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Passing Off of Domain Names

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Vaishnavi Tripathi
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Passing Off of Domain Names

Uploaded by

Vaishnavi Tripathi
Copyright
© © All Rights Reserved
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
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Passing Off of Domain Names

Domain names can be registered as trademarks upon fulfilling all the conditions that are
required to be registered as a trademark. Hence, any domain name which is unique, capable
of identifying itself and distinguishing its goods and services from those of others and
acts as a reliable source identifier of concerned goods and services on the internet, may
be registered as a trademark.
For proper registration of a domain name as a trademark, this must be unambiguously unique
from all other domain names and well-known trademarks on the internet, so that it does not
mislead or deceive customers of other companies engaged in the same or different fields, or
violate public order or morality. Such cases might give rise to instances of trademark
infringement litigation.
A dispute had arisen before the Supreme Court in Satyam Infoway Ltd. vs. Siffynet
Solutions, as to whether domain names are recognizable as intellectual property, such as
trademarks. The court held, “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, and distinguishes specific businesses or services of
different companies. 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. 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."
SC in sifynet- 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 a
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.
In India, domain names may be granted protection as a trademark or service mark under the
provisions of Trademarks Act, 1999 (hereinafter referred to as “the Act”), provided that the
domain name fulfils all requirements to be properly registered under the Act (as enumerated
above). Once registered, the registered proprietor of a domain name will have all those
legitimate rights and authorities which are commonly availed by the owners of registered
trademarks or services marks in India. This also includes the right to sue for infringement or
passing off.
a) For infringement: Any person violating a domain name which is registered as a valid
and subsisting trademark under the Indian Trademark Law will be held liable for
infringement of Trademark under section 29 of the Act.
b) For passing off: an owner of a trademark who has not registered his mark is also
entitled to protection of his mark if he is the prior user, his mark has acquired
distinctiveness and there is misrepresentation by anyone else with regard to his goods
which is likely to deceive the relevant public.
The first reported Indian case was Yahoo! Inc. v Akash Arora, the former, the global
Internet media search and information network, filed an action against the latter on the
Internet as those of the plaintiffs’ by adopting the domain name “yahooindia.com”. The
plaintiffs submitted that their domain name “yahoo.com” was registered with Network
Solutions Inc (NSI) since 1995, that it had become well-known and they had obtained
registrations on the trademark “Yahoo” or variations thereof in approximately 69 countries,
although not in India. The Delhi High Court rejected the defendants’ argument, on the
grounds, inter alia, the trademark law applies equally to domain names on the Internet; that,
where the parties are in the same or a similar line business, the use of similar names would
result in confusion and deception; that the disclaimer by the defendants on their web site did
not reduce the likelihood of the confusion and that the mark was widely publicized and well-
known; and that the fact that “Yahoo” was a dictionary word was no reason to deny
protection for the mark. The mere fact that the Internet users were technically educated and
literate; this would not reduce the risk of confusion.

The court held that: “In an Internet service, a particular Internet site could be reached by
anyone anywhere in the world who proposes to visit the said Internet site. With the
advancement and progress in technology, services rendered on the Internet has come too
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 that of the plaintiff. As a matter of
fact in a matter where services rendered through the domain name in the Internet, a very alert
vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from
any corner of the globe.”

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