Analysis Of Domain Name Disputes In India

Introduction

The internet has come a long way since its inception as a communication network for the US Defence Department in the 1960s. Today, it is a crucial medium for conducting commercial activities and has transformed the way people communicate, share information, and conduct business. However, to ensure successful communication in a network as vast as the internet, every device connected to it requires a unique address. This unique address is achieved through a set of Internet Protocol (IP) numbers, commonly known as IP addresses, which have become a primary concern for the allocation of domain names on the Internet.

Domain names are made up of a series of character strings separated by dots, such as www.google.com. While users may type in a domain name to access a website, it is actually the IP address associated with the domain name that directs the user’s computer to the desired website. Therefore, when a user enters a domain name, it is translated into its corresponding IP address, which allows the user to access the website they desire. This process of converting a domain name to an IP address is known as domain name resolution and is crucial for the functioning of the internet.

Domain name disputes

The unique mapping between IP addresses and domain names has created an artificial scarcity of domain names. This scarcity arises because domain names serve as a means of identifying and distinguishing a particular business or individual. For instance, two people with the same name cannot have their websites with the same domain name within the same top-level domain.

[Image Sources : Shutterstock]

Legal rights in domain names can be derived from these sources: registration of the name as a trademark; prolonged use of the name for trading; or the biological name of a person. These sources provide individuals and business with the legal right to use a particular name for specific purposes within a defined geographical area. However, conflicts can arise between individuals and entities over domain name claims, with both parties holding an entitlement to the name.

Judicial precedents in India

Although innumerable domain name disputes have been litigated all over the world since early 1990s, the first case came up before an Indian court only in 1999, with the number of such cases growing ever since. Examining the cases that have been litigated in India, one can find two types of cases, namely disputes between a trade mark owner and a domain name owner and disputes between two domain name owners.

Yahoo!, Inc. vs. Akash Arora and Ors.[1]

• Being the first of its kind, this case constitutes an important precedent for the resolution of domain name disputes and has been followed in at least 14 subsequent cases.
• The plaintiff, Yahoo!, Inc., the owner of the well-known trademark “Yahoo!” and the domain name “www.yahoo.com” offering a range of web-based services had filed a suit against the defendant, who was providing similar services as the plaintiff under the name “www.yahooindia.com”. The plaintiff contended that the defendant was using a deceptively similar domain name in an attempt to pass off their services as those provided by Yahoo!, Inc under its well-known mark.
• In considering whether this was a case of passing off, the court referred to Montari Overseas vs. Montari Industries Ltd.[2] which was a dispute between two parties involving use of the mark “Montari”. Here, the court had held that when a defendant does business under a name which is sufficiently close to the plaintiff’s trade name with an acquired reputation and the public at large is likely to be misled that the defendant’s business is associated with the plaintiff, the defendant is liable for an action of passing off.
• After examining the contentions of both the parties, the court held that when both the domain names are examined, it is evident that the two domain names are almost identical and there is every possibility of an internet user being confused and deceived into believing that both of them belong to one common source. Thus, the court granted ad interim injunction restraining the defendants from dealing in goods or services under any domain name which is identical or deceptively similar to the plaintiff’s trademark “Yahoo!”.

Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.[3]

• The case is significant as it was the first domain name dispute to be brought before the Supreme Court of India.
• The plaintiff, Satyam Infoway, who owned several domain names like “www.sifynet.net”, “www.sifymall.com” and “www.sifyrealestate.com”, filed a suit against the defendant for having registered similar domain names “www.siffynet.net” and “www.siffynet.com” for similar services to pass off their services as that of the plaintiff’s.
• The court, in recognition of the prior use of the trade name “Sify” by the plaintiff, and the deceptive similarity of the two domain names, acknowledged that people might get confused by such similarity. Hence, it granted temporary injunction in favour of the plaintiff.
• The injunction was subsequently challenged before the Karnataka High Court, which held that both businesses and trade names were dissimilar and there was no likelihood of confusion. Hence, it reversed the ruling of the lower court.
• Thereafter, Satyam Infoway preferred an appeal before the Supreme Court of India. In ruling out the defendant’s plea of ignorance about the prior existence of the trade name “Sify”, the court held that “Sify” enjoyed evident media prominence and a large subscriber base.
• The court held that the similarity in the domain names may lead an unwary user to assume a business connection between the two. In order to establish the likelihood of confusion of public and consequent loss to the plaintiff, while it may be difficult for the appellant to prove actual loss having regard to the nature of the service and the means of the access, the possibility of loss in the form of diverted customers is more than reasonably probable.
• Accordingly, the court put a stay on the use of the domain name by the defendant to avert possible loss to the plaintiff.

Arun Jaitley vs. Network Solutions Private Limited and Ors.[4]

• This is a notable case of cybersquatting where the popularity associated with the name of a person who has achieved a celebrity status was exploited.
• The plaintiff, a well-known political figure, while trying to book the domain name “www.arunjaitley.com” found that it was already registered with defendant no. 1, who, on being contacted, advised the plaintiff to make an offer through its Certified Offer Service (cos) for purchasing it. Since the cos was an auction service, the minimum bid was over $100, which was substantially higher than the cost of booking a domain name for a year which was only $35. Thus, the plaintiff contended that defendant no. 1 had malafide intentions behind suggesting the plaintiff to submit his bid for the domain name through its auction service. This became all the more evident when defendant no. 2 transferred the domain name to an auction site without the notice of the plaintiff in violation of the court’s interim order restraining any transfer.
• The court held that the domain name was a rare combination of two words which was protectable under the Trade Mark Act, 1999. The right to use the name “Arun Jaitley” vested with the plaintiff alone on account of being a well-known mark and the plaintiff’s personal right and entitlement to use his personal name.
• The court further observed that the domain name “arunjaitley.com” had been registered in the bad faith. By asking the plaintiff to pay a huge sum of money, the defendant had unfairly attempted to indulge in cybersquatting. Since trademark law protects domain names against cybersquatting, trafficking and trading, the court granted punitive damages and directed the defendant to transfer the domain name to the plaintiff.
• This case, therefore, is a marked departure from the other cybersquatting cases decided in Indian courts in that it makes a specific attempt to punish the rent seeking behaviour of the defendants.

Conclusion

Domain name conflicts have become a growing concern in India, especially with the rise of e-commerce and digital business activities. It is essential for individuals and organizations to understand their legal rights and obligations concerning domain name registration and usage to prevent conflicts and disputes. The Indian government has also taken several measures to regulate domain name disputes such as setting up a dispute resolution policy and establishing a specialized agency to address domain name conflicts.

Author: Chithra Jeyan, A Student at Ramaiah College of Law, Bangalore, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.

[1] (1999) 78 DLT 285.

[2] 1996 PTC(16) 142.

[3] AIR 2004 SC 3540.

[4] (2011) 181 DLT 716.