Holding that M/s Bennett Coleman & Co., the owner of the trademark and logo “Indiatimes” was the rightful holder of the website “indiatimestravel.com” and that the action of the defendant constituted an act of cyber-squatting, Justice V.K. Jain of the Delhi High Court in a recent decision [TIMES INTERNET LTD. v. M/s BELIZE DOMAIN WHOIS SERVICE LTD. & OTHERS] directed the assignment of the domain name to the Bennett Coleman group.
The High Court enunciated the law on this aspect in the following terms;
4. The plaintiff has sought an injunction restraining the defendants from using or squatting from the trademark or domain name “indiatimestravel.com” or operating any business or selling, offering for sale, advertising and/or deal in any manner in service or goods using the trademark/domain name “indiatimestravel.com” or any other identical or deceptively similar name. An injunction has also been sought seeking direction for transfer of the domain name “indiatimestravel.com” to the plaintiff. Damages amounting to `20Lacs have been also sought by the plaintiff from defendants No.1 and 2. It has also sought delivery up of all materials/documents in their possession bearing the mark/name “indiatimestravel.com” or any other deceptively similar mark.
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10. In CS(OS) No.1108/2006, decided on 29th October, 2010, this Court, inter alia, held as under:
“18. A person is well within his right to sell his goods or render services using any trade name for the purpose. With the passage of time the goods sold or the services rendered by him, as the case may be, may acquire certain reputation or goodwill in the market which becomes the property of that person and needs to be protected by the court. It is not permissible for any other person to start selling goods or rendering services either using the same name or imitating that name so as to cause injury to that person and enrich himself at the cost of the person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold or services rendered by him. Any attempt on the part of a person to enrich upon the goodwill generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard.
19. Even if the person using or imitating the trade mark or goodwill of another person is yet to commence his business activities his dishonest intention to make use of the mark and name of the other party will be obvious from the very use or imitation of the mark and goodwill of the other person and, therefore, it should not be a defence to say that there has so far been no use of the offending corporate name or mark.” Though the aforesaid observations were made in respect of a registered trade mark, they would equally apply in a case of passing off.
11. In Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 573, the Supreme Court, inter alia, observed that its decisions in the last four decades had clearly laid down that what had to be seen in the case of a passing off action was the similarity between the competing marks and to determine whether there was likelihood of deception or causing confusion.
12. In Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC), the appellant registered several domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. 'Sify' was a coined word of the appellant which claimed a vital reputation and goodwill in that name. The respondent, at a later dated, started carrying on business of internet marketing under the domain names www.siffynet.net and www.siffynet.com and also obtained registration of these two domain names with Internet Corporation for Assigned Names and Numbers (ICANN). Coming to know of it, the appellant filed a Civil Suit against the responding claiming that the respondent was passing off its business and services by using the appellants" business name and domain name. The City Civil Court Judge allowed the application of the appellant for grant of injunction, noticing that the appellant was the prior user of the trade name "Sify" which had earned good reputation in connection with Internet and computer services and that the respondent domain names were similar to the domain name of the appellant and confusion will be caused in the mind of general public by such deceptive similarity. The High Court, however, set aside the order passed by the City Civil Court. Allowing the appeal, the Supreme Court, inter alia, observed as under:-
“11. The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical." As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high.
15. 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 website which offers no such services. Such users could well conclude that the first domain name owner had mis-represented 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 found an action for passing off. 23. 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.”
13. The case of the plaintiff is that the mark “Indiatimes” was coined by its predecessor in interest, Bennett Coleman and Company Limited. A perusal of the printout Ex.P-4 shows that this mark was created w.e.f 22nd November, 1996 and its registration as domain name expires on 21st November, 2016. A perusal of the printout Ex.P-9 shows that the domain name “Indiatimestravels.com” was created on 21st July, 2005 and its registration on the domain name was to expire on 21st July, 2008. Thus, not only did the plaintiff create the mark “Indiatimes.com”, it has also been extensively using that mark since much prior to the dated on which the mark “indiatimestravel.com” was got registered by defendant No.1 as a domain name. The word “indiatimes” is an essential feature of the trademark created and being used by the plaintiff and/or its predecessor Bennett and Coleman and Company since 22nd November, 1996. No one else is entitled in law, to use any mark which adopts and incorporates this essential feature of the mark of the plaintiff. It can hardly be disputed that the words “indiatimes” are an essential component of the domain name “indiatimestravel.com” got registered by defendant No.1 with defendant No.2. Defendant No.1 has not come forward to tell the Court as to what prompted it to use a mark, which includes the words “indiatimes” as its essential component and get it registered as a domain name with defendant No.2. Hence, I see no reason to reject the case of the plaintiff that the domain name “indiatimestravel.com” has been got registered by defendant No.1 and is being used by it only with a view to encash upon the reputation and image built around the mark “indiatimes”, coined by predecessor of the plaintiff. The plaintiff has incurred huge expenditure, as detailed in para 6 of the affidavit of Shri C.V. Dhawan, between 1988-89 to 2006-07, on development, designing and maintenance of its portal and the products & services being offered through it. There is a strong possibility of the person, seeking to buy a product or a service on the web portal of the plaintiff getting confused on account of similarity of names in the domain name of the plaintiff-company and the domain name adopted by defendant No.1, on account of use of the word “indiatimes” in both the marks and, therefore, clicking on the web portal of defendant No.1 on the assumption and under a bona fide belief that he was clicking on a website of the plaintiff-company. He may also believe that since the word “indiatimes” has been used as an essential component of the web name adopted by defendant No.1, that web name was also somehow associated with the plaintiff-company and consequently he may click on the web portal of defendant No.1, thereby bringing revenues to it, since mere clicking on the web portal of defendant No.1 generates revenue for that company. The use of the web name “indiatimestravel.com” is, therefore, likely to result in confusion in the mind of web user on account of deceptive similarity in the web name “indiatimes” and “indiatimestravel.com” on account of the words “indiatimes” being an essential feature of both the web names. If the products and services which are advertised on the web portal of defendant No.1 are not as good as the products and services advertised on the web portal of plaintiff-company, considering that the name “indiatimes” has come to be associated with the plaintiff-company on account of its extensive use and the expenses incurred on promoting and building this name, use of the impugned web name by defendant No.1 may also result in lowering the reputation and image of the plaintiff-company amongst the web users. It appears that by using the web name “indiatimestravel.com”, defendant No.1 wants to take undue advantage of the huge expenditure incurred by the plaintiff-company and its predecessor on building and promoting the name “indiatimes”. As noted earlier, defendant No.1 having not chosen not to appear before this Court, there is no escape from the conclusion that the web name got registered by defendant No.1 was got registered by it with an ulterior motive and was not in good faith.
14. When questioned as to how the plaintiff can ensure compliance in case the injunctions, as sought by the plaintiff, is granted to it, the learned counsel for the plaintiff referred to Uniform Domain Name Dispute Resolution Policy of defendant No.2 which, inter alia, provides as under:
“3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances.(a) subject to the provisions of paragraphs 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;(b) our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and /or(c) our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (see paragraph 4(i) and (k) below.)We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements.”
15. It is, therefore, difficult to dispute the contention of the plaintiff that the domain name adopted and got registered by defendant No.1 being identical to the coined trademark of the plaintiff on account of use of the words “indiatimes” in it, it is a clear case of passing off and defendant No.1 is not entitled to continue using the domain name “indiatimestravel.com”. Since the right to use the words “indiatimes” vests only with the plaintiff, defendant No.2 is obliged to transfer the domain name adopted and got registered with it by defendant No.1 to the plaintiff.
16. Though the plaintiff has also claimed damages, no evidence has been led by it to prove any damage to it and no arguments in respect of this relief were advanced on behalf of the plaintiff.
17. For the reasons given in the preceding paragraphs, the suit is hereby decreed to the extent that defendant No.2 is directed to transfer the domain name “indiatimestravel.com” from defendant No1 to the plaintiff-company within four weeks of the copy of this judgment being served upon it.
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