Justice Manmohan Singh of the Delhi High Court, in Arun Jaitley v. Network Solutions Pvt. Ltd. & Ors., has spelt out the law relating to the protection of domain names under the Indian Trademark law. While discussing various judicial precedents on the subject, the Delhi High Court held as under;
23. At this stage, let me now discuss the law relating to protection of domain names which is worth noting. The domain name is usually an address given to the website so that the person intending to visit the same may visit the website of the identified person.
a) This function of giving names to the addresses of the website has undergone magnificient change whereby the companies, firms, eminent individuals have been able to name the web addresses after their own names and/ or trade mark. This performs dual functions, firstly, the domain name does not merely remain as an address but rather performs the function of a trade mark as the prospective customers or other known persons visit the webpage and are able to immediately connect with the source and identify the same with the particular company or the individual.
b) Secondly, so far as individual persons or eminent personalities/ popular companies are concerned, their identity is established in the virtual world of internet. In other words, the popularity or the fame of any individual or the company will be no different on the computer (or internet) than the reality.
c) Therefore, it becomes incumbent to protect the domain names so that the identified names of companies and individuals which are distinct at the market place may not go at the hands of individuals who are nowhere concerned with those names and have obtained them just because they are better conversant with the computer techniques and usage of the internet. To simplify, in order to prevent the cyber squatting or trafficking or trading in domain names or the marks, the trade mark law has been stretched to the extent that it may cover the field of internet and domain names may be protected just like the trade marks.
24. The trade mark law protects names from its inception. Rather, the specific provision which trade mark Act 1999 has in relation to trade name was not earlier present in the Trade & Merchandise Marks Act 1958. Even in earlier trade mark act of 1958, the names were given ample protection on the principles of passing off. It would be appropriate at this stage to reiterate the basic principle of passing off law under which the names were protected which has been articulated by Narayanan in his book :
"25. 104 Law of passing off applicable to trade names - Apart from a trade mark in the strict sense of term, a trader may use a name to indicate his business or goods. The definition of a mark includes a name. A trade name can therefore serve the purpose of a trade mark. Where the business is such that no sale of any goods is involved, it is carried on invariably under a trading name or style. Individuals, firms or companies rendering certain professional services comes under this category.
....... The law is that no man is entitled to carry on his business in such a way as to represent that if it is business of another or is in any way connected with the business of another. The general principles of the law applicable to cases where a person uses a name or intends to use a name which is like to deceive and thereby divert the business of the plaintiff to the defendant or cause confusion between two businesses are analogous to the principles which are applicable to ordinary cases of passing off relating to sale of goods." (Emphasis supplied)
25. Likewise, the definition of trade mark includes the name being an inclusive definition was also extended to include domain names. This was done so as to give ample protection to domain names as the domain names was not included as a specific subject under the trade mark law regime. Therefore, the recourse was taken by expansive interpretation of the definition of the trade mark which is sought to include domain names so that the law of passing off may sufficiently subsume the same.
26. The interplay between the trade mark act as well as the domain names on the basis of the trade mark includes name and in turn the domain name was for first witnessed by this court in the case of Yahoo Inc v. Akash Arora, 1999 PTC (19) 201 wherein this court accorded protection of domain names after going through the objects of the trade mark law as well as the definition of the trade mark.
27. Further, the same proposition was laid down by the Bombay High Court in Rediff Communication Ltd. v. Cyberbooth and Anr, AIR 2000 Bom 27 wherein the court has held that the domain names are worthy of the protection under the passing off regime.
Finally, the Hon'ble Supreme Court in the case of Satyam Infoway Ltd. Vs.Sifynet Solutions Pvt. Ltd, (2004) 6 SCC145 has extensively discussed the law on the subject and also discussed the place of the domain names under the law of passing off. Some of the paragraphs of Apex court‟s decision are worth noting which can be reproduced herein after:
"7. A "trade mark" has been defined in section 2 (zb) of the Trade Marks Act, 1999 (hereafter referred to as 'the Act') as meaning :
"trade mark' 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 colours".
8. Therefore a distinctive mark in respect of goods or services is a 'Trade mark'.
9. A "mark" has been defined in Section 2(m) as including "a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof" and a 'name' includes any abbreviation of a name (s. 2k).
10. "Goods" have been defined in Section 2(j) as meaning "anything" which is the subject of trade or manufacture, and "Services" has been defined in section 2 (z) as meaning:
"service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising."
11. Analysing and cumulatively paraphrasing the relevant parts of the aforesaid definitions, the question which is apposite is 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?
12. 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. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value" . The answer to the question posed in the preceding paragraph is therefore an affirmative.
13. The next question is would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off" itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.
14. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to plaintiff. CADBURY SCEHWEPPES v. PUB SQUASH, 1981 rpc 429, ERVEN WARNINK VS. TOWNEND 1980 RPC
31 What has to be established is the likelihood of confusion in the minds of the public, (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory" ARISTOC VS. RYSTA, 1945 AC 68
15. The third element of a passing off action is loss or the likelihood of it.
16. 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 web site 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."
28. From the above discussion, it is clear that the domain names are protected under the law of passing off with a personal name being no exception. Rather it would not be out of place to say that the entitlement to use one‟s own name stands on a higher footing than the entitlement to use the trade mark. This is so due to the reason that the right to use ones own name is a personal right as against the right to use a trade mark which is merely a commercial right. This can be discerned after carefully analyzing the scheme of the trade mark law wherein Section 35 of the Trade Marks Act 1999 provides right to use the personal name as a valid defence or an exception to the infringement of the mark. A necessary corollary which follows is that the right to use a personal name is superior than that of the commercial right of using the trade mark and thus the entitlement to use it as a trade mark or domain name vests with the person having its personal name. Afortiori it can be conveniently stated that the name which besides being a personal name is also distinctive due to its inherent distinctiveness and also by virtue of the popularity of the person specific also fulfils the criterion of trade mark.
29. In the present case it is clear from a visit to the WHOIS that;
(i) There is no natural person who claims rights in the domain name www.arunjaitley.com;
(ii) There is no corporate entity claiming rights in the same except unknown Registering authorities;
30. Therefore, the entitlement to restrain the use of the popular or well known personal names accrues to a person on both the counts, first on the satisfaction of the principles of well known marks envisaged under the trade mark law and second in view of his personal right and entitlement to use his personal name. However, there is no absolute right to use personal name and whenever there are common names or common surnames, or names of the sect which cannot attain distinctiveness, the right and entitlement to use the same varies and tests become different as in those cases no exclusivity can be maintained by a single person and equal rights subsist to each of the persons using the common names unless high degree of distinctive character is established. The said principles can be hold to be good for the purposes for deciding the cases involving personal names which can also qualify the tests of the trade mark.