauritania ), .ms (of Montserrat), .my (of Maldives ), .tm (of Turkmenistan ), .ac (of Ascension Island), .id (of Indonesia ), im (of Isle of Man ), etc.
Indian (.in)
The Indian ccTLD is .in. Initially, the policy for registration in India was an extremely restrictive on and allowed for a registration only if the application was a registered commercial entity in India
Following are key points of the liberalized policy:
(a) New categories of the sub-domains such as gen.in, firm.in and ind.in have been added.
(b) For a foreign entity seeking to register a domain name in India
(c) The initial co.in requirement that one has to have a local presence in the form of a branch/liaison office has, to a certain extent, been done away with.
(d) The gen.in category has been specifically added for foreign corporations who are unable to meet the stringent requirements added for a co.in registration.
(e) The earlier requirement stipulating that the name-server should be physically present in India and the domain name applicant should have permanent Internet connectivity through an Internet Service Provider, located in India has been dispensed with.
For further details, visit http://domain.ncst.ernet.in.
Importance of Domain Names
The domain name gained importance over the years as business entities realized that Internet could be a convenient mode for not only imparting information but also using it for gaining access to a world-wide market and selling its products. Naturally, a company would prefer its own trade mark to be used as domain name since people recognize the trade mark. So a newspaper like The Economic Times would prefer www.theeconomictimes.com for the purpose of putting its daily version online so that everyone around the world could read it. On the other hand, even the readers would expect that www.theeconomictimes.com would contain the online version of the daily, The Economic Times rather than, maybe, contain a cartoon feature by some unknown individual or worse, some pornographic material.
The Supreme Court, recently in Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd., observed as under:
“The original role of a domain name was no doubt to provide an address for computers on the Internet. But the Internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the Internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. In the commercial field, each domain-name owner provides information/services which are associated with such domain name.”
It was further observed that “a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connected with a business, the value of maintaining an exclusive identify becomes critical”. Therefore, the importance of a domain name is no less than the trademark itself. If a particular trade name has come to be known in the market to represent a particular commodity or a particular company, the general guess of people online would be that the domain name equivalent to such trade name would be used by the such company. The domain name in the online world, just like the trade name in the offline world, serves to identify the goods/services provided by the company.
However, there is one big problem. The process of registration of a domain name is not as stringent as that of registration of a trademark. The system is based primarily on first-come-first-serve basis. Anyone can approach a Domain Name Registrar and register any available domain name. The Delhi High Court in Acqua Minerals Limited v. Pramod Borse (infra) observed as under:
“So far as the Registering Authority of the domain name is concerned it agrees for registration of domain name only to one person. That is on first come first serve basis. If any person gets the domain name registered with the Registering Authority which happens to be trade name of some other person, the Registering Authority has no mechanism to inquire into it to decide whether the domain name sought to be registered in is in prior existence and belongs to another person.”
So, a person just might approach the Registrar and register www.mahindra.com though he does not have the remotest connection with famous Mahindra & Mahindra in Mumbai. Naturally, for Mahindra & Mahindra, it might be wrong for anyone to register www.mahindra.com. After all, ‘Mahindra’ is quite a popular trade mark for its products. It was soon realized that such domain names have been registered by unauthorized persons, not only for the purpose of taking advantage of the goodwill created by the trade mark owners but also, and most of times, for receiving certain financial gain in exchange of the domain name.
Check www.greatdomains.com for an interesting value-analysis of various domain names.
It is also important to realize that in the online world, there can be only one domain name as opposed to the possibility of two or more trademarks co-existing in different working spheres. For example, might be selling garments under the mark ‘Roughins’ in India and somebody else might be selling the same product under the same mark maybe in New Zealand. One can even have ‘Roughins’ registered as trade marks in different countries without affecting the other registrations. Leaving apart legal objections, this arrangement is perfectly possible in the physical world. However, the online world does not permit of such technological arrangement. If one person owns www.roughins.com, registration of the same domain name by another person is not permissible. One might register www.roughins.net or www.roughins.org or www.roughins.biz but cannot register www.roughins.com. In such a situation, one might conclude that the domain names have a higher degree of importance than the trade mark. Even though one might be using the trade mark ‘Roughins’ somewhere else in the world but it is not affecting one’s business in India, not much damage is done. But domain name is single. If one registers, another cannot. This predicament has lead the trade mark owners to protect their marks online by registering their domain names. Adding to this problem is the tendency of net surfers to hunt for a particular company’s website by its trademark itself.
Another indicator of importance of domain names is the availability of a number of popular domain names in many of the auction/sale web sites. One might register a trade mark as a domain name, and then put it up for auction or sale. See for instance http://www.david-carter.com/bid-for.htm, http://www.100domains.com/, http://www.fastdomainsales.com.
Legal Status of Domain Names in India
The journey of legal protection of domain names in India India
(A) Yahoo Inc. v. Akash Arora, (1999) 19 PTC 201 (Del
This suit was filed by the plaintiff before the High Court of Delhi seeking a decree of permanent injunction restraining the defendant from operating any business or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet under the domain name ‘YAHOOINDIA.COM’.
It was submitted that the plaintiff was the owner of the trademark ‘Yahoo!’ and domain name ‘YAHOO.COMwhich are well-known and have acquired distinctive reputation and goodwill. It was submitted that a domain name adopted by the plaintiff is entitled to equal protection against passing off as in the case of a trademark. The plaintiff contended that that it would not be unusual for someone looking for an authorized ‘Yahoo!’ site with India-specific content to type in ‘YAHOOINDIA.COM’ (which is defendant’s domain name) and thereby instead of reaching the Internet site of the plaintiff, such person would reach the Internet site of the defendants. Allegation of cybersquatting was also made.
The defendants, on the other hand, averred that the Indian Trade Marks Act related only to good and not services and there could not be any action of passing off as the services rendered both by the plaintiff and the defendants cannot be said to be goods within the Act. It was also contended that ‘Yahoo!’ is a general dictionary word. Further, defendants have been using a disclaimer and thus, there were no chances of any deception. The contention that the principle of unwary customer which is applicable in a case of infringement and passing off of the trademark would not be applicable since the Internet users are technically education and literate persons.
It came on record that ‘YAHOO.COM’ was registered in plaintiff’s favour with Network Solution Inc since 18 Jan 1995 . It also came on record that the trademark ‘Yahoo!’ and its variance are registered or pending registration in 69 countries across the globe, India
After appreciation of evidence on record and law on the subject, the Court held as under:
(a) The present is not for an action for infringement of a registered trademark but an action for passing off. The principle underlying the act is that no man is entitled to carry on his business in such a way as to lead to believe that he is carrying on or has any connection with the business carried on by another man. After referring to decisions in Cardservice International Inc v. McGee (42 USPQD 2d 1850 relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), the Court held that although the word ‘services’ may not find place in the expression used in Sections 27 and 29 of the Trade and Merchandise Marks Act, yet, services rendered have come to be recognized for an action of passing off.
(b) There can be no two opinions that the two domain names ‘Yahoo.com’ and ‘Yahooindia.com’ are almost similar except for use of the suffix ‘India
(c) On the ‘literate Internet consumer’ argument, it was held that the consumer might be an unsophisticated consumer of information and might find his way to the defendant’s website providing for similar information thereby creating confusion.
(d) The ‘disclaimer’ contention was rejected on the ground that the defendant’s appropriation of plaintiff’s mark as a domain name and home page address cannot adequately be remedied by a disclaimer.
(e) Though ‘Yahoo’ is a dictionary word, yet, it has acquired uniqueness and distinctiveness and are associated with the business of the concerned company and such words have come to receive maximum degree of protection by courts.
Ad-interim injunction retraining the defendant from using the domain name ‘Yahooindia.com’ till the disposal of the suit was granted.
(B) Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27
The plaintiffs had registered the domain name ‘REDIFF.COM’ on 8 Feb 1997 with Network Solutions Inc. They are an online media company carrying on the business of communication and providing services through the Internet. It came to their knowledge in March 1999 that the defendant had registered the domain name ‘RADIFF.COM’. An action for passing off was filed.
The plaintiffs contended that RADIFF is deceptively similar to REDIFF and is being used by the defendants with a view to pass of their business services as that of the plaintiffs and to induce members of the public into believing that the defendants are associated with the plaintiffs. It was also averred that REDIFF is comprised of the first six letters of their group companies corporate names being Rediffusion Dentsu Young and Rubicam Advertising Limited.
The defendants contested the plaintiff’s action on the ground that the ‘look and feel’ of the plaintiff’s website is totally different from that of the defendant’s website. RADIFF has been coined by taking the first three letters of the word ‘radical’, first letter of the word ‘information’, first letter of the word ‘future’ and first letter of the word ‘free’. It was also contended that there is no likelihood of deception or confusion between the two domain names.
The Court, after referring to Cardservice International Inc v. McGee (42 USPQD 2d 1850 relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), Yahoo, Inc. v. Akash Arora (1999 PTC (19) 201 relating to Yahooindia.com) observed that a domain name is more than an Internet address and is entitled to equal protection as trade mark.
The Court found that both the plaintiffs and the defendant have common field of activity. They are operating on the website and providing information of similar nature. When both domain names are considered, it is clearly seen that two names being almost similar in nature there is every possibility of Internet user being confused and deceived in believing that both domain names belong to one common source and connection although two belong to different persons.
The explanation of origin of the word ‘RADIFF’ given by the defendants was found to be unsatisfactory and merely an attempt to answer the plaintiff’s claim. The Court held that the defendants had adopted the domain name ‘RADIFF’ with the intention to trade on the plaintiff’s reputation.
Interlocutory injunction was thus granted.
(C) Acqua Minerals Ltd. v. Pramod Borse, 2001 PTC 619 (Del
This was suit seeking a decree for permanent injunction restraining the defendants from using the mark BISLERI and directing them to transfer the domain name BISLERI.COM to the plaintiff.
The plaintiff is the registered proprietor of the trademark BISLERI. The word has no dictionary meaning and is an Italian surname. Its reputation grew over the years as result of enormous consumer confidence and trust in the mineral water and the mark BISLERI came to be associated exclusively with the plaintiff. Plaintiff applied for registration of domain name BISLERI.COM but found that the defendants had already registered the same. It was contended that a person wanting to know more about their product will type BISLERI.COM but will be taken to the defendant’s website which has nothing to do with the plaintiff’s goods. Thus, constitutes a mischief of passing off by the defendants. The plaintiff referred to Paragraph 4(b)(i&ii) of the UDRP to project the element of ‘bad faith’.
The question which arose for consideration was whether the domain name registred with the Network Solutions, Inc. i.e., the Registering Authority has the same protection as the trade name or trade mark registered under the Trade and Merchandise Marks Act, 1958.
With the advancement of Internet communication, the domain name has attained as much legal sanctity as a trade name. After discussing the meaning of ‘domain, it was held that the same principles and criteria are applicable for providing protection to the domain name either for action for infringement if such a name is registered under the Trade and Merchandise Marks Act or for a passing off action as are applicable in respect of trade mark or name.
The court also relied upon the ‘bad faith’ test under the UDRP. It found that the defendants had blocked user of the trade name BISLERI from getting the registration as a domain name and as such it has affected the trade and name of the plaintiff. It was obvious that the domain name ‘BISLERI’ was chosen by the defendants with mala fide and dishonest intention and as a blocking or squatting tactic.
It was also found that the defendants already had their own domain name, namely, info@cyberworld.com. It appeared that the only object of the defendant in adopting BISLERI.COM was to earn huge money for transferring the said domain name in the name of the plaintiff knowing it well that they had no right either of registration of the domain name or of any other domain name which consisted of the plaintiff’s mark or copyright name.
The suit was thus decreed on ground of bad faith registration.
(D) Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri, 2001 PTC 859 (Del
The plaintiff-company is the proprietor of the trademark ‘DR. REDDY’S’. The defendants had registered the domain name ‘DRREDDYSLAB.COM’. The webpage merely showed the caption ‘welcome to the future Website of drreddyslab.com’.
A suit was filed by the plaintiff-company praying for a permanent injunction restraining the defendants from using the trademark/domain name DRREDDYSLAB.COM since the same was identical or deceptively similar to the plaintiff’s trade mark DR. REDDY’S.
The plaintiff-company was established in 1984 for research and development activity in the field of medicine and over 15 years, grew into a full integrated pharmaceutical organization. It was contended that DR. REDDY’S is always perceived as indicative of the source of the company and the trademark DR. REDDY’S is a personal name of the plaintiff company’s founder and its use as a trademark in relation to pharmaceuticals is completely arbitrary.
The plaintiffs also contended that the defendants are in the business of registering domain names in India
The defendants had chosen not to appear and contest.
On the basis of the available materials on record, the Court, after looking into well-settled legal proposition of passing off, and after observing that domain name serves same function as a trademark, held that the two names, DR. REDDY’S and DRREDDYSLAB.COM being almost identical or similar in nature and there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to plaintiff although the two domain names belong to two different concerns.
Order restraining the defendants from using any mark/domain name identical or deceptively similar to plaintiff’s trademark DR.REDDY’S was passed.
(E) Info Edge (India ) (P) Ltd. v. Shailesh Gupta, (2001) 24 PTC 355 (Del
This case was only on an application for an order of injunction under Order 39 Rules 1 & 2 of the Code of Civil Procedure.
Plaintiff adopted the domain name ‘NAUKRI.COM’ ON 27 Mar 1997. It was contended that the domain name has assumed distinctiveness as the plaintiff has chosen a Hindi word and use the same in the English script as early as in March 1997 in the Internet world, which is dominated by the English domain names. According to the plaintiff, the word NAUKRI has attained a secondary in connection with its services.
The defendant, on the other hand, was offering similar services through jobsourceindia.com. However, it also registered NAUKARI.COM in 1999 and used as a hyperlink to jobsourceindia.com Therefore, anyone who types NAUKARI.com would be lead to jobsoureindia.com. The plaintiff alleged that NAUKARI.COM was registered in bad faith and to attract web-surfers and innocent users for diverting the traffic to jobsourceindia.com
In nutshell, plaintiff alleged that: (a) there was passing off of services and goods; (b) defendant’s domain name was deceptively similar to the plaintiff’s; (c) there is grave and immense possibility of confusion and deception; (d) defendant’s dishonesty is clear since jobsourceindia.com and NAUKARI.COM was registered two years after the plaintiff registered NAUKRI.COM.
The main line of defence for the defendant was that NAUKRI.COM is generic and hence, incapable of achieving the trademark significance or secondary meaning. It was further contended that in case NAUKRI.COM has attained secondary meaning, same has to be proved.
The Court, after relying on, Yahoo, Inc., Rediff Communication, Acqua Mineral and Dr. Reddy’s Laboratories reiterated that a domain name is more than an Internet address and is entitled to be equal protection as that of trademark. The Court also observed that in a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe.
After considering the material and evidence on record, the Court held that a distinctiveness can be attributed to the domain name of the plaintiff. On this finding, the Court rejected the defendant’s contention that the NAUKRI.COM is a generic and/or descriptive word and hence, incapable of any trademark protection.
The Court also observed that the defendant has employed minor mis-spelling of the plaintiff’s mark, although it has another such mark available to it, which is also a registered domain name. The defendant’s choice of slightly mis-spelt version of the plaintiff’s domain name was deliberate in order to suit the business activities of the defendant and for the purpose of diverting traffic of the Internet users to website unrelated to the plaintiff. (This kind to activity is known as ‘typo-squatting’. See, for example, the case of Yahoo.com under ‘Cases under WIPO-UDRP’ infra)
The Court also referred to Paragraph 4(b)(iv) of the UDRP to appreciate the argument of ‘bad faith’. It held that the website using the domain name, similar to that of the plaintiff, for commercial purposes, would lead to an inference that the domain name was chosen intentionally to attract Internet users of the plaintiff. This was also established in view of the minor spelling variant to the a well-known mark, without any explanation and the same definitely creates a prima facie evidence of bad faith within the meaning of Paragraph 4(b)(iv) of UDRP.
A case of temporary injunction was made out and the Court restrained the defendant from using NAUKARI.COM till the disposal of the suit.
(D) Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432 (Del
This case involved the following domain names: jrdtata.com, ratantata.com, tatahoneywell.com, tatayodagawa.com, tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestide.com and tatatimken.com. The plaintiff averred that the defendants had misappropriated the plaintiff’s trademark TATA since a part of a series of domain names that had been registered by the defendants incorporating the well-known and famous trademark TATA.
The plaintiff contended that it was the registered proprietor of TATA since 1917 in relation to various goods, in various classes. It further had trademarks registered in nine other countries in various classes. The plaintiff’s case was that since its trademark and name TATA was already perceived as a household name due to the involvement of its companies in almost every form of business activity, a business under identical name would attract actual or potential customers’ attention and induce them to subscribe to the services of the defendants or to deal in some manner with the defendants operating under the domain names believing them to be licensed or authorized by the plaintiff to do the said business.
The defendants did not put in their appearance despite service.
The Court, on the basis of the materials on record, found that the plaintiff has been able to prove the averments made in the plaint.
After discussing the decisions in Yahoo, Inc. (supra) and Rediff Communications (supra), it was observed that it is now well settled law that with the advent of modern technology particularly that relating to cyberspace, domain name or Internet sites are entitled to protection as a trademark because they are more than a mere address. The rendering of Internet services is also entitled to protection in the same way as goods and services are, and trademark law applies to activities on the Internet.
The suit was decreed was the defendants were restrained from using the above domain names.
(G) Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145
This case is the first one from the Apex Court
The main question for the consideration of the Supreme Court was whether Internet domain names are subject to the legal norms application to other intellectual properties such as trademarks.
The appellant, which was incorporated in 1995, registered several domain names like www.sifynet.com, www.sifymall.com, www.sifyrealestate.com, etc. in June 1999 with ICANN. The word ‘Sify’ is a coined word which the appellant claimed to have invented by using elements of its corporate name, Satyam Infoway.
The respondent, on the other hand, started carrying on business of Internet marketing under the domain names www.siffynet.net and www.siffynet.com from June 2001.
After the respondent to refused to transfer the above domain names to the petitioner, a suit was filed on the basis that the respondent was passing off its business and services by using the appellant’s business name and domain name. An application for temporary injunction was also filed which was allowed by the trial court but on appeal reversed by the High Court. The plaintiff/appellant preferred a special leave to appeal before the Supreme Court. Leave was granted.
The respondent contended before the Supreme Court that a domain name could not be confused with ‘property names’ such as trademarks. According to him, a domain name is merely an address on the Internet. It was also submitted that registration of a domain name with ICANN does not confer any intellectual property right; that it was a contract with a registration authority allowing communication to reach the owner’s computer via Internet links and channeled through the registration authority’s server and that it was akin to registration of a company name which is a unique identifier of a company but of itself confers no intellectual property rights.
After reiterating the principles of passing off, the Supreme Court observed as under:
“The use of the same or similar domain name may lead to a diversion of users which would result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar wesbite which offers no such services. Such users could well conclude that the first domain-name owner has misrepresented it goods or services through its promotional activities and the first domain-owner would thereby lose its custom. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off.”
In view of the decisions of various High Courts, it was held that the domain names are entitled to legal protection equal to that of a trademark.
The Court also discussed at some length the provisions of UDRP relating to resolution of domain name disputes. It was held that a prior registrant can protect its domain name against subsequent registrants. Confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers.
After looking into the evidence, the Supreme Court reached a prima facie conclusion that the appellant had been able to establish the goodwill and reputation claimed by it in connection wit the trade name ‘Sify’. Apart from the close visual similarity between ‘Sify’ and ‘Siffy’, the Court held that there was phonetic similarity between the two names as well. The addition of ‘net’ to ‘Siffy’ did not detract from this similarity.
The Court was not impressed with the argument was of the defendant that the word ‘Siffy’ has been derived from a combination of the first letter of the five promoters of the respondent, namely, Saleem, Ibrahim, Fazal, Fareed and Yusuf. It was found that the domain name of the respondent already stood registered as in the name of one Mr. C.V.Kumar. Further, ‘Siffy’ as an original acronym was based on the initial letters of the respondent company’s promoters seemed unsupported by any evidence.
It was also noticed by the Supreme Court that admittedly, the appellant was the prior used and had the right to debar the respondent from eating into the goodwill, it may have built up in connection with the name.
A trademark defence of ‘operating in different fields’ was taken by the respondent. However, the same was rejected on the ground that a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought-for services. Also, on facts, it was found that both the respondent was, on its website, offering software solution, integrating and management solutions and software development which were similar to services provided by the appellant.
The Supreme Court concluded that in view of finding of prima facie dishonest adoption of the appellant’s trade name by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the trade name Sify with the appellant, the appellant was entitled to the relief it claimed.
* Please note that all Articles in the blog extracted from Indian Law Institute publications
* Please note that all Articles in the blog extracted from Indian Law Institute publications
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