NATIONAL LAW INSTITUTE UNIVERSITY, BHOPAL

PROJECT FOR INTELLECTUAL

PROPERTY LAW

9TH SEMESTER

CASE ANALYSIS

SATYAM INFOWAY LTD V. SIFFYNET SOLUTIONS (P) LTD

(2004) 6 SCC 145

SUBMITTED BY: SUBMITTED TO:

HARSH SAHU PROF. GHAYUR ALAM

2017BALLB88
 TABLE OF CONTENTS

S. No. Topics Page No.

1. Acknowledgement 3
2. Facts of the Case 4
3. Relevant Laws 5-6
4. Advocates for respective parties and names of judges 7
5. Arguments put forth 8-9
6. Issues involved 10

7. Judgment 11-12
8. Conclusion 13
 MATERIAL FACTS OF THE CASE

The appellant which was incorporated in 1995 registered several domain names like
www.sifynet, www.sifymall.com, www.sifyrealestate.com, etc. in June 1999 with the
internationally recognised registrars viz. the Internet Corporation for Assigned Names and
Numbers (ICANN) and the World Intellectual Property Organisation (WIPO). 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 claims 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 5-6-2001. The respondent
claims to have obtained registration of its two domain names with ICANN on 5-6-2001 and
16-3-2002 respectively.

Coming to know of the use of the word “Siffy” as part of the respondent's corporate and
domain name, the appellant served notice on the respondent to cease and desist from either
carrying on business in the name of Siffynet Solutions (P) Ltd. or Siffynet Corporation and to
transfer the domain names to the appellant. The respondent refused.

The appellant filed a suit in the City Civil Court against the respondent on the basis that the
respondent was passing off its business and services by using the appellant's business name
and domain name. An application for temporary injunction was also filed. The City Civil
Court Judge allowed the application for temporary injunction on the grounds that the
appellant was the prior user of the trade name “Sify”, that it had earned good reputation in
connection with the internet and computer services under the name “Sify”, that the
respondent's domain names were similar to the domain name of the appellant and that
confusion would be caused in the mind of the general public by such deceptive similarity. It
was also found that the balance of convenience was in favour of granting an injunction in
favour of the appellant.

The respondent preferred an appeal before the High Court 1. An interim stay of the City Civil
Judge's judgment was granted. The appeal was ultimately allowed by the High Court. In
allowing the appeal, the High Court was of the view that merely because the appellant had
started the business first, no order could have been granted in its favour without considering
where the balance of convenience lay. It was held in the finding that the appellant had earned
a reputation and goodwill in respect of the domain name “Sify” was not based on a
consideration of the necessary factors. On the other hand, the documents on record showed
that the respondent was doing business other than that done by the appellant and since there
was no similarity between the two businesses, there was no question of customers being
misled or misguided or getting confused.

1
Appeal No 3028 of 2004
 NAME OF ADVOCATES AND JUDGES

Advocates for Appellants:

1. P Chidambaram
2. AA Mohan
3. K Mughnthan
4. KV Mohan

Advocates for Respondents:

1. Basava Prabhu s Patil

2. Shivaprabhu S Hiremath
3. Subramanya Prasad
4. AS Bhasme

Name of Judges: Division Bench of Ruma Pal and P Venkatarama Reddi

 RELEVANT LAWS

Trade Marks Act, 19882

1. Section 2(1)(m): a ‘mark’ is a device, brand, heading, label, ticket, name, signature,

word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof
2. Section 2(1)(k): a “name” includes any abbreviation of a name
3. Section 2(1)(j): ‘Goods’ means anything which is the subject of trade or manufacture
4. Section 2(1)(z): ‘Services’ means service of any description which is made available
to potential users and includes the provision of services in connection with business of
any industrial or commercial matters such as banking, communication, education,
financing, insurance, chit funds, real estate, transport, storage, material treatment,
processing, supply of electrical or other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of news or information and advertising
5. Section 2(1)(zb): ‘Trade mark’ means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one person from those
of others and may include shape of goods, their packaging and combination of
colours.

2
https://legislative.gov.in/sites/default/files/A1999-47_0.pdf
 ARGUMENTS ADVANCED BY PARTIES

Arguments advanced by Appellant:

1. Registration of a domain name with ICANN did not confer any intellectual property
right; that it is a contract with a registration authority allowing communication to
reach the owner's computer via internet links channelled through the registration
authority's server and that it is akin to registration of a company name which is a
unique identifier of a company but of itself confers no intellectual property rights.
2. An important element to be established in passing off action is misrepresentation by
the defendant to the public. An innocent misrepresentation would be relevant only on
the question of the ultimate relief which would be granted to the plaintiff [Cadbury
Schweppes v. Pub Squash3].What has to be established is the likelihood of confusion
in the minds of the public (the word “public” being understood to mean actual or
potential customers or users) that the goods or services offered by the defendant are
the goods or the services of the plaintiff. In assessing the likelihood of such confusion
the courts must allow for the “imperfect recollection of a person of ordinary memory”
[Aristoc v. Rysta4]
3. In Rule 2 of the UDNDR Policy, prior to application for registration of a domain
name, the applicant is required to determine whether the domain name for which
registration is sought “infringes or violates someone else's rights”.
4. The appellant has claimed that its shares are since 1999 actively traded in on a daily
basis on NASDAQ. It is also claimed that the appellant has widely used the word Sify
as a trade name/domain name for its software business and services.
5. In support of its claim of goodwill in respect of the name of “Sify”, the appellant had
brought on record press clippings of articles/newspapers in which the appellant has
been referred to as “Sify”.

Arguments advanced by Respondents:

1. Under UDNDR Policy protection is given to intellectual property in domain names. A

prior registrant can protect its domain name against subsequent registrants. Confusing
similarity in domain names may be a ground for complaint and similarity is to be
decided on the possibility of deception amongst potential customers. The defences
available to a complaint are also substantially similar to those available to an action
for passing off under trade mark law.
2. According to the respondent the word “Siffynet” which features both as its corporate
name and in its domain names was derived from a combination of the first letter of the
five promoters of the respondent, namely, Saleem, Ibrahim, Fazal, Fareed and Yusuf,
and the word “net” implies the business of the respondent.
3. The stand taken by the respondent is that it was not aware of the appellant's trade
name and trading style “Sify”.
3
1981 RPC 429 : (1981) 1 All ER 213 : (1981) 1 WLR 193 (PC)
4
1945 AC 68 : (1945) 1 All ER 34 (HL)
4. Respondent alleges that confusion is unlikely because they operate in different fields.
According to the respondent its business is limited to network marketing unlike the
appellant which carries on the business of software development, software solution
and connected activities.
 CHRONOLOGICAL LIST OF CASES CITED

1. Info Edge (India) (P) Ltd. V. Shailesh Gupta5

2. Dr. Reddy’s Laboratories Ltd. V. Manu Kosuri6

3. Acqua Minerals Ltd. Pramod Borse7

4. Tata Sons Ltd. V. Manu Kosuri8

5. Rediff Communication Ltd. V Cyberbooth9

6. Yahoo Inc. Akash Arora10

7. Cadbury Schweppes V, Pub Squash11

8. Erven Warnink V. Townend12

9. Aristoc V. Rysta13

5
(2002) 24 PTC 255 (Del)
6
2001 PTC 859 (Del)
7
2001 PTC 619 (Del)
8
2001 PTC 432 (Del)
9
AIR 2000 Bom 27
10
(1999) 19 PTC 201 (Del)
11
1981 RPC 429
12
1980 RPC 31
13
1945 AC 68
 ISSUES INVOLVED

1. The principal question raised in this appeal is whether internet domain names are

subject to the legal norms applicable to other intellectual properties such as trade

marks?

2. Does a domain name pertain to the provision of services within the meaning of

Section 2(1)(z) of the Trade Marks Act 1999?

3. Would the principles of trade mark law and in particular those relating to passing off

apply to domain names?

 JUDGMENT

1. With the increase of commercial activity on the internet, a domain name is also used
as a business identifier. Therefore, the domain name not only serves as an address for
internet communication but also identifies the specific internet site. In the commercial
field, each domain-name owner provides information/services which are associated
with such domain name. Thus a domain name may pertain to provision of services
within the meaning of Section 2(1)(z).
2. 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. 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.
3. The appellant's internet-based business was, from 1999, high profile. The evident
media prominence to “SIFY” and large subscriber base could have left the respondent
in no doubt as to its successful existence prior to the adoption of Siffy as part of its
corporate name and registration of Siffynet and Siffy.com as its domain names.
4. What is also important is that the respondent, admittedly, adopted the mark after the
appellant. The appellant is the prior user and has the right to debar the respondent
from eating into the goodwill it may have built up in connection with the name.
5. Respondent’s contention of different occupational fields is factually incorrect and
legally untenable as a domain name is accessible by all internet users and the need to
maintain an exclusive symbol for such access is crucial. Therefore a deceptively
similar domain name may not only lead to a confusion of the source but the receipt of
unsought-for services. Besides the respondent's brochure explicitly offers intranet and
extranet solutions which are also explicitly offered by the appellant. There is clearly
an overlap of identical or similar services.
6. Apart from being the prior user, the appellant has adduced sufficient evidence to show
that the public associates the trade name SIFY with the appellant.
7. An action for passing off, as the phrase “passing off” itself suggests is to restrain the
defendant from passing off its goods or services to the public as that of the plaintiff’s.
It is an action not only to preserve the reputation of the plaintiff but also to safeguard
the public. The defendant must have sold its goods or offered its services in a manner
which has deceived or would be likely to deceive the public into thinking that the
defendant’s goods or services are the plaintiff’s. The second element that must be
established by a plaintiff in a passing off action is misrepresentation by the defendant
to the public. What has to be established is the likelihood of confusion in the minds of
the “public” that the goods or services offered by the defendant are the goods or the
services of the plaintiff. In assessing the likelihood of such confusion the courts must
 allow for the “imperfect recollection of a person of ordinary memory”. The third
element of a passing off action is loss or the likelihood of it.
8. The High Court's finding that no prejudice would be caused to the appellant because it
had another domain name was a consideration which might have been relevant if
there was a case of bona fide concurrent use and where the right to use was coequal.
The doubtful explanation given by the respondent for the choice of the word “Siffy”
coupled with the reputation of the appellant can rationally lead us to the conclusion
that the respondent was seeking to cash in on the appellant's reputation as a provider
of service on the internet.
9. The decision of the High Court is set aside and that of the City Civil Court affirmed.
Also a domain name has all the characteristics of a trade mark and an action for
passing off can be found where domain names are involved. As the use of the same or
similar domain name may lead to a diversion of users which could result from such
users mistakenly accessing one domain name instead of another.
 CONCLUSION

The original role of a 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 a business identifier. Therefore, the domain name not only
serves as an address for internet communication but also identifies the specific internet site.

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 coexist
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 fact that many consumers searching for a particular site are likely, in
the first place, to try and guess its domain name has further enhanced this value.14

The use of the same or similar domain name may lead to a diversion of users which could
result from such users mistakenly accessing one domain name instead of another. This may
occur in e-commerce with its rapid progress and instant (and theoretically limitless)
accessibility to users and potential customers and particularly so in areas of specific overlap.
Ordinary consumers/ users seeking to locate the functions available under one domain name
may be confused if they accidentally arrive at a different but similar website which offers no
such services. Such users could well conclude that the first domain name owner had
misrepresented its goods or services through its promotional activities and the first domain
owner would thereby lose its custom. Seeing from this perspective the Court’s decision of
classifying domain name as trademark and applying to it the principles of passing off was
remarkable and would certainly lead to reducing the proliferation of disputes which may arise
on similar aspects.

14
owland, Diane and Macdonald, Elizabeth: Information Technology Law, 2nd Edn., p. 521