A domain name, also referred to as a URL (uniform resource locator), is a word or combination of words that indicates a website’s connection to a specific person. Any person may acquire a domain name from a licensed Registrar for a brief period of time, and following expiration, the registrant may choose to renew it.
If a domain name complies with the Trade Marks Act, 1999, it may be registered and protected as a trademark in India. The Internet Corporation for Assigned Names and Numbers (ICANN) is the principal entity responsible for protecting such registered domain names globally. As a result, for the violation of already existing rights, a person has the choice to file a domain name dispute complaint under the Uniform Domain Name Dispute Resolution Policy (at the international level) or Dispute Settlement for Domain Names (at the national level).
Protecting Domain Names Using Trademark Law
Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. is a landmark case in Indian cyberspace law, dealing with domain name disputes and trademark infringement.
In this case, Satyam Infoway Ltd., an Indian internet service provider, filed a suit against Siffynet Solutions Pvt. Ltd., a web development company, for using a domain name similar to its trademarked name, “Satyam”. Satyam Infoway alleged that Siffynet Solutions had registered the domain name “sifynet.com”, which was deceptively similar to its own domain name, “satyam.com”, and that this was causing confusion among customers.
The Delhi High Court, in its judgment on February 19, 2002, held that domain names are subject to the same legal protections as trademarks, and that the registration of a domain name similar to a registered trademark would amount to infringement of the trademark owner’s rights. The court also held that the use of the domain name “sifynet.com” by Siffynet Solutions was a deliberate attempt to pass off its services as those of Satyam Infoway.
The court ordered Siffynet Solutions to transfer the domain name “sifynet.com” to Satyam Infoway, and also awarded damages for trademark infringement and passing off.
This case established the principle that domain names can be protected under Indian trademark law, and paved the way for future domain name disputes in India.
The BookMyShow Case
In the case of Bigtree Entertainment Pvt Ltd v. Brain Seed Sportainment Pvt Ltd, the dispute was regarding the use of the trademark “BOOKMYSHOW” by the parties. Bigtree Entertainment Pvt Ltd, the plaintiff, claimed that it had been using the trademark “BOOKMYSHOW” since 2007 for providing online ticketing services for movies, events, and sports matches.
On the other hand, Brain Seed Sportainment Pvt Ltd, the defendant, had filed a trademark application for “BOOKMYSPORT” in 2015, which was subsequently opposed by Bigtree Entertainment Pvt Ltd. Brain Seed Sportainment Pvt Ltd then filed a counterclaim seeking cancellation of Bigtree Entertainment Pvt Ltd’s trademark “BOOKMYSHOW,” alleging that it was generic in nature and lacked distinctiveness.
The Delhi High Court, in its judgment dated 23 December 2016, held that the trademark “BOOKMYSHOW” was not generic and had acquired distinctiveness through extensive use and promotion by Bigtree Entertainment Pvt Ltd. The court also held that Brain Seed Sportainment Pvt Ltd’s trademark “BOOKMYSPORT” was deceptively similar to Bigtree Entertainment Pvt Ltd’s trademark and was likely to cause confusion in the minds of the public. Therefore, the court granted an injunction against Brain Seed Sportainment Pvt Ltd from using the trademark “BOOKMYSPORT” or any other similar mark.
In conclusion, the Delhi High Court ruled in favor of Bigtree Entertainment Pvt Ltd and held that it had the exclusive right to use the trademark “BOOKMYSHOW” for online ticketing services.
This case brought attention to the significance of domain names, especially for businesses that only operate online because they play a significant role in trading and other economic operations.
Conclusion
It is clear from these cases that domain names are an important part of branding and recognizability in today’s perpetually online world, and that courts have taken them into account when considering the degree of protections to be given to them.
Author: Mahima Agarwal, Legal Intern at PA Legal.
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