PASSING OFF ACTION FOR PROTECTION OF DOMAIN NAME

INTRODUCTION

Internet has brought great revolution in the industrial as well as communication system around the world. Today, almost in every sector of the economy we can see the widespread use of internet which had simplified the work to a great extent. It came up with great opportunities for the people but also brings up the liabilities thereof.

With its global reach, the internet provides intellectual property owners with a seemingly unlimited market for their works. At the same time, however, the internet offers similarly expanded opportunities for those seeking to infringe the rights of others, while making the detection and elimination of such infringement extremely difficult. The challenge that the law has faced in recent years is how to foster the development of intellectual property on the internet while preventing its unauthorized exploitation.

Today the internet has become one of the  most important means for carrying on commercial activities. A domain is being used as  identity for the commercial activity or the business which is beings carried out by through internet. Such domain name provides identity to an internet website as well as serves the purpose of address for communication. For eg. domain name of Google India is google.co.in

However, the question  herein arise that is domain name is Trade Mark? The Answer to this question can be traced out through the observation of Supreme Court of in the case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. where the court state that a “domain name in the contemporary era has evolved from a mere business address to a business identifier.

Therefore, a domain name is not merely a portal for internet navigation, but also an instrument which distinguishes and identifies the goods or services of the business, while simultaneously providing the specific internet location. This feature of domain names in the modern era allows them to be likened to trade marks, and concomitantly to be included within the purview of the Trade Marks Act”[1].

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PASSING OFF AND DOMAIN NAME

The passing off action is based on the principle that nobody should represent his belongs or goods or services as it is of somebody else’s. Passing of is a kind of unfair trade practice or fraudulent acts by which a person or persons seeks to gain profit from the prestige or reputation of another particular trade or business. The principles determined by Indian courts  which  apply passing off on domain name  are given below-

  • The plaintiff has acquired the Domain name in question prior to defendant.
  • The domain name of the plaintiff enjoys a good and distinctive reputation in the market.

In the case of Tata Sons Limited And Anr. vs Fashion Id Limited the court held that “the word Tata is a rare patronymic name derived from the surname of the promoter of the Tata Group of Companies and has acquired tremendous goodwill and reputation. The defendant has registered the domain name tatainfotecheducation.com and it has been alleged to be dealing in gambling and other nefarious activities harmful to the corporate image of the plaintiff. The court therefore transferred the impugned domain name to the plaintiff”[2].

  • Both the parties must be engaged in the activity or business which is of same nature.
  • The defendant must have used the domain name with a view to deceive and mislead the people.

In the case of Rediff Communications Ltd. v. Cybertooth & Another the Bombay High Court held “When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons.”[3]

  • Such use of Domain Name by defendant must have caused substantial loss and injury to the fame or prestige of the plaintiff’s business.

CYBERSQUATING

Cybersquatting can be understood as an illegitimate act done by a person by registering, selling and using the domain name which is similar to the trademark of any reputed business or commercial organization. The often intent behind the buying of domain name that is similar to an existing business is to gain profit by selling such domain name to such business.

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In the Case of Manish Vii v. Indra Chugh the court defined cybersquatting as “an act of obtaining fraudulent registration with the intent to sell the domain name to the lawful owner of the name at a premium”[4].

JUDICIAL PRONOUNCEMNETS FOR PROTAECTION OF DOMAIN NAME AS TRADE MARKS

The First and foremost case judicial decision was given by Delhi High Court in the case of Titan Industries Limited v. Prashanth Koorapati & ors. wherein it possessed that the domain names can be protected as trademarks. In this case, “the plaintiff was using the trademark TANISHQ for production and marketing of jewellry and watches since 1994. The defendant has registered tanishq.com as its domain name which was based on plaintiffs Trademark.

The plaintiff objected the use of such domain name by defendant as it would cause confusion and deceive the public. The court issued injunction restraining the defendant from using such domain name or operating any business under the such domain name or any other name deceptively similar and conducting any activity with the name TANISHQ that could lead to passing off the business goods of defendant as those of plaintiff”[5].

The significant move towards the passing off doctrine for deciding domain name disputes can be traced in the case of  “Yahoo Inc. v. Akash Arora and Netlink Internet Services  wherein the plaintiff instituted suit against the defendant claiming that the defendant has registered domain name as yahooindia.com with the intention of  passing off their  services on internet as that of plaintiff which had its registered domain name as yahoo.com . The defendant argued that the domain name cannot be treated as Trademark and hence it cannot enjoy trademark protection in India. The court rejected the arguments of the defendant on the ground that the Trade Mark law equally applies to domain name”[6].

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The first case decided by Supreme Court of India on the issue of domain name protection was Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. where in the court observed that “the role of 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 business identifier.

Therefore, the domain name not only servers as an address for internet but also identifies the specific internet site. In the commercial field, each domain name owner provides as information services which are associated with such domain name. Thus, domain name may pertain to provision of services within the meaning of section 2(z) of  the Trade Mark Act, 1999. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off”[7].

CONCLUSION

The domain name is not only an address for communication on internet but also serves as purpose of carrying on commercial activities or business through internet. Thus it is almost similar to Trade Mark of a commercial organization. Till now there is no enactment in India which explicitly deals with the conflicts or disputes resolution mechanism with regard to domain name and for protect the passing off action. Since two decades the courts in India had efficiently dealt with the matters pertaining domain name protection and has ensure passing off actions for protection of such domain names.

 

[1] AIR 2004 SC 3540

[2] LAWS (DLH) -2005-1-108

[3]   AIR 2000 Good. 27

[4] AIR 2002 Del 243

[5] Delhi High Court Suit No. 179 of 1998, Decision dated 28 Jan 1998

[6] Delhi High Court Suit No. 2469/1998

[7] AIR 2004 SC 3540

Author: Lalit Mohan,
Delhi Metropolitan Education,GGSIPU ( 4th year )

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