ISSUE VIII : Domain squatting

Introduction

Domain name has acquired the same rather more significance than the trade name. It is more frequently used by commercial organizations and has become an indispensable source of promoting their products. With the growing significance of domain names have also increased the disputes surrounding them, especially with respect to registration and trafficking. Domain names are treated as trade marks and the passing off action applies equally to them. The High Court of Delhi (“DHC”) in the Times Internet Ltd. vs. M/s Belize Domain Whois Services Ltd. & Ors has re-affirmed the passing off principle for domain names. The present bulletin discusses this case and also examines the essential elements required to establish mala fide in cases pertaining to domain squatting.

1.0 Factual Matrix

M/s Bennett, Coleman & Co. Ltd. created a web portal named “indiatimes.com” and developed an internet site “http.www.indiatimes.com” and thereby entered the field of e- commerce. This portal provided variegated services like internet shopping, online gaming, etc and its trade mark was registered on November 22, 1996. The internet business was assigned to Times Internet Ltd (“Plaintiff Company”) by an agreement dated April 01, 2000, whereby the Plaintiff Company is the owner of indiatimes.com, with all its assets and liabilities. The Plaintiff Company also got the trade mark “travels.indiatimes.com” registered in their name w.e.f. June 07, 2000. The Plaintiff Company found out that a domain name “indiatimestravel.com” was also registered by Belize Domain Whois Services Ltd (“Belize”). This domain name was created on July 21, 2005 and contained sponsored links, where clicks on the links earned revenue for the domain owners. The major issue for discussion that came before the DHC was whether the domain name, “indiatimestravel.com”, registered by Belize is deceptively similar to the portal “travel.indiatimes.com” owned and run by the Plaintiff Company. The Plaintiff Company sought for an injunction restraining Belize from the deceptively similar name and transferring the domain name “indiatimestravel.com” to the Plaintiff Company as Belize was trying to take advantage of its brand name.

2.0 Discussion & Judgment

The Plaintiff not only created the mark indiatimes.com but has been using the same much prior to the date on which indiatimestravel.com was registered. Also, by the standards of excellence maintained by the Plaintiff Company, the trade mark had earned substantial reputation amongst users. It was apparent that Belize had created the deceptively similar domain name to capitalize on the reputation and popularity of the trade mark of the Plaintiff Company. Furthermore, not being at par with the standard of the Plaintiff Company, it may lead to lowering of reputation of the Plaintiff Company’s portal since the public may assume it to be associated with the same, due to the deceptively similar name of the defendants’ portal.

Comparing both the domain name and the trademark, Supreme Court (“SC”) in Satyam Infoway Ltd vs. Sifynet Solutions Pvt. Ltd held that a domain name can have all the characteristics of a trade mark. Accordingly, domain names can be protected under Trademarks Act, 1999. The internet has developed from a mere means of communication to a place of carrying on commercial activity, and a domain name is hence used as a business identifier. The use of same or similar domain names may lead to a diversion of users. The domain name has all characteristics of a trade mark and can be protected to the extent possible under laws relating to passing off. The SC observed that “a domain name is chosen

as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.” Again in Cadila Helathcare Ltd. vs. Cadila Pharmaceuticals, the SC had held that what had to be seen in cases of passing off action was similarity between competing markets and to determine if there was a likelihood of deception. Even if a person using or imitating the trade mark of another is yet to commence business, his dishonest intention to make use of the mark and name of the other party will be obvious from the very use or imitation.

In the instant case, the DHC observed that Belize created the trade mark “indiatimestravel.com” much later than the trade mark “indiatimes.com” was owned and registered by the Plaintiff. The essential component of the domain name was “indiatimes” which was used by Belize without any explanation. This was confusing for an ordinary netizen and could result in associating Belize’s portal with that of the Plaintiff Company and consequently may also risk the reputation of the Plaintiff if the products and services which are advertised through the website lack quality. Interestingly, the absence of Belize from the DHC to contest the claims of the Plaintiff Company was considered to be in mala fide. Accordingly, the DHC ex parte held this dispute to be a case of passing off and directed Belize to transfer “indiatimestravel.com” to the Plaintiff.

3.0 Essentials of domain squatting

Domain squatting is an act of mala fide registering, trafficking in, or using a domain name with the intent to capitalize on the reputation and popularity of the trade mark. Cyber squatting was defined by DHC in Manish Vij vs. Indra Chugh as “an act of obtaining fraudulent registration with intent to sell the domain name to the lawful owner of the name at a premium.” The internet domain name is of great significance and is a valuable asset. It is practically more than an internet address and is entitled to the equal protection as trade mark. With technological advancement, the services rendered in the internet domain have come to be recognized and on account of their extensive use over time acquired the characteristics of a trade mark and are; therefore, being given protection. Disputes over domain name registrations fall into one of the two categories:1

  • There are some domain names which so obviously refer to and identify as particular business or entity, that their registration by a third party amounts to illegitimate hijacking of the name;
  • There are far more domain names which could be legitimately registered and used by more than one person or business. A particular domain name is secured first to register and in the vast majority of cases, all the others who might like that particular domain name cannot challenge the registration.

The DHC in a previous judgment, Acqua Minerals Ltd vs. Pramod Borse & Anr,2 had granted an injunction restraining Pramod Borse to use the domain name “bisleri.com” upon taking the view that the word was chosen mala fide and in bad faith, as Bisleri was already a registered trade mark of the plaintiff, the Acqua Minerals. Essentially, to establish domain squatting, the following needs to be established:3

  • The said domain name is identical or confusingly similar to a trade mark in which the complainant has legal rights;
  • The respondent has no rights on legitimate interests in respect of the said domain name; and
  • The said domain name has been registered and is being used in bad faith to capitalize on the goodwill of the complainant’s domain name.

Interestingly, in a decision by WIPO under the Uniform Domain-name Dispute Resolution Policy on November 25, 2010 stated that “MakeMyTrip was making commercial gain out of the disputed domain name by putting link of its site makemytrip.com on the impugned site with the intention of “fishing” new customers by cashing on the popularity of the TATA mark.” Though the field of business was different, MakeMyTrip was not granted the benefit of due consideration of the merits of its case. Imputing mala fide motives WIPO held in favor of Tata sons requiring MakeMyTrip to transfer the domain oktatabyebye.com to Tata sons. The way domain squatting affects the business and goodwill cannot be undermined. Strangely, this judgment supports the argument that if a domain has acquired distinctiveness, the likelihood of deception is more and being involved in different business is also immaterial in causing such deception. However, it undermines the notion of “reasonable consumer” and when internet is the medium, the possibility to capitalize on the reputation and popularity also decreases because of the difference of the reasonable consumer than to the real world.

Conclusion

Due to extensive advertising and usage of domain names they have acquired secondary meaning and distinctiveness and hence trade mark rights. It is more likely that domain names with similar names can create confusion in the minds of netizens. Though there are several modes of protection available for protection of interest against the domain

squatters,4 while registering domain names, the companies should also bear in mind that the definition of a “mark” includes, amongst others, both generic and coined words, and a “mark” is different from a word per se. Mark has a commercial and taxable value. Even the “likelihood” of confusion, deception or association with any registered mark should be avoided. In any event, the existing IP related laws needs more teeth to counter the rampant domain squatters. It is high time that the reality of the internet and its ability to transcend geographical barriers and influence business and goodwill should be given due consideration.

Authored by: Neeraj Dubey

1 Kerly’s in Law of Trade Marks and Names, Thirteenth edition at page 743; also at Trade Marks, Passing Off and Franchasing by V. A. Mohta, AIR Publication, First edition 2004 at page 156

2 AIR 2001 Delhi 463

3 Zee Telefilms Ltd. vs. Rahul Dholakia & Oznic.com 2001 PTC 660 (WIPO)

4   For  details  on  options,  please  visit  http://www.psalegal.com/upload/publication/assocFile/PSA-column- May201007062010052317PM.pdf

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