BY: Atul S Jaybhaye

No Specific Law for DN

 No legislation for registration and protection of
Domain names in India.
 India’s only cyber law resource, The IT Act, 2000
does not tackle the issue of domain name
squatting.
 Violations of DNs in India is rampant by
unauthorised persons.
No Specific Law for DN
 In India, the protection of intellectual property on the
internet remains a grey area, IT Act, 2000, not
addressing the issue of trademarks on the internet.
 The Indian IT Act, 2000, since its enactment has made
little progress in enforcement or addressing critical
issues such as intellectual property protection on the
internet.
 India needs drastic measures for reframing its
intellectual property laws to bring into account the
internet reality.
NIXI
 .IN Registry National Internet Exchange of India:
 .IN Registry is the organisation responsible for
the .in TLD.
 It was appointed by the government of India, and
operates under the authority National Internet
Exchange of India (NIXI).
 This allows anyone to register and use .IN domain
names. .IN can be used for e-mail, Web sites, and other
applications.
NIXI - .IN DRP
 The .IN Registry has published the .IN Dispute
Resolution Policy (INDRP) which is a mandatory
dispute resolution procedure.

 .INDRP has been formulated on internationally

accepted guidelines.

 The procedure laid down is that upon receipt of a

complaint the .IN Registry shall appoint an Arbitrator
out of the list of arbitrators maintained by the Registry.
NIXI - .IN DRP
 arbitration proceedings in accordance with the
Arbitration and Conciliation Act, 1996.
 Remedies available: cancellation of the registrant’s
domain name or the transfer of the registrant’s domain
name registration.
Points to be considered for relief:
 Reputation and Goodwill.
 Likelihood of Damage.
 Confusion and deception.
 Bad faith in passing off cases.
 Misspelling of domain names.
 Dishonest adoption of tm.
 Piracy of well known domain names.
 Identical/deceptive similarity.
Case laws in India
 Yahoo vs. Akash Arora
 Satyam Infoway vs. Sifynet Solutions.
 Tata Sons vs. Arno Palmon and Othrs.
 Rediff communications vs. Cyber tooth
 Aqua Minerals vs. Pramod Borse
 Redbull vs. Unasi Management
Case laws in India
 Yahoo vs. Akash Arora 1999 Delhi HC
 First case in India relating to violation of domain names.
 Akash Arora started to offer web-based services similar to those
offered by Yahoo.com under the name of Yahoo India. Yahoo Inc
had sued Akash Arora for using a trade mark deceptively similar
to its own and passing off his services as those offered by Yahoo
Inc.
 Yahoo.com had been registered by Yahoo Inc with Network
Solution Inc since 1995 and offers a whole range of web based
services.
 Name Yahoo has acquired a reputation and the public at large is
likely to be misled that the defendant’s business is the business
of the plaintiff.
Case laws in India
 Satyam Infoway vs. Sifynet Solutions. 2004 SC 145
 The Appellant used ‘sify’ as trademark and used domain name as
www.sifymall.com, sifyrealestate.com and the respondent infringed it
s domain name by registering deceptively similar domain name as
sifynett.com.

 Issue: whether domain names are entitled to same protection as TM?

 The SC held that Appellant was entitled to Injunction order
restraining respondent from using domain names in dispute.
Case laws in India
 Aqua Minerals vs. Pramod Borse
 Bisleri as a brand and well known trademark of drinking water.
 The Defendant deliberately registered ‘Bisleri.com’ as its domain
name.
 The Plaintiff filed a suit for Injunction.
 The Court granted Injunction holding that domain name serves
the same function as TM and is therefore entitled for protection.
Case laws in India
 Tata Sons vs. Arno Palmon and Othrs. 2005 Delhi
HC
 The Suit was instituted for restraining defendants from using the TM/Domain
name i.e. www.tatainfotech.in
 Word tata derived from surname and registered as TM. It comprises of over 50
companies which uses the word TATA.
 Also pioneer in the field of IT, use of TATA Infotech since 1997.
 The Defendant had sent mail to the plaintiff and blackmailed them to purchase
domain name.
 The plaintiff sued and order of injunction was granted.
Case laws in India
 Rediff communications vs. Cyber tooth 2000
Bombay HC
 Plaintiff, Rediff Communication Ltd. was an on line media company carrying on
the business of communication and providing services through the internet.
 In 1997, Plaintiff registered the domain name ‘REDIFF.COM’, with Network
Solutions, Inc.
 In March, 1999, Plaintiff learnt that the Defendants have obtained registered the
domain name ‘RADIFF. COM’.
 Plaintiff filed a suit for permanent injunction. Possibility of confusion, court
granted the injunction.
Case laws in India
 Redbull vs. Unasi Management 2005 WIPO
 Redbull is the owner of several domain names. Principal website of
the Redbull is www.redbull.com which provides information about
redbull products, energy drinks etc.

 Redbull- as a energy drink has acquired reputation worldwide.

 The defendant had created several websites using names redbull.

 WIPO gave judgment in favour of Redbull.
Case laws in India
 Pen Books Pvt. Ltd v. Padmaraj, 2004 (29) PTC 137
(Ker).
 The plaintiffs trademark “Penbooks” and their erstwhile domain name
www.penbooks.com came into question.
 In this case the plaintiff failed to renew their domain name and the
same was acquired by the defendant.
 The defendant pleaded that the domain name was consciously
abandoned by the plaintiff following which they had applied for this
domain name.
 Domain names or internet sites are entitled to protection as a
trademark and trademark law applies to activities on the internet.
Case laws in India
 Zee Telefilms Ltd & Ors v. Zee. Kathmandu & Ors 2006 (32) PTC
470 ( Del)
 The plaintiff filed suit for permanent injunction restraining
passing off in respect of domain name Zeetv.com,
Zeecinema.com, Zeeenglish.com, Zeemgm.com, Trendz.com
and acts of unfair competition, dilution, rendition of accounts
etc.
 As the domain names of the Defendant were identical to the
plaintiffs channel names and the plaintiff had reputation in the
fancy trademark “Zee” since 1992,
 The court found that the object of the defendant in registering
the domain name was only to use the goodwill of the plaintiff
and to claim association with the plaintiff.
 The defendant was therefore injuncted from using the disputed
domain names.
Case laws in India
 Info Edge (India) Pvt. Ltd. & Another v. Shailesh Gunta &
Another 2002 (24) PTC 355 (Del).
 If descriptive trademarks and domain names
acquire distinctiveness by extensive use they
are protected by courts.
 The defendant had employed a minor
misspelling of the plaintiffs mark.
 The plaintiffs’ domain name was “Naukri.com”
where as the defendant adopted domain
name “Naukari.com”. This action of the
Case laws in India
 Buffalo Networks Pvt. Ltd. & Anr v. Manish Jain & Ors
2005 (30) PTC 242 (Del)
 The court held that the domain name of the
defendant “tahelka.com” is deceptively similar to
the domain name “tehelka.com” of the plaintiff and
therefore the suit was decreed against the
defendant.
Case laws in India
 Essel Packaging Limited v. Sridhar Narra & Anr 2002
(25) PTC 233 (Del)
 The court held that the plaintiffs’ trademark “Essel” is a
coined word and has been used by it continuously and
extensively since 1982 in India and abroad in respect of
a wide ranging business interests. It was held that the
use of domain name “esselsoft.com” by defendants’
amounts to passing off.