Delhi HC on trademark protection for domain name

The Delhi High Court, in its recent judgment in Tata Sons Ltd & Anr. v. Arno Palmen& Anr., dealt with

trademark protection for domain names. The suit was instituted by the plaintiffs against the defendants seeking permanent injunction against the defendants from using the trademark/domain name “WWW.TATAINFOTECH.IN” or any other mark/domain name which is identical with or deceptively similar to the plaintiffs’ trademarks - “TATA” and "TATA INFOTECH".

The instant dispute is another instance of cybersquatting. Cybersquatting (also known as domain squatting) is the act of mala fide registering, trafficking in, or using a domain name with the intent to profit from the goodwill of a trademark belonging to someone else. The term is derived from "squatting," which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use.

The Delhi HC, vide Order dated 29.04.2005 granted an ex-parte interim injunction restraining the use or transfer of the impugned domain name. Further, the Court directed the freezing of the impugned domain name. The Court vide Order dated 23.02.2009 also ordered for the initiation of ex-parte proceedings.

 

Contentions

The suit was filed by Tata Sons Ltd (plaintiff no.1) and its subsidiary, Tata Infotech Ltd (plaintiff no. 2). It was submitted that the mark “TATA” is derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It was submitted that “the mark “TATA” has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata group, which is known for high quality of products manufactured and/or services rendered by it under the trademark/name TATA”.

It was also submitted that the House of Tatas comprises over 50 companies which use “TATA” as a key and essential part of their corporate name. Further, plaintiff no. 1 is the registered proprietor of the trademarks pertaining to and/or comprising the word “TATA” in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. It was, therefore, contended that plaintiff no. 1 has the exclusive right in the said trademark. The plaintiff no. 2 submitted that it is a pioneer in the field of information technology and has been using the trade name and service mark “TATA INFOTECH” since the year 1997. It was also submitted that the company enjoys high reputation in the market.

The plaintiffs contended that they came to know about the registration of the domain name www.tatainfotech.in by the defendant on 21 February 2005 when the said defendant sent an email to the plaintiff no. 2 informing them about the registration he held over the impugned domain name. It was also contended that the defendant in the said email had claimed that he had supposedly received an offer for purchase of this domain name for a "large sum of money" and that he wanted to inform the plaintiff about this. The plaintiffs contended that “this clearly showed that the defendant no. 1 had registered the impugned domain name only with a view to make illegal gains out of selling this domain name either to the plaintiffs or to any third party who wished to acquire it to use it in an illegitimate and mala fide manner. And that his also showed that the defendant no. 1 was very well aware of the plaintiff’s rights over the trade name and service mark TATA INFOTECH.”

The impugned mark is identical in parts and deceptively similar as a whole to the plaintiffs’ reputed marks. Further, “if the defendant no. 1 or its transferee starts to use this domain name by resolving it to another website, the chances of a genuine customer of the plaintiffs reaching the defendant’s web page are highly likely, more so because the impugned domain name is identical to the plaintiff’s domain name i.e. www.tatainfotech.com. It is thus contended that anyone using the plaintiff’s marks on the internet can cause tremendous loss and damage to the business of the plaintiff by way of passing off and loss of the prestige and business attached to the mark/name TATA and TATA INFOTECH”.

Judgement

The Court examined the Supreme Court judgment in Satyam Infoway Ltd. v. Sifnet Solutions Pvt. Ltd., (AIR 2004 SC 3540). In the instant case, the apex Court examined whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade marks and be regarded as trade names which are capable of distinguishing the subject of trade or service made available to potential users of the internet.

The Supreme Court held as follows: "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 arrived at a different but similar web site 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 their custom. It is apparent therefore, that a domain name may have all the characteristics of a trademark and could find an action for passing off.”

The Court noted that the domain name www.tatainfotech.in was created in favour of the defendant on 19 February 2005. However, the plaintiff was the prior user of the mark since 1997-98. The email correspondence between the contesting parties conclusively demonstrated that the defendant no. 1 knew about the plaintiff no. 2 being the legitimate owner and user of the trademark “TATA INFOTECH”.  The impugned domain name was registered deliberately in bad faith with the objective of selling the domain name to the plaintiffs or taking unfair advantage of the distinctive character and repute of the plaintiff’s trademark.

The Court restrained the defendant, its employees, agents, assigns and all others acting on behalf of the defendant from conducting any business or dealing in any manner including using domain name www.tatainfotech.in or the word “TATA” or any name comprising of the same or deceptively/confusingly similar to it regarding any goods, services or domain. The defendant no. 2, Key-Systems GmBH, was directed to cancel the registration of the impugned domain name in favor of the defendant.

Comments

The judgment is in consonance with the various judgments delivered by HCs and SC.  In a judgment concerning arunjaitley.com, the Delhi HC held that domain names are protected under the law of passing off and personal names constituting domain names will be granted similar protection [covered here]. Further, in Times Internet v. M/s Belize Domian Whois Service Ltd & Others, the Delhi High Court held that “indiatimes” which was the essential component of the domain name, was used by the defendant without any explanation. This could confuse an ordinary netizen and could result in associating defendant's portal with that of the plaintiff company. The dispute was held to be a clear case of “passing off” [covered here].