Protection of Domain Name In the Indian Context

In a recent case of M/s.matrimony.com Limited v. Silicon Valley Infomedia Private Limited¹, the online matrimonial site, Bharatmatrimony.com, got an injunction against infringing their domain name by the defendant from the Madras High Court. Readers may recall that in the famous case of Consim Info Pvt. Ltd. vs Google², the same High Court even acknowledged that it was a fit case for granting an interim injunction, however, the same was not granted. This is because there were several factual questions in dispute. In that case, Google was using the plaintiff’s (Bharatmatrimony) trademark for advertising the websites of other matrimonial sites. Thus, there were three parties involved in that case. In this article, I would discuss how Indian courts have protected domain names over the years in the context of this recent judgment.

Judgment

The defendant had adopted the plaintiff’s domain name www.bharatmatrimony.com as www.bharatmatrimony.org. and was doing a similar kind of business despite having its own domain name www.siliconinfo.com. Hence, the court held by virtue of Section 29(3) of the Trademark Act, there will be a presumption of infringement against the defendant. The court took note of the fact that the plaintiff has tremendous goodwill in the field of matrimonial business in both India and abroad. They have started the business in 1997 and registered their domain name in 1999 itself. Hence, they are the prior user and also have the pre-emptive rights in the domain name. Moreover, the defendant could not give any reason for adopting a deceptively similar domain name. Hence, it held that the defendant’s mark was deceptively similar to that of the plaintiff, and the plaintiff is entitled to a permanent injunction.

ICANN/UDRP System

Since domain names have a worldwide outreach, its registration is done by an international organization called the Internet Corporation for Assigned Names and Numbers (ICANN). Even before applying for registration, the registrant will have to check whether his domain name is similar to any other registered domain name in the WHOIS. (prior art search). WHOIS is a database of all registered domain names maintained by ICANN. Then the registrant will have to contact an ICANN-accredit registrar. The registrar will check the availability of the domain name and register it if it has not been registered yet³. In order to solve disputes, Uniform Domain Name Resolution Policy (UDRP) was framed in 1999⁴. The UDRP consists of a three-member panel that conducts administrative proceedings. It is conducted by the WIPO Arbitration and Mediation Centre. However, the decisions of the Panel are not enforceable in domestic courts. This is because there is no written arbitration agreement between the parties. Neither it is a judicial proceeding because finality does not attach to such proceedings⁵.

Akin to UDRP, India has also created .IN Domain Name Dispute Resolution Policy to deal with domain name-related disputes of .IN Registry or Bharat (available in all Indian languages). It is also an arbitration procedure done by the National Internet Exchange of India (NIXI)⁶. Proceedings can be initiated by any person who considers that the registered domain name conflicts with his legitimate right or interest⁷. Unlike UDRP, it is governed by the Arbitration & Conciliation Act, 1996 and hence, binding in the court of law⁸.

Judicial Decisions

Despite no separate law on the protection of domain name, Indian courts have, over the years, given protection under the trademark law. It all started with Satyam Infoway vs Sifynet Solutions Ltd ⁹ where the Appellant had registered its domain name www.sifynet.com in the ICANN in 1999. The Respondent had registered their own domain name as www.siffynet.com and www.siffynet.net in 2001 and was providing a similar service. The Apex Court held that the domain name can be given similar protection to that of trademark because the domain name is a business identifier and deceptively similar domain names could lead to consumer confusion. However, domain names have been given protection against passing off before this Apex Court judgment too. For example, in Yahoo! Inc. vs Akash Arora,¹⁰ the defendant had started the website Yahooindia.Com. The plaintiff’s Yahoo.com had already registered its domain name and had acquired goodwill in the market. The court held that it would amount to passing off since the names are deceptively similar and give similar services. Thus, it restrained the defendant from using the domain name. Similar to this case, in Rediff Communication Ltd. vs Cyberbooth¹¹, the Plaintiff ran a well-known emailing site under the domain name Rediff.com. The defendant started giving a similar service under the name Radiff.com and had already registered the website. The defendant argued that the term ‘Radiff’ was coined by them. However, the Bombay High Court rejected their contention and held that defendant has created the website with the sole purpose of trading upon the plaintiff’s market. Hence, it gave the injunction.

Descriptive Names

While the defendant could not come up with any justification for its deceptively similar mark in the above-stated case, one of the common defenses in such cases is that the plaintiff’s mark is descriptive in nature. For example, in Consim Info Pvt. Ltd. vs Google, one of Google’s defenses was that ‘Bharat’ and ‘Matrimony’ are both descriptive words, and one cannot have a trademark in those words. The Madras High Court negated the argument by holding that even if ‘Bharat’ and ‘Matrimony’ are descriptive terms and one cannot have a monopoly over it, however ‘Bharatmatrimony’ is a combination of two words, and even without a space in between, it would lead to confusion among customers.

However, the Bombay High Court has also refused to give protection to too descriptive words by considering all the relevant considerations. For example, in People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors¹², the plaintiff ran a matrimonial website called shaadi.com which was well recognized and had goodwill in the Indian market. The defendant launched a similar website called SecondShaadi.com which mainly catered for aspirants of second marriage. The court held that the word ‘Shaadi’ is used in common parlance as it means marriage in Hindi. Hence, one cannot claim monopoly over the word and the passing off claim did not succeed. Here the court took note of the fact that the customer base of both the domain names are different and the defendant’s domain name has also garnered a secondary meaning among its customers in a span of 8 years. Similarly, in Bigtree Entertainment v Brain Seed Sportainment¹³, the issue before the Delhi High Court was whether the defendant has infringed the plaintiff’s domain name www.BOOKMYshow.com by using its domain name www.BOOKMYsports.com which is used for booking sporting venues. The plaintiff was using its domain name for the purpose of booking movie shows in cinema halls. The court noted that while both were using the word ‘BOOKMY’, the word itself was descriptive in nature. Further, the word ‘BOOKMY’ does not possess any secondary meaning. Hence, even in this case, the claim of passing off did not succeed not only because the word was descriptive, but also because the businesses are different and there is no likelihood of confusion.

Other Remedies

One last thing that needs to be seen is whether a trademark owner has any pre-emptive right over its domain name. The Delhi High Court had dealt with this issue in Acqua Minerals Ltd. vs. Mr. Pramod Borse & Anr¹⁴. Here the defendant was using the plaintiff’s trademark BISLERI as their domain name despite having their own domain name info@CYBERWORLD.COM. This is because, in modern times, people rely on the internet to promote their products. The court noted that the Registering Authority allows registration of a domain name only to one person.  Thus, the trademark proprietor would have the pre-emptive right in registering its domain name if it is the prior and lone user of the trademark. Further, it asked the defendant to transfer the domain name.

In a recent case¹⁵, the Delhi High Court has also provided an anti-suit injunction against a USA-based foreign company that infringed the domain name of Hindustan Times Group. In this case, the defendant company was using the domain name of the Indian newspaper, Hindustan Times, and also providing Indian news in the USA. When Hindustan Times asked them to transfer the domain name, they demanded an exorbitant amount and filed a suit in New York to declare non-infringement of the domain name. However, the Delhi High Court found it to be a clear case of cybersquatting and granted relief to the plaintiff.

Conclusion

In this article, I have discussed how ICANN came into existence. I have also dealt with the UDRP system of dispute redressal mechanism of domain names. Akin to UDRP, India has also created INDRP in order to solve disputes between .IN Registry. Moreover, despite no separate laws on the protection of domain names, the Indian judiciary has made a considerable effort in protecting the same. It has given the domain name the same status as the trademark and has also provided necessary relief whenever required.

Endnotes

1. M/s.Matrimony.com Limited v. Silicon Valley Infomedia Private Limited Madras High Court C.S(Comm.Div.).No.223 of 2019 Decided on 06-10-2021
2. Consim Info Pvt. Ltd. vs Google India Pvt.Ltd & Othrs 2013 (54) PTC 578 (Mad)
3. Domain Name Registration Process https://whois.icann.org/en/domain-name-registration-process  (Oct 26, 5:21 PM)
4. Uniform Domain Name Dispute Resolution Policy https://www.icann.org/resources/pages/help/dndr/udrp-en ( Oct 26, 5:26 PM)
5. Beirsdorf A.G. vs Ajay Sukhwani Delhi High Court Decided on 14.11.2008
6. Paragraph 5, INDRP, .IN Domain Name Dispute Resolution Policy (INDRP) https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29 ( Oct 26, 2021 5:16 PM)
7. Paragraph 4, INDRP, IN Domain Name Dispute Resolution Policy (INDRP)  https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29 ( Oct 26, 2021 5:16 PM)
8. Paragraph 5, INDRP, .IN Domain Name Dispute Resolution Policy (INDRP)  https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29 ( Oct 26, 2021 5:17 PM)
9. Satyam Infoway vs Sifynet Solutions Ltd MANU/SC/0462/2004
10. Yahoo! Inc. vs Akash Arora 78 (1999) DLT 285
11. Rediff Communication Ltd. vs Cyberbooth AIR 2000 Bom 27
12. People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors Bombay High Court Decided on 14.09.2016
13. Bigtree Entertainment v Brain Seed Sportainment Delhi High Court Decided on 13.12.2017
14. Acqua Minerals Ltd. vs. Mr. Pramod Borse & Anr. Delhi High Court Decided on 24.04.2001
15. HT Media Ltd & Anr. Vs Brainlink International Inc. & Anr. Delhi High Court Decided on 28.04.2020