CHAPTER 5: RESOLUTION OF DOMAIN NAME-TRADEMARK DISPUTES IN INDIA

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1 CHAPTER 5: RESOLUTION OF DOMAIN NAME-TRADEMARK DISPUTES IN INDIA 223

2 5.1 Introduction The influence of the Internet and the World Wide Web has not spared the developing country like India. With the expansion of the global trade, the online medium is increasingly used for manifold commercial uses. 1 The developing countries are experiencing a greater impact of Internet misuses, since on the one hand, their consumers are misled and on the other hand, their traders are losing their trademark / domain name rights as against the big players of the developed world. Though the Indian economy had a boom with the e-commerce activities, the relative advantage gained by India is not free from burns. With the realization of the commercial potential of the Internet, the disputes on the domain names in India have come to the forefront in the past two decades. India, unlike the United States (US) has no separate law to deal with the domain name disputes. Though India has passed Information Technology Act in 2000, the Act is silent on the domain name disputes. To start with, the Trade Marks Act 1999 (or its predecessor, Trade and Merchandise Marks Act 1958) was the only legislation in India to deal with 1 V. K. Unni, Trade Marks and the Emerging Concepts of Cyber Property Rights, (Kolkata: Eastern Law House, 2002) p. 5 (Foreword by Cyriae Joseph). 224

3 the domain name disputes. The parties had no option but to proceed to the courts under the Trade Mark Act against the unlawful domain name registrations, which have infringed the trademarks. However, with the drafting of the Uniform Domain Name Dispute Resolution Policy (UDRP), the parties started to avail the services of the international forums under the UDRP. Finally, the last stage of development in the domain name dispute resolution in India happened in the form of adoption of.in Domain Name Dispute Resolution Policy (INDRP) by the.in Registry in India. Thus, the persons aggrieved by the wrongful use of the domain names in India have three options to settle their disputes. First, a court litigation under the (Indian) Trade Mark Act. Second, moving to the dispute resolution service providers (panels) under the UDRP. Third, in case of registration of the domain name under the IN Registry, resort to the INDRP to invoke the process of arbitration. The purpose of this chapter is to analyse the working of the above three parallel domain name dispute resolution systems, which are available to the Indian litigants. The primary focus is on the judicial responses in India relating to the more expansive interpretation of the trademark laws to 225

4 accommodate the domain name disputes. The general trends in approaching the UDRP panels and Arbitration under INDRP are also probed into. 5.2 Dealing under the Traditional Trademark Law In the absence of a separate legislation, the domain name disputes are dealt under the traditional trademark law by the Indian judiciary. 2 Since India, being a common law country, recognizes both the trademark infringement actions 3 and passing off actions 4, the Courts have decided the cases under both provisions of the Trade Mark Act In the cases of trademark infringements on the Internet to deceive the public in India, the courts have exercised the jurisdiction to protect the trademark rights and also to prevent the public deception. However, such an exercise of 2 In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. AIR 2004 SC 3540, the honorable Supreme Court has observed that As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off. 3 Sec. 29, Trade Mark Act Sec. 27(2), Ibid. 226

5 jurisdiction is often confined to the cases involving the parties situated in India or carrying on trade in India in respect of same products Beginning with the Yahoo Inc. The initial trend in the domain name litigation in India reveals the significant reliance on the passing off actions, since most of the trademarks were not registered. 6 The first and the most significant case in this regard is Yahoo Inc. v. Akash Arora and Another 7. In this case, the plaintiff moved to the Delhi High Court against the defendants seeking a permanent injunction to restrain the defendants from operating business under the trademark / domain name yahooindia.com or under any other mark / domain name, which is deceptively similar to the plaintiff s trademark Yahoo!. The plaintiff contended that it is the owner of the trademark Yahoo! and the domain name yahoo.com, which are well known worldwide and acquired distinctive reputation and goodwill. By adopting the domain name 5 Rahul Matthan, The Law Relating to Computers and the Internet, (New Delhi: Butterworths, 2000) p A. K. Chakravarti and R. C. Tripathi, Exploring Possibilities in e-enabled Legal Profession in IPR, in Kamlesh N. Agarwala and Murli D. Tiwari (ed.s), IT and Indian Legal System, (New Delhi: Mac Millan, 2002) pp at p PTC (19)

6 yahooindia.com and rendering the services similar to the plaintiff, the defendants are argued to be passing off the services in the name of plaintiff. According to the plaintiff, its domain name is also entitled to equal protection against the passing off like in the case of a trademark. The plaintiff submitted that the defendants domain name is identical or deceptively similar to that of its trademark and domain name. Since the web users are accustomed to the habit of typing name).com or name).com while searching for the unknown website, there is every possibility of people searching for India-specific content in the Yahoo! site to type yahooindia.com and thereby reaching the defendants website unintentionally. The defendants are also involved in rendering services similar to the plaintiff and as such, the dishonesty is argued to be apparent on the face of their activities. The defendants refuted the above arguments on several counts. First, Sections 27(2) and 29 of the Trade and Merchandise Marks Act relating to the passing off are argued to be confined to trade in goods, and the present case, which involves trade in services, is not covered within the ambit of those provisions. Similarly, an infringement action is also not 8 This case was under the 1958 Act, since the 1999 Act was still in the making. 228

7 maintainable, since the plaintiff has not registered its trademark. Second, the Yahoo! is not invented, but a general dictionary word, and therefore, the plaintiff cannot appropriate it as a domain name or trademark. It was also argued that Yahoo! could not acquire any distinctiveness or reputation, since it is a common dictionary word. Third, the defendants argued that there is no deception caused to the public by their use of yahooindia.com. This is because, the Internet users are the sophisticated and technically educated persons, who cannot mistakenly reach the defendants website while in search of the plaintiff. In addition, the two domain names are distinguished by the word India, and also the defendants highlighted the disclaimer in their website, which, according to them, would remove the possibility of any deception. The Court rejected all the contentions of the defendants. It started with the observation that the passing off actions under the Trade and Merchandise Marks Act applies to goods as well as services, since it is based on the common law jurisprudence, which allowed actions relating to trade in services. In arriving at this conclusion the Court referred to Monetary Overseas v. Montari Industries Ltd. 9, Neev Investments and PTC

8 Trading Pvt. Ltd. v. Sasia Express Couriers 10, Ellora Industries v. Banarsi Dass and Others 11, Reddaway v. Banham 12 and Marks & Spencer v. Onein-a-Million 13. The High Court found that the plaintiff had a global presence under the domain name / trade name Yahoo!. The domain name yahoo.com was registered by the plaintiff in 1995 and its trademark was registered or pending registration in 69 countries. There was also a pending application for registration in India. These factors coupled with wide popularity of the plaintiff are indicative of the distinctiveness or goodwill acquired by the domain name / trade name Yahoo!. Thus, the Court observed that the dictionary words can acquire the distinctiveness or uniqueness over the period of time, and they are entitled to protection under the laws relating to passing off. The Court referred to the Supreme Court s verdict in N. R. Dongre v. Whirlpool Corporation 14, wherein the Whirlpool was protected PTC PTC A.C FSR PTC

9 as a distinctive mark regarding the washing machines, though it is a dictionary word. The third limb of the defendants argument that the Internet users are the sophisticated consumers and hence, there is no possibility of consumer confusion was also disapproved by the Court. According to the Court, even though the individual may be a sophisticated user of Internet, he may be an unsophisticated consumer of information. Therefore, the possibility of such consumers perceiving the defendants website, which provides almost similar type of information, as that of the plaintiff cannot be ruled out. While rejecting the defence of disclaimer in the defendants website, the Court held that due to the nature of the Internet, the defendants misappropriation of plaintiff s mark cannot be remedied by a mere disclaimer. The Court also found that the use of the word India by the defendants has not distinguished their domain name from that of the plaintiff s trademark / domain name. The Court relied on Ruston and Hornby Ltd. v. Zamindara Engineering Co. 15, wherein the Supreme Court has clearly stated that if there be close resemblance between the two marks 15 AIR 1970 S.C

10 and they are deceptively similar to each other, the word India added to one mark is of no consequence. The Court further found that the plaintiff was also using regional names after Yahoo! like yahoo.ca (for Canada) and yahoo.fr (for France), and therefore, there is every possibility of people believing yahooindia as part of Yahoo marks / domain names leading to the consumer confusion. In light of these factors, the Court granted injunction against the defendants from using the said trademark / domain name or a variant of them. The ratio of Yahoo Inc. was subsequently followed in several cases before the Indian judiciary, cementing the position of trademark law as the basis of domain name litigations. Rediff Communications Ltd. v. Cyber booth and Another 16 immediately followed the Yahoo case. In this case, the plaintiff was carrying on the business of communication and rendering services through their registered domain name rediff.com. Upon the defendants registration of radiff.com, the plaintiff filed a suit for permanent injunction restraining the defendants from using radiff.com and any mark/domain name, which is deceptively similar to that of the plaintiff. 16 AIR 2000 Bom

11 The plaintiff s contention was that in registering radiff.com, the defendants clearly intended to cause the members of public to believe that the defendants were associated with the plaintiff and / or were part of the Rediffusion group. This, according to plaintiff, is done deliberately to pass off the defendants business, goods and services as that of the plaintiff. Thus, though there was no registration of the trademark by the plaintiff, the passing off was invoked as the basis for action against the defendants. In reply, the defendants argued the absence of similarity between rediff and radiff on the basis of dissimilarity in the services rendered, and look and feel of the websites. While the plaintiff s website was like a web newspaper and provided various services from news to shopping, the defendants website provided hypertext links to its advertisers websites. The users of the website, being educated persons and skilled in the use of computers, were argued to be not deceived by the defendants website and thus, there is no possibility of confusion. The defendants also argued that there is no evidence of rediff being well-known, which is an essential element of passing off action. In addition, the radiff was contended to be coined by taking the first three letters of the word radical and first letters 233

12 of words information, future and free, which they are genuinely entitled. The Bombay High Court began its analysis by recapitulating the well-established principles of passing off. Lord Diplock s observation in the famous Advocates case 17 outlines the following elements of passing off. (1) mis-representation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so... The Court also relied on the Indian jurisprudence of passing off evidenced in its Division Bench s verdict in Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat 18. The relevant portion of the decision reads as follows. 17 Erven Warnink v. Townend, 1980 R.P.C PTC

13 ...that the crux of the passing off action lies in actual or possible or probable deception. The plaintiff necessarily has to establish reputation and goodwill. In quia timet action he must also show the probability of the plaintiffs suffering damage either in trade or to his goodwill and reputation. Deception may be of several kinds i.e. that the public may think that the goods manufactured by the defendants are in fact manufactured by the plaintiffs.... In light of the above principles, the High Court looked into the factual circumstances in the present case and found it to be a fit case of passing off. To start with, the Court found that the kind of services rendered by the plaintiff and the defendants are quite similar, since both offered the facility of sale of books, music cassettes, compact discs and flowers. In addition, both offered chat lines and cricket opinion poll. The business of the plaintiff is also well known with its group s turnover being more than Rs. 250 crores. The Court found that the two marks/domain names in question, rediff and radiff are almost similar and there is every possibility of the Internet users being confused and deceived. Though the web users are educated, the possibility of them accessing the defendants website 235

14 believing it to be that of plaintiff cannot be ruled out especially in the light of striking similarity between the two domain names in question. Moreover, a first time visitor cannot possibly distinguish one website from another, neither of which he has visited earlier. The contention that the word radiff was derived from four words mentioned above was rejected by the Court stating that it is a fictitious creation to answer the claim of the plaintiff. Thus, the Court was satisfied that the object of registering the domain name radiff.com was to trade upon the reputation of the plaintiff and nothing else. It went on to observe that once the intention to deceive is established, the Court will not make further enquiry about likelihood of confusion. Lastly, the Court noted that from May 1998 to January 1999, the same webpage along with the above-mentioned services were offered by the defendants on the website indianservice.com. The said website was still continuing with the same kind of services at the time of the dispute. This, according to the Court, is the clear indicator of the fact that the defendants have adopted the domain name radiff.com with the intention to trade on the plaintiff s reputation. The Court granted the injunction against the defendants, and the subsequent special leave petition before the Supreme Court was also dismissed. 236

15 The trend in upholding the rights of the trademark holders continued with a number of subsequent cases, especially before Delhi High Court. In Titan Industries Ltd. v. Prashant Koorapati 19, the plaintiff s trademark tanishq was protected with an order restraining the defendant from registering or using the said trademark or its variant on the Internet or otherwise. In Dr. Reddy s Laboratories Limited v. Manu Kosuri and Another 20, the defendant s domain name drreddyslab.com was found by the Delhi High Court to be deceptively similar to the plaintiff s well-known trademark, Dr. Reddy s. While upholding the passing off action, the Court issued a permanent injunction against the defendant. In Tata Sons Limited v. Mr. Manu Kishori & Others 21, the defendants registration of series of domain names with tata as a part of each of them was held to be the infringement of trademark rights of the plaintiffs, who were the registered proprietors of trademark Tata since 1917 and were also well-known in various business activities. The attempts 19 See Tan Tee Jim, Trade Mark Use on the Internet, available at < Last visited, 18 December PTC PTC

16 to misappropriate the Tata s business reputation by others continued despite the above decision, leading to several litigations not only in Indian courts but also before UDRP panels. 22 In Acqua Minerals Ltd. v. Pramod Borse 23, the plaintiff s registered trademark Bisleri was protected with an injunction against the defendant from using the domain name bisleri.com. In Info Edge India Pvt. Ltd. & Another v. Shailesh Gupta & Another 24, the plaintiff s domain name naukri.com was conferred with the trademark protection, since it has acquired the status of a trademark with the popularity. Though Naukri is a generic Hindi word, it was held to be bestowed with secondary meaning over the period of time. The Court ordered the defendants to refrain from using their deceptively similar domain name, naukari.com. 22 See, for example, Tata Sons Limited v. Ghassan Yacoub and Others, 2004 (29) PTC 522 Del., wherein the Court ordered the transfer of tatagroup.com to the plaintiff. See also Tata Sons Ltd. and Another v. Fashion Id Ltd., 117 (2005) DLT 748, wherein the Court decreed the transfer of tatainfotecheducation.com to the plaintiff PTC PTC

17 In Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited 25, the Japanese subsidiary, Casio India, could get an order of injunction against the defendants from using Similarly, in Penbooks Pvt. Ltd. v. Padmraj 26, the defendant s registration of was held to be an act of cybersquatting and an order of restraint was imposed on the defendant. Two significant cases, wherein the trend of favouring the trademark rights was not followed, during early twenty-first century are Online India Capital Co. Pvt. Ltd. v. Dimensions Corporate 27 and Manish Vij and Others v. Indra Chugh and Others 28. In Online India Capital case, the plaintiffs had as their registered domain name and were rendering services relating to mutual funds. They contended that the registration of by the defendant is done mischievously and fraudulently to deceive the public (2003) DLT (29) PTC VAD Delhi AIR 2002 Delhi

18 The defendant contended that the term mutual fund is a descriptive/generic word and cannot posses trademark right. The defendant also brought forward the facts that the plaintiffs were new company with less than one year existence and defendant had more than six years of existence with an enviable track record in corporate finance and allied services. The plaintiff s domain name was also registered just six to seven months prior to the defendants. In light of all the above factors, the Court held that the plaintiffs failed to make a prima facie case to grant injunction against the defendant. The Court emphasised on the descriptive nature of the term, and held that it has not acquired secondary meaning to grant any trademark protection. Similarly, in Manish Vij case, the plaintiffs requested permanent injunction against the defendants from using which, according to them, violates their rights in The Court initially granted the ex-parte injunction in favour of the plaintiffs, but the defendants applied for the revocation of injunction on the ground that kabadibazaar is a generic term. In Hindi, Kabadi is a person who takes away unwanted goods from the house, and Bazaar is the place where the trading takes place. Thus, kabadibazaar is not a newly coined word; 240

19 rather it means the market place of second hand goods. The Court finally agreed with the defendants contention and concluded that the said domain name is descriptive in nature and there is no evidence of it acquiring any secondary meaning. Hence, the ex-parte injunction against the defendants was revoked Apex Court s Verdict in Satyam Infoway Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. 29 is the first domain name case before the Supreme Court of India. The appellant in this case had registered several domain names including sifynet.com, sifymall.com, sifyrealestate.com etc. The respondent started the business of Internet marketing via siffynet.net and siffynet.com, which were registered by it in 2001 and 2002 respectively. The appellant moved to the City Civil Court against the respondent on the ground that the respondent is passing off the business and services under its name. In support of this contention, the appellant also claimed wide reputation and goodwill in the name Sify, which it contends to have invented by using the elements of its corporate name Satyam Infoway. 29 Supra note

20 The City Civil Court held in favour of the appellant by observing that the respondent s domain names are deceptively similar to that of the appellant s domain names and this would result in confusion in the minds of the public. The respondent filed an appeal to the High Court, which reversed the decision of the City Civil Court. In upholding the respondent s contentions, the High Court held that merely because the appellant had started the business first, one cannot decide in its favour without considering the balance of convenience. The High Court doubted the appellant s acquisition of reputation or goodwill in Sify, and went on to observe that the respondent was doing an entirely different business from that of the appellant. Hence, there is no possibility of customer confusion. The High Court concluded with its observation on the balance of convenience. It found that the respondent had already made huge investment in its business and enrolled about 50,000 members by then. Therefore, the respondent would be subject to great hardship and inconvenience as well as irreparable injury, if the injunction is granted against it. However, according to the High Court, the appellant had a separate trade name in the form of Satyam Infoway and as such, no injury or hardship would be caused to it in the absence of injunction. 242

21 The appellant preferred an appeal to the Supreme Court against the High Court s verdict. The respondent put forward many arguments before the Supreme Court. First, the respondent argued that the domain name is merely address in the Internet and registration of domain name does not confer any property right like trademarks. Therefore, the domain names would not come within the definition of trade mark under the (Indian) Trade Marks Act Second, there is no goodwill attached to the appellant in the name Sify. Third, the word Siffy, according to the respondent, is derived from the combination of first letter of its five promoters, namely Saleem, Ibrahim, Fazal, Fareed and Yusuf. Thus, the respondent claims its genuine use coupled with the argument that it never knew about the appellant s trade name Sify. Lastly, the respondent says that the confusion is unlikely, since their sphere of operation is entirely different from that of the appellant. The Supreme Court rejected each of the above arguments of the respondent on the following grounds. A preliminary and the most crucial issue addressed by the Supreme Court in this case is the possibility of granting protection to the domain names under the Trade Mark Act. The 243

22 Court looked into the definitions of trade mark 30, mark 31, name, 32 goods 33 and services 34 under the Act to address the question. By analysing cumulatively, the Supreme Court observed that the domain names, with the increase in online commercial activities, are used as business identifiers on Internet. Each domain name owner in the commercial field provides information/services, which are associated with such domain name. Thus, the domain name may pertain to provision of services as stipulated under Section 2(z) of the Trade Mark Act. Since the 30 Sec. 2(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. 31 Sec. 2(m): Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. 32 Sec. 2(k): Name includes any abbreviation of a name. 33 Sec. 2(j): Goods means anything which is the subject of trade or manufacture. 34 Sec. 2(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. 244

23 domain names may have the trappings of trademarks, the Supreme Court observed that the legal norms applicable to the trademarks are squarely applicable to domain names. Having said this, the Supreme Court started to probe into the passing off claim. It first observed that plaintiff in a case need not prove the long use to establish the reputation or goodwill, rather what is crucial for such proof is the volume of sales and extent of advertisement. In the present case, the appellant had brought before the Court the press clipping of articles/newspapers in which the appellant has been referred to as Sify and also the evidence of it being listed as the first Indian Internet company with NASDAQ 35 under the trade name Sify, which according to the Supreme Court were sufficient to establish the goodwill or reputation claimed by the appellant in the trade name Sify. The two words in question, Sify and Siffy, are both visually and phonetically similar, and the addition of net to Siffy does not make much change in the position. The contention of the respondent that Siffy was derived from the combination of first letter of its promoters was rejected by the Supreme Court in the light of suspicious circumstances. The facts 35 Appellant was listed in 1999 and it was also published in several newspapers. 245

24 revealed that the original written statement included only four names of the partners and the fifth was added in the counter affidavit before the Supreme Court. In addition, the domain name was initially registered in the name of another person by name C. V. Kumar, who apparently was described as a former partner. Thus, the Court found that the respondent s contention had no merit and was a post facto argument to defend itself. It also refused to take the argument that the respondent did not know the presence of appellant as Sify. On the contention that the respondent s business is nothing to do with the appellant s business, the Court on the one hand found some overlap in the businesses. The respondent s website advertises itself as the provider of inter alia software solution, integrating and management solutions and software development, which were also done by the appellant. On the other hand, the Supreme Court observed that the domain name is accessible by all Internet users and need to maintain exclusivity is crucial for all the business enterprises. Existence of a deceptively similar domain name may not only lead to the consumer confusion but also act as a source of receiving unsought for services. 246

25 Finally, on the balance of convenience, the Supreme Court observes that the nature of business in this case requires the exclusive identity via domain name. Therefore, either Sify or Siffy should exist, and not both. In light of this, the appellant s claim must prevail, since it has placed sufficient evidence of prior use as well as the public perception of Sify being associated with it. The High Court s finding that there would not be any prejudice to the appellant in the absence of injunction due to the existence of its another name was rejected, given the absence of bonafide concurrent use by the respondent. The Court concluded that the respondent was trying to encash the reputation of the appellant as an Internet service provider. Therefore, the injunction was granted against the respondent Developments after Satyam Infoway Further development in the Indian jurisprudence relating to domain name-trademark conflicts can be seen in Times Internet Ltd. v. Just Flowers and Another 36 and Super Cassettes Industries Ltd. v. Mr. Wang Zhi Zhu Ce Yong Hu 37. In both the cases, the Delhi High Court awarded the damages to 36 MANU/DE/2909/ CS(OS) No. 769/2004, available at < Last visited, 18 December

26 the plaintiffs. In Times Internet Ltd., the plaintiff s mark indiatimes and domain name indiatimes.com were hijacked by the defendants with the subsequent registration and use. Though the plaintiff did not lead evidence with regard to extent of damage incurred by the defendants use, the Court went on to award the punitive damages to the extent of Rs. 3 lakhs in favour of the plaintiff. In Super Cassettes Industries Ltd., the plaintiff was carrying on its business under the corporate name Super Cassettes, since its incorporation in In 2003, the defendants registered the domain name supercassetes.com to carry on the business of films, which was also the plaintiff s business. The evidences indicated that there was a monetary loss to the plaintiff to the tune of at least Rs. 25 lakhs owing to the impugned website coupled with the loss of goodwill and reputation in the trade name. The above facts and the evidence as to the defendants practice of registering the domain names with the trademarks/trade names of the successful business enterprises were sufficient enough to hold the defendants guilty, and a permanent injunction was imposed against them. In addition, since the acts of defendants were against the corporate philosophy 248

27 and image of the plaintiff, the judge awarded compensation of Rs. 5 lakhs against the defendants. The next significant case in the domain name jurisprudence of India is Rolex Sa v. Alex Jewellery Pvt. Ltd. and Others 38. The plaintiff in this case was a Switzerland company dealing with the premium quality watches and related instruments. It had first registered the trademark Rolex in 1908 at Switzerland and also had registered subsequently in 140 jurisdictions across the world, including India. The defendants were Bombay and Delhi based companies, who began the business of artificial jewellery under the mark Rolex. They also registered the domain name rolexjewelleryhouse.com in Having aggrieved by this, the plaintiff brought an action against the defendants for their trademark infringement. The defendants put forward the following defences in the case. First, the suit is argued to be barred by limitation, since the plaintiff was aware of the use of Rolex by the defendants at least from This was evident from the fact that the defendants application for the trademark registration of Rolex was opposed by the plaintiff long back. Second, the inaction of the plaintiff for such a long period has allowed the defendants to develop 38 MANU/DE/0796/

28 their business in and around Rolex as trademark. Therefore, the defendants invoked principle of estoppel coupled with laches and acquiescence against the plaintiff. Third, the business of the plaintiff is entirely different from that of the defendant, since the former is carrying on the business in watches and the latter is dealing with artificial jewellery. Due to this, the defendants argued, there is no possibility of consumer confusion or deception. Fourth, the Rolex is a common word with more than 25 parties having registration for different classes of goods from 1953 onwards. In addition, there are also a large number other users of the mark Rolex in the course of trade of different goods, which is reflected in the telephone directory listing 150 such parties. The defendants were of the view that the mark of the plaintiff is not distinctive in the presence of many registrations and users, and the reputation, if any, in the mark was diluted with the inaction of plaintiff. Fifth, the defendants contended that they have acquired reputation in trademark with an annual turnover ranging from 2 crores to 4 crores, of which 70% to 80% of sales are affected through the trademark Rolex. The defendants also contended the ignorance about the famousness of the plaintiff s mark. 250

29 The Court rejected all the contentions of the defendants. Most significantly, the Court held that the infringement is a continuous cause of action and the defence of Limitation Act is not available. The estoppel argument was found baseless, since there cannot be any estoppel against statute. The defence of acquiescence or laches is available only when there is any evidence of positive act of encouragement to do something by the plaintiff. The Court not only found the absence of such positive act by the plaintiff, but also observed that the opposition filed by the plaintiff for trademark registration by the defendants is the evidence of plaintiff challenging the act of defendants. The Court also observed a close connection between the watches and jewellery, especially in the light of changing trends. The modern day use of watch is not confined to know the time, but extends as an ornament. Thus, the expensive brands of watches are also sold at the retail outlets of jewellers. Hence, there is every possibility of consumer confusion by the defendants use of the mark Rolex. The Court further went on to hold that the use of the mark Rolex by many others is completely immaterial in the present case. Such use cannot be the basis for holding the loss of distinctiveness of the mark in this case. Merely the fact that the plaintiff did 251

30 not take any action against others is not a ground to deny relief to it in the present case. Finally, the Court rejected the contention of ignorance by the defendants. The facts clearly indicated a more than 90 years of prior use of the mark by the plaintiff, which should have been known to the defendants. Even if at the time of commencing the use of the mark, the defendants did not know the inherent risk in using the mark, at least, immediately after the opposition by the plaintiff for the defendants registration of trademark, they must have become aware of the risk. Had the intention been bona fide, the defendants would have immediately changed their name. In the absence of such bona fide act, the defendants have taken the unfair advantage of reputation and the goodwill of the plaintiff s mark, and they cannot contend any reputation or goodwill earned out of their mala fide act. Therefore, the Court held that the defendants are neither entitled to use the mark Rolex nor the domain name rolexjewelleryhouse.com. The passing off actions outlined in the above cases is advantageous to the plaintiff, since it is maintainable against even the registered owner of the trademark. Unlike in case of UDRP and INDRP proceedings, there is no requirement of proving the bad faith of the defendant. Even if the domain 252

31 name is registered in good faith or innocently, the trademark owner has got remedies against the registrant. 39 Therefore, the protection under the Trade Mark Act is stronger than under other mechanisms. However, the geographical limitation of the Trade Mark Act is a concern for the protection of the domain names, which require the world wide exclusivity Resorts to UDRP The national limitations of the trademark laws coupled with the delays in the court litigations have motivated the development of international dispute resolution mechanism in the form of UDRP. The delays in the Indian courts and the cost involved in the litigation are always a matter of general concern among the Indian litigants. In order to overcome these problems, a growing number of Indian companies are proceeding under the UDRP to settle their domain name disputes. The general trend in 39 Praveen Dalal, Securing Domain Name Protection in India, available at < Last visited, 05 December Protection of Domain Name by Indian Judiciary, available at < Last visited, 05 December

32 India shows that the WIPO Arbitration and Mediation Centre is the most preferred forum under the UDRP. In Bennett Coleman & Co. Ltd. v. Steven S. Lalwani 41 and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company 42, the complainants had to move to the WIPO Panel, since the respondents were US residents. This is one of the cases wherein the WIPO Panel has consolidated the complaints in accordance with Paragraph 4(f) of the UDRP. The complainants were the well-known publisher of The Economic Times and The Times of India, both of which were their registered trademarks in India. They had also registered domain names in the form of economictimes.com and timesofindia.com for the electronic publication of their respective newspapers. Upon the registration of theeconomictimes.com by the respondent in the first case and thetimesofindia.com by the respondent in the second case, the complainants sought remedy under the UDRP against the bad faith registrations. The respondents contentions of absence of trademark registration in US and the absence of likelihood of 41 WIPO Case No. D (11 March 2000). 42 WIPO Case No. D (11 March 2000). 254

33 confusion were rejected by the WIPO Panel, and the respondents were directed to transfer the domain names to the complainants. In Philips India Ltd. v. Proton Engineers 43, the complainant, an electronics giant in India, had engaged a Pune-based company (the respondent) for developing a website on behalf of its electronics division. However, the respondent registered the domain name philipsindia.com in its own name instead of complainant s name. Subsequently, the complainant assigned the work of developing a website for the entire company to Rediffusion Communications and asked the respondent to stop working on the website of electronics division. Upon the rejection of the respondent, the complainant approached the National Arbitration Forum under the UDRP. The panellists held in favour of the complainant and ordered the respondent to transfer the domain name in favour of Philips India. In Tata Sons Ltd. v. The Advanced Information Technology Association 44, the complainant challenged the registration of tata.org by the respondent on the ground of bad faith registration. The WIPO Panel relied on the earlier decisions of the Indian courts involving the complainant to 43 National Arbitration Forum File No. FA# (07 March 2000). 44 WIPO Case No. D (4 April 2000). 255

34 find out the popularity of the name Tata. It also found that Tata is a rare surname with no obvious meaning, and as such, it is entitled to high degree of protection. The respondent belonged to the same city of complainant and obviously was aware of the reputation in the name Tata. In addition, the respondent was merely hoarding the domain name and did not activate it. In light of these factors the bad faith was proved, and the respondent was asked to transfer the domain name to the complainant. In Mahindra & Mahindra Limited v. Neoplanet Solutions 45, a wellknown business house in India, Mahindra and Mahindra, has approached the WIPO Panel to get back the domain name mahindra.com. The respondent had registered the said domain name and transferred his original address in India to one in the US, presumably to escape the jurisdiction of the Indian Courts. Upon the receipt of notice from WIPO, the respondent added a page to the website welcoming web users to the official website of Dr. Mahindra and describing his fight against poverty. In addition, the respondent contended that the Network Solutions Inc. (NSI) had earlier recognised his complete rights in the said domain name. While rejecting these arguments, the WIPO Panel observed that the NSI had only the power 45 WIPO Case No. D (02 June 2000). 256

35 to keep on hold a disputed domain name before the entry into force of the UDRP. Thus, the earlier judgment of NSI had not conferred any conclusive rights to the respondent, and since the domain name in this case is identical to the trademark of the complainant, the respondent was asked to transfer the domain name to the complainant. In Oberoi Hotels Pvt. Ltd. v. Arun Jose 46, the complainant was the established business group owning several hotels in India under the names The Oberoi and The Trident. Respondent registered the domain name tridenthotels.com and did not use it for a long time. The failure of the respondent to use the domain name was perceived by the Panel as the evidence of both bad faith registration and use. Further the respondent s contention that he was planning to start hotel business in the near future went against him, as the Panel concluded that the respondent was trying to pass off his goods and services as those of the complainant s. In Maruti Udyog Ltd. v. Maruti Infotech 47, the complainant, a wellknown car manufacturer, sought for the transfer of the domain name maruti.org, which was registered by the respondent. The complainant 46 WIPO Case No. D (07 June 2000). 47 WIPO Case No. D (26 July 2000). 257

36 established the fact that a person of average intelligence and imperfect recollection would be confused with the domain name as something relating to the complainant. This consumer deception would damage the goodwill associated with their trademark maruti. In addition, it was proved that the respondent sought to sell the domain name for a valuable consideration. Thus, the panellists found an intent on the part of the respondent to make unmerited profit from the registration of the domain name. Subsequent to the above discussed initial decisions in favour of the trademark holders, hundreds of Indian cases have approached the UDRP panels in the last decade. Unfortunately, the trend in the recent past unveils differing interpretations by the UDRP panels resulting in the unpredictability of decisions. Some of the significant (may also be controversial) decisions in the recent past are as follows. In Volunteering Travel Solutions Pvt. Ltd. v. Puran Tours 48, the respondent s registration of volunteeringindia.org was challenged by the complainant as violation of its common law right of trademarks and also confusingly similar to its own domain name volunteeringindia.com. The complainant produced the income tax returns, newspaper write-ups and 48 WIPO Case No. D (04 July 2011). 258

37 testimonials from its customers to establish the common law trademark rights. The respondent countered the complainant s claim on the ground of absence of trademark rights of the complainant. According to him, the word volunteering is descriptive and India is geographic name, and the combination of two cannot grant any exclusive right in the absence of secondary meaning, which is not attained in this case. Moreover, the respondent s domain name was registered three year prior to that of the complainant, and therefore, it is argued to be a case of reverse domain name hijacking. The Panel observed that in the cases involving descriptive words, a greater degree of proof is required, and thus, the onus on the complainant in establishing the rights acquired through the secondary meaning is proportionately higher. The inherently weak mark of the complainant in the present case required a higher standard of proof, which according to the Panel is not established by the documents submitted by the complainant. But again, the Panel found that the respondent s claim of bad faith litigation was also not proved sufficiently with the evidences. Hence, the complaint was denied, but no finding on the reverse domain name hijacking was made by the Panel. 259

38 One more significant controversy involved in this case was regarding the acceptance of the unsolicited supplemental filings from the parties. Though the supplemental filings of the parties are not generally accepted under the UDRP, the general trend shows that the Panel has the discretion to accept or reject them based on the facts and circumstances. 49 In the present case, the complainant filed the supplemental submissions on the ground of respondent s forgery and fabrication of the document relating to the contended prior registration, and also about the possible trademark rights in the common dictionary words. Respondent submitted the supplemental filings refuting both limbs of complainant s claims in the supplemental filings. However, the Panel rejected to entertain the supplemental submissions on the ground that the parties had enough opportunity to make those submissions in their initial submissions. It also held that the forgery claims are not entertained under the UDRP proceedings. 49 See Delikomat Betriebsverpflegung Gesellschaft m.b.h. v. Alexander Lehner, WIPO Case No. D (20 February 2002); See also Can I Do Better Internet Corp. v. Blastapplications, WIPO Case No. D (08 March 2011). 260

39 The Tata Sons Ltd. v. Tata Massage 50 is an instance of conflicting decisions by the municipal court and the UDRP Panel due to the possibility of parallel litigations. In this case, the complainant filed a UDRP complaint and then proceeded with a court case at Delhi High Court challenging the registration of tatamassage.com by the respondent as violation of its trademark rights in Tata. The High Court passed an order of restraint against the respondent, which was a US company. Before the WIPO Panel, the complainant, a well-known business enterprise in India and across the world, argued that they have an established business presence in US along with fourteen registered trademarks in US featuring Tata as part of them. Further, they also carryon business in massage services through an associated company by name Jiva Spas, which categorically state that they are a TATA Enterprise. In light of this, the complainant s contention was that the respondent had registered the domain name in bad faith to profit from the good will of the complainant. While analysing the three requirements of the UDRP to win the case, the Panel, though controversially, observed that the second requirement 50 WIPO Case No. D (04 March 2014). 261

40 relating to the absence of respondent s rights or legitimate interests in the domain name was not established by the complainant. For this, it heavily relies on the assertions made by the respondent that his wife is commonly known amongst her family and friends as Tata, which prompted him to use impugned domain name. It is interesting to note, the Panel observes that in administrative proceedings of this kind, a panel does not have the burden nor the benefit of cross-examination to test the veracity of such claims. Even so, the panel is not of course bound to accept the assertions of either party uncritically. But, then it proceeds with the analysis of the media reports and interviews, business of the respondent, absence of complainant s registration of trademark in the US on the massage services and insufficient nexus between the Jiva Spas and the complainant. However, in the course of discussion, the Panel fails to ascertain the veracity of the main contention of the respondent relating to the nickname of his wife. Thus, the Panel ends up with a decision against the complainant. In WIPRO Ltd. v. Igarashi, Katsuhisa 51, the Japanese respondent registered the domain name wiprocorporate.com in The complainant, 51 WIPO Case No. D (25 February 2013). 262

41 though well-known and was in existence world over much before (including in Japan), brought the complainant only in Thus, despite this is a simple case of domain name misuse, a complicated issue of delay in bringing the complaint was before the Panel to address. The Panel, while addressing this issue, made an initial remark that the delay, in itself, is not a reason to deny the complaint. However, a long delay of twelve years may be construed as complainant s passive consent for using his mark in respondent s domain name. But again, in the present case, the Panel held in favour of the complainant on the basis of respondent s registration of many other domain names relating to other companies. The Panel found the conduct of respondent reflecting his knowledge of complainant. Similarly, in Surya Roshni Ltd. v. tq6 Inc., Domain Registration Dept. 52, the respondent s contention of complainant s acquiescence due to twelve years lapse after the registration of domain name was rejected by the Panel, and he was directed to transfer the domain name suryaroshni.com to the complainant. However, in Reliance Telecom Ltd. v. Domains ByProxy.com and Sukhraj Randhawa 53, the sixteen years delay in filing the 52 WIPO Case No. D (16 August 2013). 53 WIPO Case No. D (08 October 2013). 263