Citations – CS(OS) No. 1289 of 2008
Date of the Judgement – 10/11/2010
Cybersquatting can be defined as a process that involves registering, using or selling a particular domain name in order to gain profit from Trademark belonging to someone else. Cyber squatting depends upon the Goodwill associated with other’s Trademark. It is generally a practice of buying of domain names resembling the existing business with the intent to sell the names for profit to that business.
The Facts of the case of Times Internet Ltd. v. M/S Belize Domain Whoise Service Ltd. and ors., Decided on 10th November 2010 by the Delhi High Court is very close to the instance of Cybersquatting. In this case, the Court has reaffirmed the passing off principle. Passing off is the common law tort, used to enforce unregistered trademark rights. The law of Passing off prevents any person from misrepresenting his goods and services as that of another.
FACTS OF THE CASE
1) The portal named “indiatimes.com” was started by M/s Bennett Coleman and Co. Ltd., and this company offers a wide range of services. The Internet business was assigned by the M/s Bennett Coleman and Co. Ltd. to the plaintiff company in the year 2000. The domain name of the “indiatimes.com” is registered under Network Solutions Inc since 1996.
2) The Trademark “travel.indiatimes.com” was registered in the name of the plaintiff company in June 2020. This service is very popular and provides huge business to the plaintiff company making the business of Rs. 1,335,834,443/- the year preceding the filing of this suit.
3) The defendant was the company named M/s Belize Domain Whoise Service Ltd. Co., which has registered the domain of “indiatimestravel.com” which was very similar to the registered Trademark of the “travel.indiatimes.com” belonging to the plaintiff company and is also deceptively similar to the domain of the plaintiff company “indiatimes.com.”
4) The defendant’s domain was not being used to carry out any real travel services or business but was merely earning profits by taking sponsored links. The plaintiff company claimed that this domain was created to use the popularity and Goodwill of the “indiatimes.com” and earn profits.
1) Whether the domain registered by the defendant company was to earn profits from the popularity of the Plaintiff’s company and, thus, makes the company liable for passing off?
2) Whether the domain name can be subjected to the legal norms applicable to Trademarks?
REMEDIES SOUGHT BY THE PLAINTIFF
1) The Plaintiff has sought an injunction restraining the defendant from using the domain “indiatimestravel.com” in any manner what so ever.
2) The Plaintiff has also sought injunction seeking direction to transfer domain “indiatimestravel.com” to the plaintiff company.
3) Plaintiff has sought damages of Rs. 20 lakh from the defendants.
4) They also sought delivery of all the documents in possession bearing the name “indiatimestravel.com” or any other deceptively similar mark.
DECISION OF THE COURT:
Justice V.K. Jain referred to the previous case of Delhi High Court CS(OS) No.1108/2006, decided on 29th October 2010, wherein the Court held that it is the duty of the Court to protect the Trademark and Goodwill of the business earned after years of business. No one can imitate or use the name or trademark / similar name or Trademark to earn profits and jeopardize the original business. Even if the person using the name or Trademark is yet to commence the business, the fact that he has used the name is enough to prove his dishonest intentions. This Court held that these observations were made in the case of registered trademarks, but they will also apply in the case of passing off.
Further, in paragraph 11, the Court has cited the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., wherein it was held that the decisions of the Supreme Court have in the last four decades clearly laid down what has to be in the cases of passing off is similar to competing marks and to determine whether there was a likelihood of deception.
The Court has also referred to the case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., which has similar facts. In the Satyam, Case court held that a domain name is an instrument of commercial enterprise because of two reasons. Firstly a domain helps the consumer in finding the website they are looking for, and secondly, it creates a separate identity for the business itself or its goods and services and also specifies the corresponding location on the internet. Because of this Court they were stated that it is necessary for the domain name to be unique and peculiar to maintain the exclusive identity of the business. The Court held that the Trademark Act, 1999 is not extraterritorial and cannot provide sufficient protection to the domain, as it can be accessed by anyone from any part of the world. However, the legal protection in relation to the passing off will be provided to the extent possible.
The Delhi High Court, thus, held that the plaintiff company owned the domain “indiatimes.com” way before the defendant created the domain of “indiatimestravel.com.” “India times” was the component that would definitely create deception of the plaintiff company, and the defendant could not justify the use of the same. Instead, it was merely to encash on the Plaintiff’s reputation. This also jeopardizes the reputation of the Plaintiff if the goods and services advertised on the defendant’s domain are of poor quality. The defendant didn’t appear before the Court and contest the claim, and thus, Court was of the opinion that defendant’s intentions were mala fide and they wanted to take undue advantage of the expenditure incurred by the plaintiff company and its predecessors to earn the existing reputation of the “Indiatimes”. Thus, the Court decided as;
1) The Plaintiff to be the sole owner of “indiatimes”
2) The defendant was not entitled to continue the domain name of “indiatimestravel.com”
3) The defendant was also directed to transfer the domain of “indiatimestravel.com” to the plaintiff company with four weeks of the copy of the judgment being served upon it.
4) The Plaintiff has also sought damages; however, they didn’t put forward any evidence to prove the damage to it, and they also didn’t advance any argument in this behalf, and thus, no damages were awarded.
CONCLUSION AND ANALYSIS
Passing off is a Common Law principle that prevents anyone from misrepresenting their goods and services to be of another person. The essentials of passing off are:
1) There has to be a misrepresentation of defendants goods or services as of Plaintiff,
2) There has to be Goodwill or reputation attached to goods and services provided by the Plaintiff,
3) And the act of misrepresentation has caused harm or loss to the Plaintiff.
In this case, by registering a domain with deceptively similar name the defendant has fulfilled the all criteria to constitute the offence of Passing off.
In the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals, the difference between infringement of Trademark and passing off were given by the Supreme Court. The Court held that passing off applies in the cases wherein no Trademark is registered. In the present case a Trademark of “Travel.Indiatimes.com” was registered in India, however the domain created by the defendant could be accessed from anywhere in the world. The Trademark Act, 1999 cannot be sufficient to protect the domain of the Plaintiff and thus, the principle of Passing off was applied.
This case has applied the principle of passing off. This case has been used as a precedent by the Delhi High Court in the case of the plaintiff company itself Times S Internet Ltd. v. Time Broad Band Services Pvt. Ltd., which was decided in the year 2015.
Pragya Jain (Author) is a third year law student from Amity University, Kolkata.
2001 (5) SCC 573 (2001)
2004 (28) PTC 566 (SC) (2004) .
Rickett and Colman Ltd. v. Borden Inc.,  1All E.R. 873 (1990).
1965 AIR 980 (1965).
CS(OS) 2004/2006 (2015).
IMPORTANT – Opinions expressed in this article are the sole responsibility of the author and do not necessarily reflect the views of IJOSLCA.