Domain Name: Case Law

1. Domain Name: Case Law Downloaded from www.careergyaan.org

2. Every domain name registrant has to submit himself to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts [Para 4 (a)] to the applicable Provider, in compliance with the Rules of Procedure, that Downloaded from www.careergyaan.org

3. (i)the registrant domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii)the registrant have no rights or legitimate interests in respect of the domain name; and (iii) the registrant domain name has been registered and is being used in bad faith. Downloaded from www.careergyaan.org

4. In the administrative proceeding, the complainant must prove that each of these three elements are present. Much emphasis has been given to the bad faith registration [Para 4(a)(iii)], which is to be read with Para 4 (b) of the UDRP. Downloaded from www.careergyaan.org

5. Registration in Bad Faith (i) circumstances indicating that “the registrant” has registered or “the registrant” have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration……. Downloaded from www.careergyaan.org

6. (ii) “the registrant” 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 “the registrant” have engaged in a pattern of such conduct; or (iii) “the registrant” has registered the domain name primarily for the purpose of disrupting the business of a competitor; or Downloaded from www.careergyaan.org

7. (iv) by using the domain name, “the registrant” has intentionally attempted to attract, for commercial gain, Internet users to “the registrant’s” website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of “the registrant’s” website or location or of a product or service on “the registrant’s” website or location Downloaded from www.careergyaan.org

8. Cases Related to Bad Faith Registration Downloaded from www.careergyaan.org

9. Bennett Coleman & Co. Ltd. v Steven S. Lalwani [(Case No. D2000-0014, Adm. Panel Decision, WIPO)] and Bennett Coleman & Co. Ltd. v Long Distance Telephone Co.[.(Case No. D2000-0015, Adm. Panel Decision, WIPO)] It was contended by the complainant: The respondents registered the domain names “theeconomictimes.com” and “thetimesofindia.com” respectively, which as per the plaintiff’s contention were identical to its registered domain names “economictimes.com” and “timesofindia.com” and represented its electronic publications of its leading print newspapers. Downloaded from www.careergyaan.org

10. It was further contended that the domain names of the defendants redirected the Internet users to the respondent’s website “indiaheadlines.com”, which provided India related news. Downloaded from www.careergyaan.org

11. The WIPO panel in its judgment confirmed the presence of all three elements as stated in Para 4(a) of UDRP and ordered for their transfer to the plaintiff. Downloaded from www.careergyaan.org

12. Similarly in Tata Sons Ltd. v The Advance Information Technology Association, [(Case No. D2000-0049, Adm. Panel Decision, WIPO)] the panel found the presence of all three elements as stated in Para 4(a) of UDRP – the respondent registrant of “tata.org” has no rights or legitimate interests in respect of the said domain name. Downloaded from www.careergyaan.org

13. Complainants found success in other similar cases, like Microsoft Corp. v Amit Mehrotra, the domain name involved – “microsoft.org”; NIIT Ltd. v Parthasarathy Venkatram, the domain name involved – “myniit.com”; Mahindra & Mahindra Ltd. v Neoplanet Solutions, the domain name involved – “ mahindra.com”; ITC Ltd. v Buy This Name, the domain name involved – “itcthreadneedle.com”; Castrol Ltd. v Shriniwas Ganediwal, the domain name involved – “castrolindia.com”. In all such cases the Panel(s) concluded that the respondent(s) had no legitimate interest in the confusingly similar domain names and that they have been registered in bad faith. Downloaded from www.careergyaan.org

14. In Asian Paints (India) Ltd. v Domain Admin, that registration of domain name “asianpaint.com” is identical and confusingly similar to complainants mark (and the domain name registered by it: “asianpaints.com”). It observed that “the respondent can have no plausible explanation for registering the disputed domain name and has no right or legitimate interests in it…….the omission of the letter “s” is a deliberate attempt to exploit users’ typographical errors when seeking the complainant’s website www.asianpaints.com. Downloaded from www.careergyaan.org

15. Domain Name Dispute and Indian Trade Mark Law Downloaded from www.careergyaan.org

16. In Yahoo! Inc. v Akash Arora, the defendant was restrained from using the domain name “yahooindia.com” which had the format, content and colour scheme identical to the plaintiff’s “yahoo.com” It was observed by Dr. M.K. Sharma, J. of the Delhi High Court that “if an individual is a sophisticated user of the Internet he may be an unsophisticated consumer of information and such a person may find his/her way to the different internet site which provides almost similar type of information as that of the plaintiff and thereby confusion could be created in the mind of the said person who intends to visit the Internet site of the plaintiff, but in fact reaches the Internet site of the defendant”. Downloaded from www.careergyaan.org

17. Similarly, in Rediff Communication Ltd. v Cybertooth and another, wherein the plaintiffs filed the suit for a permanent injunction restraining the defendants from using the mark/domain name “RADIFF” or any other similar name so as to pass off or enable others to pass off their business or goods or services as for the business or goods or services of the plaintiffs. Downloaded from www.careergyaan.org

18. A.P. Shah, J. of Bombay High Court observed, “the Internet domain names are of importance and can be a valuable corporate asset. A domain name is more than an Internet address and is entitled to the equal protection as trademark. With the advancement and progress in the technology, the services rendered in the Internet site have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by other as his services”. Downloaded from www.careergyaan.org

19. Test of Acquired Distinctiveness As the traditional approach suggests that distinctiveness is needed for registration of any sign as a trademark.Distinctiveness may be either inherently distinctive, or may acquire distinctiveness through a secondary meaning (in the market place). Downloaded from www.careergyaan.org

20. In Dr. Reddy’s Laboratories Ltd. v Manu Kosuri, the Delhi High Court observed that the plaintiff holds the trademark in the name DR REDDYS’ and it has acquired distinctiveness through a secondary meaning and hence any use of the domain name “drreddyslab.com” by the defendant could cause confusion and deception to the Internet users. Downloaded from www.careergyaan.org

21. On May 6, 2004, the Supreme Court for the first time decided a case on domain name dispute. In Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145, the question before the court was whether the use of the same or similar domain name might lead to a diversion of users, which could result from such users mistakenly accessing one domain name instead of another. Downloaded from www.careergyaan.org

22. As per the facts of the case, the appellant which was incorporated in 1995 registered several domain names like www.sify.net, www.sifymall.com, www.sifyrealestate.com, etc. in June 1999. The word “Sify” is a coined word, which the appellant claims to have invented by using elements of its corporate name, Satyam Infoway. The appellant claimed a wide reputation and goodwill in the name “Sify”. The respondent started carrying on business of internet marketing under the domain names, www.siffynet.net and www.siffynet.com from May 2001. Downloaded from www.careergyaan.org

23. Ruma Pal, J. opined: Apart from the close visual similarity between “Sify” and “Siffy”, there is phonetic similarity between the two names. The addition of “net” to “Siffy” does not detract from this similarity. “……The similarity in the name may lead an unwary user of the internet of average intelligence and imperfect recollection to assume a business connection between the two. Such user may, while trying to access the information or services provided by the appellant, put in that extra ‘f’ and be disappointed with the result………a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought-for services. Downloaded from www.careergyaan.org

24. The Supreme Court concluded that “ the respondent was seeking to cash in on the appellant’s reputation as a provider of service on the internet. In view of our findings albeit prima facie on the 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 is entitled to the relief it claims”. Downloaded from www.careergyaan.org

25. The domain name is a valuable corporate asset and is entitled to equal protection as a trademark. The decisions in the aforesaid cases suggest that the basic principles of the trademark law apply to the disputes in respect to Internet domain names. Downloaded from www.careergyaan.org