Extending the ‘passing off’ remedy of Trademark to domain names

Domain Name

In the general parlance we know that a Trademark is used to identify the products or services from a particular source (the Company from where the goods/services originate) , for example at the very moment the device through which this article is being accessed, be it a laptop, tablet, phone etc. has a Trademark say Dell, Sony, Apple, Nokia, Nexus etc. Due to the wide reach of internet to the users, almost all the companies have a website where the products and its specifications are displayed. Every company obtains a domain name and usually companies desire to obtain such domain names similar to the Trade mark of the company for the ease of users to relate. For example,consider 'Cipla' which is the Trade mark of one of the largest generic drug manufacturer in India, has the domain name of the Company as "www.cipla.com". 

The important question that would arise is ‘How does a domain name satisfy the characteristics of a trademark, thereby invoke a remedy for passing off?’ This can be understood by looking into the decisions of High Court and Supreme Court.The vacuum formed due to lack of legislation in this area has been filled by the Indian judiciary (The domain name disputes can be resolved through Uniform Domain-Name Dispute-Resolution Policy (UDRP) where there are Approved Dispute Resolution Service Providers like WIPO – it is not the area of our focus).

Let’s decipher the concept of passing off and later extend it to domain names.

Trade mark (as defined in Section 2(1)(zb) of The Indian Trademark Act, 1999): means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.

Passing off: A company would establish consumer base, goodwill and reputation through its goods and services; Passing off is the act of gaining advantage (by misrepresentation) of the established goodwill of the former.The prior user of the mark has an added advantage. As stated by P.Narayanan, an established author in intellectual property law,few examples of passing off are[i]:

• False representation;
• Adoption of a trade mark either in whole or in part;
• Colorable reproduction of trade mark;
• Copying the label, scheme or get up of the mark.

Also, the passing off remedy can be invoked by non-registered users also unlike a remedy for infringement which is only provided for registered users, so this is the only form of remedy in case of domain name. 

A Trademark should be capable of distinguishing the goods or services of one from another whereas passing off is an act of gaining advantage by misreporting the goods or services of another. Passing off is against the primary purpose of the Indian Trade mark Act, 1999 (herein after referred as “the Act”) which can be inferred from the preamble which says “An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.”The common law right against passing off can be enforced for protecting the goodwill of a trader. This right has been included in the Act and has been extended to protect the right of unregistered users.

In the ErvenWarnink B.V. v. J. Townend & Sons (Hull) Ltd., [1980] R.P.C. 31, famously known as the Advocaat case, a five element test was laid down by the House of Lords to establish a valid cause of action for passing off (which has been cited by the Delhi Court in series of cases). The apex court in the case of Laxmikant V. Patel v. Chetanbhat Shah &Anr., [2002(24) PTC 1 (SC)] laid the classical trinity test as:

1. Plaintiff must establish goodwill associated with the goods or services

2. Misrepresentation by the defendant

3. Plaintiff must show that he suffered a loss.

The first case on passing off in domain names came up before the Delhi High Court in the case of Yahoo! Inc. v. Akash Arora nand Anr.,[1999 PTC (19)210 (Delhi)], in which the plaintiff owned the domain name “www.yahoo.com”. The defendant was using the domain name “www.yahooindia.com” in relation to internet related services which is the similar field in which the plaintiff is operating. So, the plaintiff alleged that by using a quite similar domain name and format to their domain name there is an act of deceit and “Passing off”. Thus by applying the principles of “passing off” the court passed an injunction.

There were similar disputes dealt by the courts in similar circumstances but the most important case is Satyam Infoway Ltd. v. Sifynet Soloutions Pvt. Ltd.,[2004 (28) PTC 566 (SC)]. The appellant in this case, incorporated in 1995, registered domain names like “www.sifynet”, “www.sifymall.com”, “www.sifyrealestate.com” etc. in 1999. The word ‘SIFY’ is a coined word adapted from ‘Satyam InFowaY’. The defendant has obtained the registration for the domain names “www.siffynet.com” and “www.siffynet.net” in 2001 and 2002 respectively. The respondent has contended that a Domain Name could not be confused with "property names" such as Trade mark. In this case the principal questions raised were:

1. “whether internet domain names are subject to the legal norms applicable to other intellectual properties such as Trade marks?”

and

2. “whether a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the internet?”

The Apex court has held with regard to the questions raised stating that:

• The internet has become a mode for commercial activity rather than a mere means of communication;
• Domain name identifies the specific internet site, it may pertain to provision of ‘services’ within the meaning of Section 2(z) (the ‘domain name’ identifies a‘service’ which is the website, so it qualifies to be a Trade mark);
• Trade marks containing same name can co-exist but the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that consumers are likely to guess a domain name has enhanced its value.

In relation to first question of passing off, the court has applied the classical trinity test:

• The evidence (newspaper publication and user base) provided by the appellant shows that it has good will;
• It is evident from the facts that appellant is the first user;
• There is likely hood of confusion (‘sify’ & ‘siffy’), with possible injury to the public and consequential loss to the appellant.

Holding that the respondent has dishonestly adapted the domain name to free-ride on appellants, the Court upheld the injunction.

The recent case of Crayons Advertising Ltd v. Crayon Advertising, of Jan 17, 2014, is also a similar domain name dispute. The disputed domain names are “www.crayonad.com” and “www.crayonadv.com” of plaintiff and defendant respectively. In this case also the Delhi High Court has iterated the same principal and this is the case which has ignited the thought in these lines.

It can be concluded that a domain name qualifies to be a Trade mark and is used to identify the source of the “services” (which is the website) provided by a person. In case of any act of deceit and passing off by a person, for using a domain similar to that another person, the latter, by proving the elements of classical trinity test and prior use, can get an injunction against the mala fide user. The Indian judiciary has played an active role by filling the gaps formed by the lack of legislation in this area by extending the passing off remedy of Trade marks to domain names.

Abbreviations:

PTC – Patent & Trademark Cases.

R.P.C – Reports of Patent Cases

SC – Supreme Court

[i]Sreenivasulu N.S, “Law Relating to Intellectual Property”.Partridge Publishing, 2013.Page 114. 

Author - Murthy Yeggina

Disclaimer: This blog or any post thereof is not to be considered to be in any way associated with the official stand of IIT kharagpur or RGSOIPL on the issues being discussed in the said post. The opinions on the blog are the authors own and should not be considered as legal advice.