This article is written by Chandler Jesudason who is pursuing a Diploma in Cyber Law, FinTech Regulations and Technology Contracts from LawSikho.
Table of Contents
Introduction
The ICANN (Internet Corporation for appointed names and numbers) manages the worldwide website name system. A website name consists of a two-level hierarchy. The primary level name includes .com, .net, .org, .biz etc. within the traditional course of business, the name can indicate the character of the enterprise. Additionally, every country has been given distinctive domain names. For instance, .in indicate India, .th indicates Thailand etc. The second level name represents the trademark, trade name of the business/ entity/organization etc. for instance, in google.com, amazon.com; Google and Amazon represent the second level name.
The clarifications below shall throw more light with respect to name disputes.
Cybersquatting could be a rising problem around the world and particularly in an expanding country with a growing web user base like India. Cybersquatting constitutes breaching of a person’s registered trademark right by registration of a second-level name that violates a preregistered trademark with the intent to divert user base traffic meant for the trademark holder towards the actual registered domain. This practice is extremely rife around the world with malicious intent to profiteer out of the favoured brand.
The name of a website is to give an address of the business entity or organisation on the web. In the current scenario, the web has become a medium of carrying on huge business activities and growing each day. Now the website address is associated with the business of the organisation and becomes crucial and indispensable. Therefore the companies cannot afford any rival operating in the same name or in a name similar to such name, which may lead to lose significantly.
Consequently, there are many cases over the years with regard to the subject. We will analyse some cases to grasp the risks posed by the rising practices.
Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.
Satyam Infoway Ltd is the registered owner of many domain names like sifynet.com, sifymall.com, sifyrealestate.com all registered with ICANN and with WIPO. The litigant Satyam Infoway registered them since 1999. The litigant submitted that the word “sify” is the amalgamated variety of its company name “Satyam Infoway” and gained substantial goodwill within the market. Meanwhile, the suspect Sifynet Solutions started exploiting the word “Siffy” by web promoting the siffynet.com & siffynet.net, claimed that these domain names were registered with ICANN in the year 2001.
The litigant Satyam Infoway filed a suit seeking justice before the Civil Court. They alleged that Sifynet Solutions was trying to pass off its services as those similar to Satyam Infoway by employing a deceivingly similar word as a part of its name. The litigant alleged that this word can cause confusion within the minds of the relevant shoppers and would mistake the services of Sifynet Solutions as similar to Satyam Infoway. The defendant contended that the registration of a domain name doesn’t confer any right like the right of holding. The name could be a mere address within the PC, by that the users will reach their desired destination.
The Hon’ble Civil Court favoured the litigant and granted a ruling. The appellant Sifynet Solutions appealed to the High court. Upon hearing the arguments, the Hon’ble High Court determined that the Appellant Sifynet Solutions had already invested heavily in securing a client base for the business (around fifty thousand members), and would consequently suffer hardship and irreparable injury. The court, additionally, determined that the 2 parties were concerned were disparate, and thus there was no chance of the shoppers being misled by similar domain names being associated thereby overturned the judgement.
The matter reached the Supreme Court and also the Bench comprising Justices Ruma Pal and P. Venkatarama Reddi, ruled in favour of Satyam Infoway. It declared that domain names are subject to the restrictive framework that’s applied to trademarks beneath the Trade Marks Act, 1999. The court additionally stated that though there’s no law in India that expressly governs the regime of domain names, this state of affairs doesn’t foreclose protection for domain names beneath the aegis of the Trade Marks Act. Thus, the court determined that domain names are protected beneath the law about passing off as provided within the Trade Marks Act.
The Hon’ble Supreme Court equated domain names to trademarks. Once an associate elaboration of sections 2(zb), 2(m), and 2(z), the court specified that a site name within the up-to-date era has evolved from a mere address to a business symbol. Therefore, a site name isn’t just a portal for web navigation, however an additional associate instrument that distinguishes and identifies the products or services of the business, whereas at the same time providing the precise web location. This feature of domain names within the era permits them to be likened to trademarks, and concomitantly to be enclosed inside the range of the Trade Marks Act.
The court indicated that they will be distinguished totally on the premise of the strategy of operation. While a trademark upon registration in an exceedingly specific country acquires rights that are strictly national in character, the operation of a site name can’t be contained inside a selected country. Thus, because of this side of domain names, the court expressed the opinion that it might be troublesome to guard them effectively beneath national laws. during this regard, the Hon’ble Supreme Court expressed that the International Registrars, i.e., WIPO, and ICANN, had provided a small indefinite quantity of effective protection to domain names.
This philosophy was applied to resolving name disputes in known cases as below.
The Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., affirmed the law ordered down by these numerous High Courts and established a small indefinite quantity of certainty with respect to the law during this contentious sphere.
Yahoo Inc. v. Akash Arora & Anr.
The litigant Yahoo is the owner of the trademark, Yahoo and the name Yahoo.com; each trademark and also the name has a non-heritable name, name, fame and smart can. The name was registered since 1995 and Yahoo offers an entire variety of net-based services. The trademark Yahoo had been registered in as several as sixty-nine countries around the world. However, Yahoo had not registered its name in India.
The suspect Akash Arora began to provide web-based services like those offered by Yahoo.com beneath the name of Yahoo India. The litigant filed suit against the suspect before the High Court for employing a trademark deceivingly like its own and blowing off his services like those offered by it.
The litigant contended that the suspect adopted the name of Yahoo to supply services like those of Plaintiff’s Company and had tried to take advantage of the great fame generated by Yahoo. There was a chance of a typical user of the web being confused and deceived. Therefore, the litigant contended that the suspect is responsible for passing off their name.
As the 2 trademarks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were virtually similar and also the latter offered services like those offered by the previous and because the latter passed them off as being offered by Yahoo, to the public and users.
The court commanded that the suspect is accountable for passing off and restrained him from exploiting the deceivingly similar name. The verdict is predicated on the principle that wherever the worth of a reputation lies only in its alikeness to the name or trademark of another organization, the general public is probably going to be deceived by the employment of such name and such act would amount to passing off.
Rediff Communication Limited v. Cyberbooth & Anr.
The litigant, Rediff Communication limited was an online media company, January 1997. It registered the name “REDIFF.COM” IN February 1997 with Network Solutions, Inc.
In March 1999, the litigant came to know that the Defendants have obtained registration of the name “RADIFF. COM”.
The litigant filed a suit for cease and desist order restraining the Defendants from victimization the mark/domain name ‘RADIFF’ or any name like the Plaintiff’s mark. The defendants’ intention is to cause members of the general public to believe that the Defendants website was related to the litigant and/or a part of the Rediff group with whom the words and mark ‘REDIFF’ area solely associated.
The defendant contested that ‘RADIFF’ is coined by taking the primary 3 letters of the word ‘radical’, the first letter of the word ‘information’, initial |the primary} letter of the word ‘future’ and also the first letter of the word ‘free’. it’s contended that there’s no similarity, deception or confusion between ‘REDIFF’ and ‘RADIFF’. Plaintiff’s website offers services from news to searching whereas the defendants’ web site provides “hypertext links” to its advertisers and thus no probability of similarity between the 2 websites within ordinary circumstances, no user can connect with another website by mistake. Additionally, there was no proof provided by the defendants.
The key issue is concerning protecting the title on the net.
The Hon’ble Bombay High Court came to the conclusion that the name utilized by the litigant is a twin of the Plaintiff’s and there’s a real risk that it may create deception and confusion.
Both the litigant and also the Defendants are operating on the websites by providing info of comparable nature and involve in similar activities like the sale of books, music cassettes, flowers and CD’s together with a conversation line and providing a cricket view poll. There may be little doubt that hypertexts/domain names. ‘REDIFF’ of the litigant and ‘RADIFF’ of the Defendants are virtually similar. once each domain names are considered it’s seen that 2 names being virtually similar in nature there’s every risk of web users deceived in browsing that both domain names belong to one common owner, even though both belong to completely different persons.
The court is clear that the sole object in adopting the name ‘RADIFF’ was to infringe upon the name of the Plaintiff’s trademark.
The argument that the sphere of activity is completely different is additionally with no substance because the field of activity of the litigant and the Defendants is clearly similar and overlapping. A site name is all but an online address and is entitled to equal protection as a trademark.
Titan Industries Ltd v. Prashanth Koorapati & Others
This case has the distinction of being the original case decided by any Indian court to afford trademark protection to domain names. This case was decided on 28 January, 1998.
The litigant M/s.Titan Industries Ltd had registered Tanishq as a trademark in 1994 for the assembly and promoting of watches and jewellery in twenty-three different countries. The party Prashant Koorapati had registered tanishq.com as a site name. The biggest objection is that the name is based on the plaintiff’s registered brand.
It was argued that customers would probably believe that the litigant is an associated affiliate of the litigant. this could probably confuse and deceive the general public, ultimately steering business traffic to the litigant. it had been argued that customers would probably believe that the mister Prashant Koorapati is an associate affiliate of Titan Ltd. this could offer unfair gain and advantage to Mr Koorapati at the expense of Titan Ltd. The Honorable city supreme court decided in favour of the claimant by granted an ex-parte ad-interim injunction stopping the litigant from abusing the exclusive name “Tanishq”.
Dr. Reddy’s Laboratories Ltd v. Manu Kosuri
The claimant company was started in 1984, to do R&D activities within the field of drugs. Additionally, the claimant company had registered a site name ‘drreddys.com’. However, in January 1999, the litigant came to understand that the Defendants are within the process of registering domain names in India and that they registered a site name as ‘drreddyslab’.
Subsequently, the litigant instituted a suit for cease and desist order against the Defendants for passing off together with different reliefs the relief of restraining the Defendants from registering a site name or operating any business on the net or otherwise underneath the name ‘drreddyslab.com’ or any trademark that is identical or misleadingly like the Plaintiff’s trademark DR. REDDY’S.
Plaintiff Contention
- litigant company is the proprietor of the trademark ‘DR. REDDY’S’ by virtue of priority in adoption, continuous and widespread use and advertising and also the name consequently accruing within the course of trade. The litigant company and its cluster corporations have solely used ‘DR. REDDY’S’ as a trademark and well-liked name in India. The Defendants’ use of the impugned trademark/domain name ‘DR. REDDY’S’ is with an ill motive on abusing the business of claimant company and to earn dishonest, illegal and underserved profits.
Both the Defendants despite service of summons failed to emerge personally nor being represented by their Lawyers. hence no written statement has been filed on behalf of the Defendants within this suit.
Court’s Observations
- When the offender does business under a name which is close to the name under which the Claimant is trading and the said name is of reputation, the public at large is prone to be deceived that the offender’s business is the business of the Plaintiff or is a branch or department of the Plaintiff and the Defendant is subject to an action in passing off.
- Once the Plaintiffs and Defendants are involved in common or overlapping fields of business projects, because of competition, there’s the risk for confusion and deceit and, therefore, the litigant might suffer harm.
- The Domain name serves the same operate because the trademark and isn’t a mere address or like finding the address of the net and, therefore, the litigant is entitled to equal protection as a trademark.
- It is clear that with two names being virtually identical or similar in nature, there’s a risk of an online user being confused and deceived into believing that each the domain names belong to litigant though the 2 domain names belong to 2 completely different issues.
Permanent Injunction was granted in favour of the litigant and also the defendants were restrained from exploiting the name, ‘drreddyslab.com’, which was a copy of the plaintiff’s established name. The Hon’ble court additionally agreed that the domain names are vital and hold a key position in e-commerce and commanded that the litigants were accountable for passing off the name and thereby granted a permanent injunction against the defendant.
Tata Sons Ltd v. Manu Kosuri & Ors.
Brief Facts of the case
- The litigant was the Registered Titleholder of the trademark ‘TATA’ since 1917 and is one amongst the oldest, largest and esteemed business conglomerates in India and its name is known globally.
- The Defendants’ embezzled the Plaintiff’s trademark TATA as a part of a series of domain names that were registered by them incorporating trademark TATA. The domain names involved were jrdtata.com, ratantata.com, tatahoneywell.com, tatayodogawa.com, tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestide.com, tatatimken.com etc.
- Tata instituted a suit seeking an injunction order and also that the litigant is restrained from passing off, dilution of logos and for the rendition of accounts, damages, delivery-up, etc.
- The Defendants were accordingly served with summons however failed to appear, the trial was conducted ex-parte.
Plaintiff’s Contentions
- The litigant relied upon the following judgments:
– Yahoo Inc! v. Akash Arora; 1999 PTC 201;
– British Telecom Plc. v. One during a Million one999 FSR 1
– Rediff Communications Ltd. v. Cyberbooth
And submitted its contention that the trademark law applies with equal force on the net as it will within the physical world.
Defendant’s use of the impugned mark is geared toward killing the business of the litigant and would irreparably damage the name and goodwill of the litigant.
Court’s Observation
The court relied upon Yahoo Inc! v. Akash Arora; 1999 PTC 201 wherever it had been held that considering the massive import of Net and its users, many web users aren’t refined enough to differentiate between the domain names of the parties.
A name that would because of something similar to the name of another, inherently leads to passing off. Internet domain names are of much importance and can be a valuable corporate asset and such domain name is more than an Internet address and therefore is entitled to protection in an equal manner as a trademark.
And the Hon’ble Court passed an order of permanent injunction was passed in favour of the litigant and against the Defendants.
The subject of this case is that the known and revered Trademark of ‘TATA’. The defendant (Manu Kosuri) registered a series of domain names exploiting the trademark of “TATA”.
The Honorable Court, while delivering judgement, referenced the landmark cases of Rediff Communication Limited v. Cyberbooth and Yahoo Inc. v Akash Arora & Anr., both already discussed above as yardsticks for the deciding of this case, and held that domain names on the public internet are not just internet addresses but are in fact company assets which command a high degree of importance and thus are entitled to protection similar to that given to registered Trademarks.
The Registrars shall follow the UDRP – Uniform Domain Name Dispute Resolution Policy. The person who is holding can initiate such proceedings and the proceedings shall be handled under such rules.
In India under INDRP – Indian Dispute Resolution Policy being handled and deals the domain names registered in the .in registry. INDRP procedures are approved by NIXI – National Internet exchange of India. The rules provide for mandatory arbitration proceedings under the Arbitration and Conciliation Act.
The trademark owner shall prove the following:
– the domain name registrant/applicant has registered confusingly same or similar to the trademark.
Also the applicant. registrant has no genuine or legitimate interests in the said domain name and not with good intention.
The successful litigant shall get the rights of the challenged domain name or may get suspended. To obtain an injunction order, the TM owner can file a suit in civil court, as above.
Conclusion
It is very important to carefully safeguard the Trademark of any business on the internet, in the current business scenario, as online businesses are flourishing now.
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