With close to 350 million users, India has emerged as being the country with the second highest number of internet users in the world.
It comes as little surprise amid such figures that cybersquatting has been on the rise across the nation, and over the last decade or so, Indian courts have seen their fair share of cases dealing with such practices.
There are currently no laws or statutes in India expressly prohibiting cybersquatting, also known as domain squatting, and as such, disputes surrounding these practices are mainly governed by the principles of “passing off”.
In this regard, the Supreme Court in Satyam Infoway Ltd v Sifynet Solutions [2004(3)AWC 2366 SC] stated that:
“As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names…although the operation of the Trade Marks Act…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.”
Cyber/domain squatting cases
The following is a selection of notable cybersquatting cases that have taken place in India.
Yahoo Inc. v Akash Arora & Anr.
In the high-profile case of Yahoo Inc. v Akash Arora & Anr. (1999 IIAD Delhi 229), a lawsuit was filed by the plaintiff against the defendants seeking a decree of permanent injunction restraining the defendants from operating any business, selling, advertising and/or dealing in any services or goods on the internet or otherwise under the trademark and/or domain name ‘yahooindia.com’, or any other trademark and/or domain name that is identical with or deceptively similar to the plaintiff’s well-known trademark “Yahoo!”.
It was the defendant’s contention that the “Yahoo!” trademark/domain name purportedly belonging to the plaintiff was not at the time registered in India and therefore could not be used as a basis for an action in relation to trademark infringement.
The defendant also argued that the word “Yahoo!” is a general word that is neither unique nor invented and as such, did not possess any element of distinctiveness.
It was further submitted that since the defendants had been using a disclaimer all along, there was no deception and hence no action of passing off could be taken against the defendants.
The Court gave its decision in favour of the plaintiff and granted the injunction against the defendants. It was held that the service rendered by the plaintiff on the internet had become recognized and accepted globally. The Court agreed that though “Yahoo!” was a dictionary word, it had acquired sufficient uniqueness and distinctiveness so as to enable the plaintiffs to be protected against passing off.
Rediff Communication Limited v Cyberbooth
Another early judgment in relation to cybersquatting was delivered by the Bombay High Court in Rediff Communication Limited v. Cyberbooth and Another (AIR 2000 Bombay 27).
In that case, the defendant had registered the domain name ‘radiff.com’, which was similar to the plaintiff’s domain name ‘rediff.com’.
Deciding in favour of the plaintiff, the Court was of the opinion that the high importance and value attached to a domain name makes it a major corporate asset of any company.
It went on to state that a domain name is much more than an internet address and as such, is entitled to protection equal to that afforded to a registered trademark.
Titan Industries Ltd v Prashanth Koorapati & Others
Titan Industries Limited v. Prashanth Koorapati and Ors (Delhi High Court Suit No. 179 of 1998, Decision dated 28 Jan 1998) is the first case decided by any Indian court which accorded trademark protection to domain names.
In this case, the plaintiff had registered ‘Tanishq’ as a trademark for the production and marketing of jewelry and watches in 23 countries since 1994. The defendant registered ‘tanishq.com’ as its domain name and the plaintiff objected to the use of its trademark as a domain name by the defendant on the grounds that the domain name is based on the plaintiff’s registered trade name.
It was argued that consumers would likely believe that the defendant is an affiliate of the plaintiff. This would likely cause confusion and deceive the public, ultimately diverting business traffic to the defendant. It was further submitted that this would provide the defendant an unfair advantage, who would be able to cash in on the plaintiff’s reputation and goodwill, causing financial loss to the plaintiff.
The Delhi High Court found in favour of the plaintiff and granted an ex-parte ad-interim injunction restraining the defendant from using the trade name “Tanishq” or any other name that is deceptively similar and would likely lead to passing off of the business and goods of the plaintiff.
Dr Reddy’s Laboratories Ltd v Manu Kosuri
Similarly, in Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri [2001 PTC 859 (Del)], the defendants were restrained from using the domain name in question, ‘drreddyslab.com’, which was identical to the plaintiff’s trade name.
The Court was of the opinion that domain names hold an important position in e-commerce and held that the defendants were liable under passing off.
A permanent injunction was granted in favour of the plaintiff and the defendant was restricted from using the trademark and/or domain name ‘drreddyslab.com’ or any other mark/domain name identical with or deceptively similar to the plaintiffs trademark.
Tata Sons Ltd v Manu Kosuri & Ors.
Another high-profile case involves the Tata Group, a multinational conglomerate. In Tata Sons Ltd v Manu Kosuri & Ors. [IIIAD Delhi 545, 90 (2001)], the defendant registered a series of domain names incorporating the well-known trademark “TATA”.
The Court, in delivering judgement, referred to Rediff Communication Limited v Cyberbooth and Yahoo Inc. v Akash Arora & Anr., both mentioned above, and held that internet domain names are not merely internet addresses but are in fact corporate assets that are extremely important and valuable and as such, are entitled for protection equivalent to that afforded to registered trademarks.
Uniform Domain-Name Dispute-Resolution Policy (UDRP)
The World Intellectual Property Organisation (WIPO) has also dealt with a number of notable cybersquatting cases involving Indian companies/entities under the UDRP.
SBI Cards and Payment Services Private Ltd v Domain Active Pty Ltd
In SBI Cards and Payment Services Private Ltd v Domain Active Pty Ltd (Case No. D2005 0271), the complainant was a joint venture between GE Capital Services and the State Bank of India (SBI) offering a range of credit cards to its clients. The respondent had registered the domain name ‘sbicards.com’.
A complaint was brought to WIPO and the Administrative Panel found that the defendant registered the domain name in bad faith.
It was held that the registration was made with the intention to create confusion with the product, services and trademark of the plaintiff. The respondent was ordered to transfer the domain name to the complainant.
Maruti Udyog Ltd v Maruti Software Private Ltd
In Maruti Udyog Ltd v Maruti Software Private Ltd (Case No. D2000-1038A) , a complaint was brought against the respondent in this case, who registered the domain name ‘marutionline.com’.
It was contended, among other things, that the respondent was a legitimate company registered under the Indian Companies Act 1956 (“Companies Act”) and thus had rights to the domain name in question.
However, it was held that the domain name was registered in bad faith as there was no evidence to suggest that the respondent intended to use the domain name for legitimate purposes.
More importantly, it was held that mere registration of a company under the Companies Act does not afford any right and/or entitle the holder of the certificate of incorporation to succeed in an action for passing off.