COLLEGE OF LEGAL STUDIES

2014
Intellectual Property Rights
Project
on
PROTECTING

DOMAIN NAME AS TRADEMARKS WITH SPECIAL

REFERENCE TO CYBER LAW

Submitted to:
Dr. Tabrez Ahmed
Assistant Director & Professor
College of Legal Studies,
University of Petroleum & Energy Studies, Dehradun
Submitted By:
Pooja Malhotra (R760210039))
IVth Year, BBA.LLB
College of Legal Studies,
University of Petroleum & Energy Studies, Dehradun

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ACKNOWLEDGEMENT

I would like to thank my IPR Professor, Dr. Tabrez Ahmed, for providing me with such
an interesting topic which has helped me gain knowledge in a completely different
sector. I am highly indebted to him for his guidance and constant supervision.
I would like to express my gratitude to my parents for the support and encouragement
they have provided me with.
I would also like to extend my appreciation to the College Of Legal Studies Library
which helped me in developing my project and to all other people who have willingly
helped me out of their abilities.

Thanking you all!

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TABLE OF CONTENTS

Contents
Contents...............................................................................................................................I
1. Introduction.....................................................................................................................1
1.1.CYBERSQUATTING..............................................................................................2
2.Domain Name And Intellectual Property Rights.............................................................4
3.Issues Involved................................................................................................................5
4.Laws Around The Globe With Respect To Trademark With Special Reference To
Cyber Laws........................................................................................................................7
4.1.USA..........................................................................................................................7
4.2.UNITED KINGDOM...............................................................................................8
4.3.FRANCE...................................................................................................................9
5.CASES AROUND THE WORLD................................................................................12
5.1.USA........................................................................................................................12
5.2.INDIA.....................................................................................................................14
4.Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd Supreme Court of India ..............16
5.3.UNITED KINGDOM.............................................................................................18
6.Conclusion ...................................................................................................................21

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1. INTRODUCTION
We are living in an age that is governed principally by the information technology. The cyber
space which literally means the world of machines has suddenly become more attractive to the
modern man because it has made possible that within seconds he may establish contact with the
other person located at another corner of the world. This global connectivity has facilitated the
exchange of views as also transaction of business, besides of course a lot of other activities,
simple as never before, and is today known as internet.
Originally, domain name provided an address for computers on the internet. But now, the
internet has developed from a mere means of communication to a mode of carrying on
commercial activities. The domains are now also being used as business identifier.
An enterprise by registering its domain name, acquires a unique identity on the internet which
serves in the world of electronic commerce as served by the trademark or service mark or the
name in the trade and commerce. That is why its function as regards the enterprise using it was
likened above as that of a telephone number. However, the fact remains that the domain names
are actually several names (or acronyms thereof) combined together which are connected
through simple dots ..A domain name is easy to remember and use, and 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.
A domain name is an identification label to define a realm of administrative autonomy, authority,
or control in the Internet, based on the Domain Name System (DNS). The Domain Name
Systems (DNS) is a hierarchical naming system for computers, services or any resource
participating in the internet. It associates different information with domain names assigned to
each of the participants. Domain names are also used as simple identification labels to indicate
ownership or control of a resource. Such examples are the realm identifiers used in the Session
Initiation Protocol (SIP), the Domain keys used to verify DNS domains in e-mail systems, and in
many other Uniform Resource Identifier.

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An important purpose of domain names is to provide easily recognizable names to numerically

addressed Internet resources. This abstraction allows any resource (e.g., website) to be moved to
a different physical location in the address topology of the network, globally on the internet.
These user-friendly addresses for websites help connect computers and people on the Internet.
Because they are easy to remember and use, domain names have become business identifiers
and, increasingly, even trademarks themselves, such as amazon.com. By using existing
trademarks for domain names sony.com, for example businesses attract potential customers
to their websites.
A domain name should not be same or similar as that is not the trademark of another company,
particularly a well-known trademark. This is because most laws treat registration of another
person's trademark as a domain name as trademark infringement, also known as 'cybersquatting',
and SME might have to transfer or cancel the domain name, and also pay damages. Also, all
domain names registered in the gTLDs like .com, as well as many registered in the ccTLDs, are
subject to a dispute resolution procedure that allows a trademark or service mark owner to stop
the cybersquatting of their trademark. There are various databases that can search on the web to
determine if choice of domain name is a registered trademark in a particular country.

1.1.

CYBERSQUATTING

Cybersquatting is the practice of registering an Internet domain name that is likely to be wanted
by another person, business, or organization in the hope that it can be sold to them for a profit. It
involves the registration of trademarks and trade names as domain names by third parties, who
do not possess rights in such names. Simply put, cybersquatters (or bad faith imitators) register
trade-marks, trade names, business names and so on, belonging to third parties with the common
motive of trading on the reputation and goodwill of such third parties by either confusing
customers or potential customers, and at times, to even sell the domain name to the rightful
owner at a profit.
Cybersquatting occurs where an unauthorized person (a cybersquatters) registers or uses a
domain name which includes a well-known or reputable trademark. Cybersquatters profit from
the trade marks either by selling the domains to authorized entities or third parties for
considerable sums. Cybersquatting can prevent authorized entities from using appropriate

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domain names to attract potential clients (by blocking the use of Cybersquatting occurs where an
unauthorized person (a cybersquatters) registers or uses a domain name which includes a wellknown. Cybersquatters makes profit from the trade marks either by selling the domains to
authorized entities or third parties for considerable sums. Cybersquatting can prevent authorized
entities from using appropriate domain names to attract potential clients (by blocking the use of
certain domain names or by deceiving potential customers as to the ownership of a domain). The
websites connected to domain names registered by cybersquatters often do not include any
content.
As there are no goods or services presented, it is difficult to ascertain the nature of a
cybersquatters business activities.
In some cases, the prices that cybersquatters demand for selling domain names are very high. For
example, AltaVista.com was sold for $ 3.3 million and HeraldSun.com was sold for $ 2.5
million. This shady business practice has been common in the USA since the dawn of the
Internet (by 1995 14% of the biggest companies ranked in Fortune already had their desirable
domain names registered by third parties). The expansion of these abusive practices led to the
creation of international arbitration courts, which use uniform dispute resolution procedures.
Moreover where recent new TLDs have been created (e.g. .coop, .museum, .eu), so-called
sunrise periods were introduced during which only certain groups of Internet users could
register domain names containing trademarks. Such measures have limited cybersquatting but
have not prevented it completely.

When considering whether a trademark use causes a likelihood of confusion, the location of the
marks use within the URL is of great importance. Consider the following example. If someone
made an unauthorized use of Volkswagen in an SLD, such as, www.volkswagen.com, such
use would likely lead to consumer confusion. However, should Volkswagen be used in the
third level domain name, such as a host name for a sub-network or computer running under a
computer hosting a different SLD (e.g. www.volkswagen.ucdavis.edu) the likelihood of
consumer confusion is lessened. Further, when the trademark appears in connection with another
source identifier such as ucdavis, the second source identifier puts people on notice that they
are not accessing an official Volkswagen website, but rather a sub-network of the main UC
Davis network. The above is an example of creating confusion in the minds of the consumers
and thus comprising a crime under the cyber laws of cybersquatting.

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2. DOMAIN NAME AND INTELLECTUAL PROPERTY RIGHTS

The choice of a domain name has become an important business decision. A domain name is
registered by you to enable Internet users to locate your company's site on the web.
Company domain names may be registered in any number of "top level domains" called "TLDs".
One can choose from the "generic top level domains" ("gTLDs"), such as .com, .net, .org and
.info. A person can choose from the specialized and restricted top level domains if he qualifies
(e.g. .aero for air travel and transport businesses, or .biz for commercial enterprises). One can
also register for his domain name under a "country code top level domain" ("ccTLD"), for
example, .bn for Bulgaria, .cn for China, .ch for Switzerland.
An address in the cyber-space is imperative in the new e-economy for companies and individuals
to be easily traceable by their consumers with the emergence of the Internet as an advertising
forum, recruiting mechanism, and marketplace for products and services whereby companies
doing business have a strong desire to register domain names akin to their products, trade names
or trademarks. For example, owners of famous trademarks, such as Haier, typically register their
trademarks as domain names, such as www.haier.com. Domain names may be valuable
corporate assets, as they facilitate communication with a customer base. With the advancement
of Internet communication, the domain name has attained as much legal sanctity as a trademark
or trade name and, therefore it is entitled to protection.
There is a distinction between a trademark and a domain name, which is not relevant to the
nature of the right of an owner in connection with the domain name, but is material to the scope
of the protection available to the right. The distinction lies in the manner in which the two
operate.
A trademark is protected by the laws of a country where such trademark may be registered.
Consequently, a trademark may have multiple registrations in many countries throughout the
world.
On the other hand, since the internet allows for access without any geographical limitation, a
domain name is potentially accessible irrespective of the geographical location of the consumers.
The outcome of this potential for universal connectivity is not only that a domain name would
require worldwide exclusivity but also that national laws might be inadequate to effectively
protect a domain name.

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3. ISSUES INVOLVED
With the advancement of e-commerce, the domain names have come to acquire the same value
as a trademark or the business name of a company. The value attached to domain names makes it
lucrative for cyber criminals to indulge in domain name infringements and the global nature and
easier and inexpensive procedure for registering domain names further facilitates domain name
infringements. When a person gets a domain name registered in bad faith, i.e. in order to make
huge profits by registering a domain name corresponding to a trademark of another person, with
an intent to sell the domain name to the trademark owner at a higher price, such activities are
known as cyber squatting. The IT Act does not deal with the domain name issues. In India the
domain name infringement cases are dealt with according to the trademark law. The issue
concerning protection of domain names came up before the Supreme Court of India in the case
of Satyam Infoway Ltd. vs. Sifynet Solutions P. Ltd (2004(28) PTC 566). The court, in an
authoritative decision has held that internet domain names are subject to the same legal norms
applicable to other Intellectual Properties such as trademarks.
Domain Names were conceived and intended to function as an address, but with an increasing
number of cases of registered domain names being illegally occupied (cyber squatting), it has
posed additional problems in how to handle trademark disputes in cyberspace. Cyber squatting
as an offence relates to the registration of a domain name by an entity that does not have an
inherent right or a similar or identical trademark registration in its favor, with the sole view and
intention to sell them to the legitimate user in order to earn illegal profits.
When a domain name is used in connection with a business, the value of maintaining an
exclusive identity becomes critical. As more and more commercial enterprises trade or advertise
their presence on the web, domain names have become more and more valuable and the potential
for dispute is high. Whereas a large number of trademarks containing the same name can
comfortably co-exist because they are associated with different products, belong to business in
different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity
is much sought after. The online consumers or the prospective consumers try to identify the
product or service through its domain name and further enhances the goodwill and adding to the
value of the respective company by increasing the number of persons viewing the site.

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The methods of possible trade mark infringement described above are based on three main
mechanisms:
Unfair registration of domain names, which may include trademarks,:

Invisible trade mark infringement on the Internet, and

Trademark infringement in navigational elements.

These methods occur in addition to traditional methods of trade mark infringement, where
trademarks are used in connection with given goods or services. Trade mark owners are often
unaware that their trademarks are used and abused on the Internet. And where they are aware of
it, they think they have no legal means to protect their trade marks against such abuse. It is true
that in the case of some new methods of trademark infringement, some of the traditional legal
instruments are ineffective. For example, traditional intellectual property law only treats trade
mark use in connection with goods or services in the course of trade as trade mark infringement.
However, in many jurisdictions, other legal instruments, such as unfair competition law, enable
trademark owners to effectively oppose abuses of their trade marks. Moreover, some countries
are beginning to protect both the distinguishing role of trademarks but also their role in
advertising. Trade mark infringement that occurs in an advertising context need not necessarily
be connected
Honesty and fair play are, and ought to be, the basic policies in the world of business. When a
person adopts or intends to adopt a name in connection with his business or services, which
already belongs to someone else, it results in confusion and has propensity of diverting the
customers and clients of someone else to himself and thereby resulting in injury.
Thus, a Domain Name requires a strong, constant and instant protection under all the legal
systems of the world, including India. This can only be achieved by bringing all the countries
under the huge umbrella legislation which should be uniformly applicable among them or
making a special amendment in their own municipal law making it mandatory to follow.

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4. LAWS AROUND THE GLOBE WITH RESPECT TO TRADEMARK

WITH SPECIAL REFERENCE TO CYBER LAWS

4.1. USA1

The USA governs its cyber crimes including the domain name squatting crimes with the newly
developed, the Anti-cybersquatting Consumer Protection Act (ACPA), enacted in the year
1999 and that established a cause of action for registering, trafficking in, or using a domain
name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed
to thwart cybersquatters who register Internet domain names containing trademarks with no
intention of creating a legitimate web site, but instead plan to sell the domain name to the
trademark owner or a third party. Critics of the ACPA complain about the non-global scope of
the Act and its potential to restrict free speech, while others dispute these complaints. Before the
ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act
(FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent
to curb domain name abuses. The legislative history of the FTDA specifically mentions that
trademark dilution in domain names was a matter of Congressional concern motivating the
Act. Senator Leahy stated that it is my hope that this anti-dilution statute can help stem the use
of deceptive Internet addresses taken by those who are choosing marks that are associated with
the products and reputations of others.
Under the ACPA, a trademark owner may bring a cause of action against a domain name
registrant who
(1) has a bad faith intent to profit from the mark and
(2) registers, traffics in, or uses a domain name i.e. (a) identical or confusingly similar to a
distinctive mark, (b) identical or confusingly similar to or dilutive of a famous mark, or (c) is a
trademark protected by 18 U.S.C. section 706 (marks involving the Red Cross) or 36 U.S.C.
section 220506 (marks relating to the Olympics)
The ACPA also provides that the trademark owner can file an in rem action against the domain
name in the judicial district where the domain name registrar, domain name registry, or other
domain name authority registered or assigned the domain name is located if :
(1) the domain name violates any right of the trademark owner and
1

www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm
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(2) the court finds that the owner (a) is not able to obtain in personam jurisdiction over the
person who would have been a defendant under 15 U.S.C. section 1125(d) (1); or (b)
through due diligence was not able to find a person who would have been a defendant under 15
U.S.C. section 1125(d) (1) by sending a notice of the alleged violation and publishing notice of
the action. This provision is rarely used, however, because many trademark owners can achieve
the same results through a Uniform Domain Name Dispute Resolution Policy (UDRP)
proceeding.

4.2.

UNITED KINGDOM

The law governing the protection of UK registered trademarks 2, whether used on the Internet, or
on goods, or on traditional hard copy advertising, is contained in the Trade Marks Act 1994.
Trade mark protection may also be available in the UK whether the mark is registered or
unregistered through the law on passing off. Passing off prevents one person from taking
advantage of the goodwill (reputation) of another person by passing off his goods or services as
being those of (or being connected to) that person. It applies equally to infringement on the
Internet or elsewhere.
To show trade mark infringement, the owner of the registered trademark will need to show that
the later trade mark is being used in the course of trade. This means use by way of business,
and not necessarily use as a trademark.
Under the UK law, whether the domain name constitutes an instrument of fraud will depend on
the circumstances of the case and whether the name is so distinctive that it could denote only one
trader. For a non-unique name, the court will look at various factors, including the intention of
the registrant and their use of the domain name, to determine whether or not fraudulent activity
has taken place. The approach adopted in recent years by the UK courts to a variety of forms of
trade mark infringement demonstrates the courts growing intolerance of the opportunistic as
well as the more inadvertent infringers of the trade mark rights of others on the Internet.
In respect of an action for trademark infringement, the use of the domain name by the defendant
must be in the course of trade. It was confirmed in One In A Million that the use of a trade
mark in the course of the business of a professional dealer for the purpose of making domain
names more valuable and extracting money from the trademark owner is a use in the course of
2

en.wikipedia.org/wiki/Cybersquatting
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trade. The mere holding of a domain name (for the purpose of selling it to the highest bidder)
could therefore constitute trade mark infringement. The other elements required to show trade
mark infringement must also be shown.
Trade mark protection may also be available in the UK whether the mark is registered or
unregistered through the law on passing off. Passing off prevents one person from taking
advantage of the goodwill (reputation) of another person by passing off his goods or services as
being those of (or being connected to) that person. It applies equally to infringement on the
Internet or elsewhere.
The most important remedy available for trade mark infringement, under the UK trademark law
is an injunction to stop the unauthorized use of the mark. Other remedies include damages or an
account of the defendants profits from the infringement.
The legal means of challenging the unauthorized use of a trade mark on the Internet in the UK is
available through the traditional actions for trade mark infringement or passing off. Although the
UK courts have generally found in favor of trademark owners in domain name disputes, there are
very few court decisions on whether the invisible use of a trade mark on the Internet through
metatags and keywords can constitute trade mark use and infringement or passing off. This area
of the law, in the UK at least, therefore remains relatively uncertain.

4.3.

FRANCE3

Under the French law, domain names are not governed by a particular provision of the Civil
Code, and their legal status is mainly defined by case law. French courts agree to consider
domain names as distinctive signs and to apply the rules governing trade names to them. Domain
names identify entities on the Internet, just as trade names identify entities in the real world. Any
unauthorized use of a domain name that integrates an existing trade mark may give rise to a
trademark infringement or an unfair competition action.
A trade mark infringement action may, of course, also be available in respect of deep linking,
which would take the Internets user to a page of the linked site, without letting the user know
that he is leaving the linking site to the linked site. This could lead to confusion in the public
3

Cms.antisquattingbrochure
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mind, as the Internet user does not have any access to the front page of the linked website. Deep
linking would make it easier than for simple links to prove that the unauthorized link is likely to
cause confusion in the mind as to the relationship between the linking site and the linked one.
After a period when the French courts, aiming at punishing any unfair use or infringement of
trademark rights on the Internet, have sometimes given up certain founding principles of trade
mark law, such as the principle of specialty, we can observe that they have now returned to a
more conservative application of these principles. Traditional means of trademark protection
may not be the most efficient way of protecting trade marks on the Internet.
However, when the special trademark rules do not permit preventing the unfair use of ones
protected sign or name, such illegitimate use can be punished on the grounds of unfair
competition rules. If the unauthorized user is not a competitor of the trade mark owner, a
sanction may be ordered on the grounds of piracy, with no need to prove any intention to cause
confusion in the public mind. Finally, the copying of a trade mark on the Internet can be
regarded as fraud on the grounds of civil liability.
Not so long ago, the Internet appeared to many people as an area where no legal rules applied.
Today, on the contrary, the Internet appears as a place where any rule can be invoked and may
serve as the basis for an action against cybersquatting or any method used by persons infringing
trademarks on the Internet.

4.4. INDIA4
Unlike many developed countries, in India we have no Domain Name Protection Law and cyber
squatting cases are decided under Trade Mark Act, 1999.
That although the Indian Courts have drawn the distinction between trade mark and domain
name; wherein the Hon'ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd;
AIR 2004SC3540 has observed that the,
"distinction lies in the manner in which the two operate. A trademark is protected by the laws of
a country where such trademark may be registered. Consequently, a trade mark may have
multiple registrations in many countries throughout the world. On the other hand, since the
internet allows for access without any geographical limitation, a domain name is potentially
accessible irrespective of the geographical location of the consumers. The outcome of this
potential for universal connectivity is not only that a domain name would require worldwide
4

www.mondaq.com/india/x/.../CYBER+SQUATTI+NG+LAWS+IN+INDIA
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exclusivity but also that national laws might be inadequate to effectively protect a domain
name".
Though domain names are not defined under any Indian law or are covered under any special
enactment, the Courts in India have applied Trade Marks Act, 1999 to such cases.
Like in other cases under Trademarks Act, 1999 two kind of reliefs are available:
1. Remedy of infringement
2. Remedy of passing off
Remedy of Infringement: Trade mark Act permits owner of the trade mark to avail the remedy of
infringement only when the trade mark is registered. Remedy of Passing off: No registration of
the trade mark is required in case the owner intends to avail the relief under passing off.
In India victims of cyber squatting have several options to combat cyber squatting. These options
include: sending cease-and-desist letters to the cyber squatter, bringing an arbitration proceeding
under ICANNs rules, or bringing a lawsuit in state or federal court. Whatever strategy a victim
of cyber squatting elects to use, that person should not dismiss the serious effects that cyber
squatting can have if left unchecked.
A case could be filed with the registrar, handled by the National Internet Exchange of India
(NiXi) who brings the matter to fast track dispute resolution process whereby decisions are
transferred within 30 days of filing a complaint.
Like always our legal system is silent on this matter too, there is no provision in the current or
proposed Information Technology Act in India to punish cyber-squatters, at best, the domain can
be taken back. Though there is no legal compensation under the IT Act. Most squatters however
operate under guise of obscure names.

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5. CASES AROUND THE WORLD

5.1.

USA

1. Ticketmaster Corp. v. Tickets.com Inc. (Ticketmaster Corp. v. Tickets.com

Inc., 5
It was a preliminary injunction case before the U.S. District Court for the Central District of
California) involved deep linking. In this case Ticketmaster (TM) filed to obtain an injunction
against Tickets.com (T.com). Both TM and T.com are in the business of providing tickets or
information on how to obtain tickets. TM is the largest ticket brokerage company in the U.S.,
and sells tickets through retail ticket windows over the Internet. TM operates a main web page
with several directories that categorize events, venues, geographical areas and the like that a
customer can choose. To obtain information on any specific event, a visitor must click through
links to these directories. T.com sells tickets, but to a larger extent provides information
regarding other locations where tickets may be purchased. One way T.com accomplishes this is
to provide the user with a deep link to the TM site for the specific event the user requested.
However, the deep link bypasses the TM main page. With regard to the various Lanham Act
claims, the court held that T.com did not pass itself off as TM, in part because T.com on its
website said that it could not sell the tickets but would refer the buyer to another broker who
could. The court was of the opinion that TM would be unsuccessful with any trademark claims
against T.com.

2. Brookfield Communications v. West Coast Entmt Corp 6

Plaintiff owned the federally registered mark MovieBuff for a database of information
pertaining to the motion picture and television industry. When defendant, a large video rental
5

2000 U.S. Dist. LEXIS 12987 (C.D. Cal. 2000).

174 F.3d 1036 (9th Cir. 1999)
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store chain, attempted to launch a website at www.moviebuff.com where it would provide a

similar searchable entertainment database, plaintiff filed suit for trademark infringement and
dilution. When plaintiff moved for a temporary restraining order, the district court construed it as
a preliminary injunction and denied the motion, finding that defendant was the senior user of the
mark MovieBuff and that plaintiff had not established a likelihood of confusion. Shortly after
defendant posted its website, the Ninth Circuit granted plaintiffs emergency motion for relief
pending appeal.
Plaintiff also sought relief enjoining defendant from using the MovieBuff mark as metatags or
buried HTML code. The court determined that use other than as a domain name was not likely to
cause consumer confusion. If a consumer entered the term into a search engine, the results would
probably pull up both defendants and plaintiffs websites, and the consumer could choose
between the two. Furthermore, even if defendants site was chosen, it would prominently display
defendants own mark, and a consumer would not likely be confused. The court explained,
however, that use of MovieBuff as metatags was likely to cause initial-interest confusion,
which is actionable. A consumer intending to find plaintiffs website might instead stumble upon
defendants site and decide to stay there, despite having full knowledge that it is not the
plaintiffs website. The court thus found that use of the plaintiffs mark as metatags constituted a
type of misappropriation of goodwill, and it enjoined such use. Finally, the court addressed the
defendants fair-use defense. It held that defendant was free to use the term movie buff in a
descriptive sense. It could not, however, use the term without a space between the two wordsa
crucial distinction that changes the meaning of the term from describing a motion picture
enthusiast to designating the source of plaintiffs goods and services. The court noted that
defendant was not barred from using plaintiffs mark to describe the plaintiffs product. It could,
for example, include some form of comparative advertising on its website.

3. Playboy Enter., Inc. v Asiafocus Intl, Inc. 7

Playboy Enterprises Inc. (PEI), owner of the PLAYMATE and PLAYBOY trademarks, sued
two Hong Kong-based companies, AsiaFocus and Internet Promotions, and their owners, in
Virginia for various trademark infringement, dilution, counterfeiting, false designation of origin,
and unfair competition arising from defendants unauthorized use of PEIs PLAYMATE and
7

1998 U.S. Dist. LEXIS 10359 (E.D. Va. 1998)

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PLAYBOY trademarks on the Internet to identify adult-entertainment websites featuring pictures

of naked women located at the domain names asian-playmates.com and playmatesasian.com.
The court additionally found that defendants infringement and dilution were willful,
emphasizing in particular defendants purposeful embedding of PEIs marks in the metatags of
their websites to attract visitors as an act which epitomizes the blurring of PEIs
trademarks. The court awarded PEI costs, attorneys fees, and $3,000,000 in statutory damages
for trademark counterfeiting pursuant to 15 U.S.C. 1117(c).

5.2. INDIA
1. Yahoo! Inc v Akash Arora8
The present suit has been instituted by the plaintiff against the defendants seeking for a decree
of permanent injunction restraining the defendants, their partners, servants and agents from
operating any business and/or selling, offering for sale, advertising and in any manner dealing in
any services or goods on the Internet or otherwise under the trademark/domain name
'Yahooindia.Com' or any other mark/domain name which is identical with or deceptively similar
to the plaintiff's trademark 'Yahoo!' and also for rendition of accounts and damages. The plaintiff
has also filed an application under Order 39 Rules 1 & 2 CPC praying for an ad interim
temporary injunction restraining the defendants from operating any business and/or selling,
offering for sale, advertising and in any manner dealing in any services or goods on the Internet
or otherwise under the trademark/domain name 'Yahooindia.Com' or any other mark/domain
name which is identical with or deceptively similar to the plaintiff's trademark 'Yahoo!'. The
trademarks and domain names are not mutually exclusive and there is an overlap between the
trademarks and services rendered under domain names and thus by adopting a deceptively
similar trademark 'Yahooindia', the defendants have verbatim copied the format, contents, lay
out, colour scheme, source code of the plaintiff's prior created regional section on India at
Yahoo.com.sg and thus passing off the services of the defendants as that of the plaintiff. He
submitted that Internet users are familiar with the practice of companies to select domain names
that incorporate their company name, well-known trademark, and/or product/service name and
generally attempt to locate a particular company's Web site by simply typing in www.(company
name).com or www.(product name).com when they are unsure of the Internet address of the
Company.
8

1999 PTC 201

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Probably the first reported Indian case is, wherein the plaintiff, who is the registered.

2. Rediff Communication Ltd Vs. Cyberbooth and anr 9

This is an action in passing off. The plaintiffs have filed the present 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. The plaintiffs are also seeking a permanent
injunction restraining the defendants from using the mark "RADIFF" or any other word on mark
either as part of their trade name or trading style which is deceptively similar to plaintiffs'
trading style and/or "REDIFF" or using the get up, concept and lay out, etc., so as to pass off the
defendants' product and/or services as those of the plaintiffs or in some way connected with the
plaintiffs. The plaintiffs are further seeking an injunction against the defendants from using the
literary or artistic work found on the plaintiffs' web page or infringing the defendants copyright
thereon without the plaintiffs' license. Along with the suit, the plaintiffs have taken out this
Notice of Motion for interlocutory injunctions.
the defendants have adopted the word "RADIFF" as part of their trading style deliberately 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 and/or the Rediffusion
group by so adopting and using the word "RADIFF" which is deceptively similar to "RADIFF"
which is trading name and style of the plaintiffs. The plaintiffs submit that the adoption of the
word "RADIFF" which is deceptively similar to the plaintiffs trade name and style by the
defendants is dishonest and has been done with the deliberate intention to pass off the defendants
business, goods and services as those of the plaintiffs and thereby illegally trade upon the
reputation of the plaintiffs.
The high Court held that the only reason the defendant had adopted the Address Radiff was to
trade upon the Plaintiffs position. They said that a first time user would be confused and
furthermore as both the sites offered similar features the confusion would be compounded.

3. Tata Sons Limited vs. Monu Kosuri & others10

1999 (4) BomCR 278

2001 IIIAD Delhi 545, 90 (2001) DLT 659

10

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The plaintiff is the Registered Proprietor of the trademark TATA since 1917 in relation to
various goods, in various classes. The plaintiff also has its trademarks registered in 9 other
countries, besides India in various classes. It is further submitted that the plaintiff is one of the
oldest and largest business conglomerates in India and its reputation spills globally as it has
various business abroad as well. The suit arises on the account of misappropriation of the
plaintiff's trademark TATA by the defendants as a part of a series of domain names that have
been registered by them incorporating the well-known and famous trademark TATA.
The plaintiff's case is that since its trademark and names TATA is 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 service of the said 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 plaintiff further states that the entire series of domain
names that have been registered by the defendants incorporate the trademark TATA of the
plaintiff, in complete disregard of the proprietary rights of the plaintiff in the said trademark and
defendants not only misappropriated the name of several of the plaintiff's group companies but
also registered domain names like "jrdtata.com" and "ratantata.com". It is plaintiff's contention
that the defendants cannot under any circumstances claim any rights in the trademark TATA as
the plaintiff has not authorized its use by the defendants in any manner whatsoever. That the
defendant's use of the impugned mark/name is thus aimed at diverting the business of the
plaintiff and would irreparably damage the reputation and goodwill of the plaintiff by tarnishing
of the asset, i.e., trademark TATA by the aforesaid activities. It was held that Internet domain
names are more than internet addresses and are entitled to protection equal to trademarks and the
plaintiff was granted the ad interim injunction.

4. Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd Supreme Court of India11
Satyam Infoway (hereinafter referred to as the appellant) had registered several domain names
pertaining to its business: sifynet.com, sifymall.com, sifyrealestate.com, in the year 1999. It held
that the word "Sify" was a combination of elements of its corporate name "Satyam Infoway" and
was a term that had garnered substantial goodwill in the market. Meanwhile, Sifynet Solutions
(hereinafter referred to as the respondent) had started using the word "Siffy" as part of the
11

AIR 2004 SC 3540

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domain names under which it carried on internet marketing (namely siffynet.com and
siffynet.net). It claims to have registered the same in the year 2001.
Satyam Infoway (hereinafter referred to as the appellant) had registered several domain names
pertaining to its business: sifynet.com, sifymall.com, sifyrealestate.com, in the year 1999. It held
that the word "Sify" was a combination of elements of its corporate name "Satyam Infoway" and
was a term that had garnered substantial goodwill in the market. Meanwhile, Sifynet Solutions
(hereinafter referred to as the respondent) had started using the word "Siffy" as part of the
domain names under which it carried on internet marketing (namely siffynet.com and
siffynet.net). It claims to have registered the same in the year 2001.
Subsequently the appellant filed a suit in City Civil Court, Bangalore seeking an injunction
against the respondent. The appellant held that the respondent had registered the similar
sounding domain names intentionally in order to carry out their business transactions under the
goodwill and brand name of the former. And that it would create a confusion in the minds of the
public who would think that the services of Sifynet belongs to Satyam Infoway. The respondent
contended that unlike a trade mark, the registration of a domain name did not confer an
intellectual property right in the name.
The court ruled in favor of the appellant and granted the injunction in their favor. It held that the
appellant was the prior user of the word 'Sify' as a result of which it enjoyed immense popularity
and goodwill in relation to internet and other computer related services. Thereby, if the
respondent is allowed to further continue with the use of the domain names it would in all
likelihood create confusion in the minds of the public. And that it may in all possibility affect the
business of the appellant.
Thereafter, the respondents appealed to the Karnataka High Court where it was held that
respondent had already invested a considerably high amount of sum in developing a customer
base for its business and it would consequently suffer immense hardship and irreparable injury if
the court ruled in the appellant's favor and further it was held that the businesses which the
parties engaged in were different and therefore there was no likelihood of any confusion in the
minds of the public.
Not satisfied with the decision given by the Karnataka High Court, the appellants went for an
appeal before the Supreme Court of India. It set aside the decision of the High Court and ruled in
favor of the appellants. It held that though no there was no law in India which explicitly deals
with the domain names, it falls within the ambit of the Trade Marks Act. It further observed that
a domain name enjoyed all features of a trademark. Accordingly it ruled that if the respondent
was allowed to further continue using the domain names it would in all likelihood create

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confusion in the minds of the general public. A user could be diverted to the website containing
the unauthorized domain name. And upon his arrival at the website, if he does not find the goods
or services associated with the mark, he might think that the legitimate owner was
misrepresenting the claims. This would result in the loss for the legitimate owner, thereby
affecting his goodwill and brand name.
Thus the apex court granted an injunction in favor of the appellants, thereby restraining the
respondents from further using the domain names in their business transactions.

5.3.

UNITED KINGDOM

1. Global Projects Management Limited v Citigroup Inc.12

The merger of 2 companies had led to the formation of the first defendant, Citigroup. Citigroup
sought summary judgment of its counterclaim alleging passing off and trade mark infringement.
On the same day that the formation of Citigroup was announced (6 April 1998), the second
claimant, a director of the first claimant, applied to register the domain name citigroup.co.uk.
The following day, Citigroups application to register citigroup.com was refused. The first
claimant had no connection with Citigroup and had not tried to sell citigroup.co.uk to the
Defendant. When www.citigroup.co.uk was typed in an error message was displayed. Any
emails sent to the .co.uk address were received onto Globals system, which Globals director
had caused to send a return message informing him or her that the email had been wrongly
addressed. In 2003, Citigroup became aware of the existence of citigroup.co.uk and threatened
legal action against Global.
The merger of 2 companies had led to the formation of the first defendant, Citigroup. Citigroup
sought summary judgment of its counterclaim alleging passing off and trade mark infringement.
On the same day that the formation of Citigroup was announced (6 April 1998), the second
claimant, a director of the first claimant, applied to register the domain name citigroup.co.uk.
The following day, Citigroups application to register citigroup.com was refused. The first
claimant had no connection with Citigroup and had not tried to sell citigroup.co.uk to the
Defendant. When www.citigroup.co.uk was typed in an error message was displayed. Any
emails sent to the .co.uk address were received onto Globals system, which Globals director
had caused to send a return message informing him or her that the email had been wrongly

12

[2005] EWHC 2663 (Ch)

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addressed. In 2003, Citigroup became aware of the existence of citigroup.co.uk and threatened
legal action against Global.

2. Shetland Times, Ltd. v. Jonathan Wills and Another13

The Shetland Times suit involved two news services located on Scotland's remote Shetland
Islands, the Shetland Times ("Times") and Shetland News ("News"). In early 1996, the Times
applied to the Scottish High Court for an interim interdict, the legal equivalent of a preliminary
injunction in the United States, against Dr. Jonathan Wills, a former editor of the Times and
current managing director of the News, and Zetnews, Ltd, the operators of the web site that
carried the Shetland News. In its application, the Times sought an order precluding the News'
deeplinking and bypassing the Times's front page through the use of headlines/links and alleged
that the News's conduct amounted to copyright infringement under the United Kingdom's
Copyright Designs and Patents Act of 1988 ("Act"). To obtain the interdict or injunction, the
Times needed to demonstrate only that it had presented a prima facie case of infringement under
the Act.
Since March 1996, the Times has operated a web site where it posts articles which also
appear in its print newspaper. The Times went online with a view of the web site's potential to
eventually yield advertising revenue. Advertising on the Times web site appears on the front
page but not on the embedded pages.
The News opened its web site in November 1995. At the time the interdict was sought, the News
web site also contained front-page advertising as well as headlines from various sources,
including the Times. The News set the headlines up as hypertext links to the originating web site
so, by clicking on one of the headlines, the News reader accessed the accompanying article at the
web site on which it appeared. When accessed by this method, any frame or identifying materials
that might also appear on the linked page were hidden to the reader. Thus, when accessing an
article from the Times, News readers clicked on the Times headline that appeared in the News
web site and then were transported to the embedded page on the Times web site where the article
appeared. The Times front page with its advertising was bypassed and the Times frame, which
surrounded the embedded page, was removed from view. For the purpose of the application, the
court granted the interim order on the basis that a prima facie case was made out on the argument
13

1997 F.S.R. (Ct. Sess. O.H.), 24 October 1996

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of cable programme service, and on the basis of a concession that (while the defendants denied
that the headlines in issue were literary works) headlines might in some circumstances be literary
works under UK copyright law.

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6. CONCLUSION
There is an urgent need for the strict laws in this field, so that these squatters could be
punished and these crimes could be avoided in future. The new domain name dispute
law should be intended to give trademark and service mark owners legal remedies
against defendants who obtain domain names in bad faith that are identical or
confusingly similar to the trademark. And the plaintiff may elect statutory damages for
the bad faith registration. It should act as an important weapon for trademark holders in
protecting their intellectual property in the online world.
Since cyber squatting is going to shift from larger businesses to smaller businesses in the
future, modifications to the cyber squatting acts will need to be made in order to increase
protection. Cyber squatting problems are going to continue to develop because of the
rapid growth and expansion of the Internet. The issue cannot simply be ignored or else it
may hurt the economy. Also, the act is structured in such a way that makes it too broad.
For example, legitimate protest sites would become criminal. In other words, nobody
could make a website saying www.googleishorrible.com. Although they are mentioning
the name of the company, they are voicing their opinion in relation to why they dont
like that particular company, and that, by no means, is unethical.
Furthermore, the problem of country-specific and area-specific prefixes has also given a
rise to cybersquatting around the world. Cybersquatters around the world have begun to
use the suffixes at the end to promote their businesses. For example, although
www.amazon.com might be taken as a domain name, www.amazon.uk (which is a
United Kingdom) specific website is allowed to be used. It should not be legal for people
to use the popularity of amazon to promote their own business.
In conclusion, it can be seen that the internet boom continue, people will be seen putting
more faith into the information they obtain via the internet. As that faith intensifies, the
need for online protection of property will increase. Thus, it is imperative that we stay
informed about this topic and try to push more robust legislation that will make the
internet a more pleasant environment for trademark owners, both companies and
individuals.
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BIBLIOGRAPHY
Books:
1. Law Relating To Intellectual Property Rights, Second Edition VK Ahuja
2. An Introduction To Intellectual Property Rights, Central Law Publication JP
Mishra