INFORMATION TECHNOLOGY

PROJECT

TOPIC: TRADEMARK & DOMAIN NAME

SUBMITTED TO : SUBMITTED BY:

Dr.Amita Verma SIDHI BANSAL
B.Com LL.B(hons)
178/14
Section- C

1
 ACKNOWLEDGEMENT

It gives me immense pleasure in acknowledging the valuable assistance intended to me by

various people in the successful completion of this project. The formal acknowledgement will
hardly be sufficient in expressing my heartfelt gratitude to my I.T Law teacher, Dr. Amita
Verma, without whose support and guidance this project would not have been accomplished.
Also, I want to thank her for providing such a resourceful and enlightening topic for research
work.

I would also like to extend a big thanks to the authorities of UILS and its Director, Prof. Rattan
Singh for providing all facilities like a well equipped library and all other necessary resources
which proved to be very helpful in the preparation of this project.

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 TABLE OF CONTENTS

ACKNOWLEDGEMENT ............................................................................................................................. 2
TABLE OF CASES ....................................................................................................................................... 4
1. INTRODUCTION ................................................................................................................................. 5
2. DEFINITION AND HIERARCHIES OF DOMAIN NAME ............................................................... 5
3. DOMAIN NAME DISTRIBUTION ..................................................................................................... 7
4. TRADEMARK AND DOMAIN NAME .............................................................................................. 8
5. DOMAIN NAME DISPUTES .............................................................................................................. 8
6. DISPUTE RESOLUTION: ..................................................................................................................15
i. POSITION IN USA .........................................................................................................................15
ii. POSITION IN INDIA......................................................................................................................18
BIBLIOGRAPHY........................................................................................................................................24

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 TABLE OF CASES

Asian Paints (India) Ltd. v. Domain Admin Case No. D2002-0649, Admn. Panel Decision, WIPO ......... 10
Bannet Coleman & Co. Ltd. v. Long Distance Telephone Co.Case No. D2000-0015, Admn. Panel
Decision, WIPO ....................................................................................................................................... 17
Bennett Coleman & Co. Ltd. v. Steven S. Lalwani Case No. D2000-0014, Admn. Panel Decision, WIPO
................................................................................................................................................................. 17
Brookfield Communications, Inc. v. West Coast Entertainment Corp 174 F.3d 1036-9th Cir. 1999 ......... 12
Cox & Kings India Limited v. Rakesh Sud Case No. D2000-0411 ............................................................ 17
Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri 2001 PTC 859 (Del). .......................................................... 9
Electronics Boutique Holdings Corp. v. Zuccarini 56 USPQ 2d (BNA) 1705 (ED Pa.2000) .................... 10
Giaclone v. Network Solutions, Inc. & Ty. Inc. 1996 U.S. Distt. Lexis 20807 (N.D. Cal. 14.06............... 11
Lockheed Martin Corpn v. Network Solutions Inc.(NSI) 985 F. Supp. 949 (C.D. Cal 1997) .................... 12
Panavision International L.P. v Toeppen 141 F.3d (1316) (9th Cir. 1998) .................................................... 9
People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622
OF 2014 ............................................................................................................................................. 12, 14
Playboy Enterprises Inc. v. Welles 279 F. 3d 796 (9th Cir 2002) ................................................................ 14
Playboy Enterprises, Inc. (PEI) v Netscape Communications Co 55 F Supp 2d (SD Cal 1999) ............... 13
Re Oppedahl & Larson v. Advanced Concepts 373 F. 3d ,1171 (Fed. Cir. : 2004). ................................... 12
Rediff Communication Ltd. v. Cyberbooth AIR 2000 Bom 27 .................................................................. 10
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145 ............................................... 8, 22
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145. .................................................. 21
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145; Rediff Communication Ltd. v.
Cyberbooth AIR 2000 Bom 27 .................................................................................................................. 5
Telstra Corp Ltd. v. India Yellow Pages Case No. D2000-0651, Admn. Panel Decsion, WIPO ............... 11
Titan Industries Limited v. Prashanth Koorapati and Ors Delhi High Court Suit No. 179 of 1998.............. 9
Washington Post v. Total News Case No. 97 Civ. 1190 (PKL) settled 6.06.1997 ..................................... 15
Yahoo Inc. v Akash Arora & Anr. 1999 IIAD Delhi 229 ........................................................................... 21

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1. INTRODUCTION
Ancient Greeks and Romans scribbled on various goods as a mark of identification. As the
civilizations grew, new and better techniques of business demanded unique recognition to
their products. Trademark catered to this need. These are marks capable of being represented
graphically and which are 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. 1
The importance of trademark at a global level was first recognized in Paris Convention, 1883
which was subsequently followed by Madrid Agreement and Protocol, 1891, The Trade
Mark Law Treaty (TLT), 1994 and Trade Related Aspects of Intellectual Property Rights
(TRIPS), 1995. In India, prior to 1940 there was no statutory law relating to Trade Marks.
However, the Trade Marks Act, 1940 was subsequently replaced by Trade Merchandise
Marks Act, 1958 that was later superseded by the Trade Marks Act, 1999 that was passed to
provide a comprehensive legislation to address various developments at international level
especially the globalization of trade and commerce and the developments in trading and
commercial practices. It provided for registration of trade marks for goods as well as
services.
With the advent of e-commerce, business entities started flourishing and expanding their
activities on internet. However, a company could not directly enter the cyber space without
an identity. Unique Internet Protocol (IP) addresses were not catchy and difficult to
remember due to its all numeric characteristics. This led to the development of Domain
Name (DN) Domain Name Systems (DNS) as a substitute to the all numeric traditional IP
address. DNS basically functions to convert complex IP addresses of e-mails and websites
into simple domain names for easy access by average user. 2 Domain names are now of
immense importance and are also referred to as valuable corporate assets carrying goodwill. 3
2. DEFINITION AND HIERARCHIES OF DOMAIN NAME
There is no legal definition of domain name. However, it is an alphanumeric designation
registered with or assigned by any domain name registrar, domain name registry, or other
domain name registration authority as part of a electronic address on the Internet. It consists

1
Section 2(zb) Trade Marks Act, 1999.
2
https://blog.ipleaders.in/trademark-issues-related-to-internet-domain-names/
3
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145; Rediff Communication Ltd. v. Cyberbooth
AIR 2000 Bom 27.

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 of different parts or levels separated by a dot (.) indicating hierarchy. Each level is a string
with maximum 63 characters. The total characters in a DNS should not exceed 255. The
different parts of DN are:
i. Top Level Domain Name (TLD) or First-level Domain (Suffix): This part is on the
extreme right of the domain name and reflects standard term throughout the world. There are
two types of TLDs i.e Generic Top Level Domain (gTLD) and Country Code Top Level
Domain (ccTLD).
a. Generic Top Level Domain
Generic Top Level Domain are commonly misunderstood to be US only as initially they
were used in USA only but subsequently with the growth of internet these gTLDs were used
all over the world. They are also known as organizational domains that consists of three
character code and indicate primary function of the organization or their generic behavior.
For instance <.com> signify commercial use, <.gov> represent for government. Earlier, there
were only seven generic TLDs but over a period of time several more gTLDs have been
introduced.
b. Country Code Top Level Domain (ccTLD)/ National TLD/ Geographical TLD
Geographical TLDs are country specific. ccTLD comprises of two characters which represent
different countries/ regions all around the world.for instance <.in> for India, <.cn> for China
etc. These codes have been standardized by International Standard Organisation (ISO 3166).
ii. Second Level Domain (SLD): It is the part directly to the left of the TLD in an e-address on
internet and is chosen by the person registering the name. Second Level Sub Domain further
comes between SLD and First (Top Level) Level Domain.
iii. Third/fourth etc. Level sub-Domain: Higher level/s may be added to a domain name to
make it more specific and give additional indication or information. They come between host
and SLD and are called sub-domains (Third level or fourth level and so on). A sub domain
provides a space for registering organization names or organization acronyms. Each
organization after registering its domain name may plan its own hierarchy under the
registered domain name. Therefore, it is not compulsory that every DN shall have this sub-
domain.
iv. Host: These names are usually given according to the services they provide. Some of the
commonly used host (computer) names are www, mail, ftp etc.

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 www.danceindiadance.zeetv.co.in

cCTLD
SL sub-
HOST SLD domain
THIRD LEVEL
DOMAIN

TLD and SLD are essential parts of domain name whereas third level, fourth level and other
level domain sub-domain are not its integral/essential parts.
3. DOMAIN NAME DISTRIBUTION
The allocation of IP address and domain names worldwide is done centrally. Earlier since
1992, the Network Solutions Inc. (NSI), under an agreement with the Network Solutions Inc.
(NSI) and the U.S. Department of Commerce registered the domain names till the Internet
Corporation for Assigned Names & Numbers (ICANN), a non-profit private sector
corporation based in Marina del Ray, California, USA assumed the management of Domain
Name System in 1999. The main functions of ICANN are (a) sets rules for giving the
numbered IP addresses/protocol parameters; (b) Domain name system management (c)
Adding new suffixes to the directory; and (d) Sets rules for arbitrating disputes over domain
ownership. It is significant to note that like NSI, ICANN and its accredited regional registrars
are also responsible for registration of ‘second level domain’ name along with top level
domain.

In India, the National Internet Exchange, a non-profit company registered under Section 25
of Company Act, 1956 with the objective of improved internet services in India by
facilitating exchange of domestic internet traffic country by Internet Service Providers in
India has been entrusted with the responsibility of setting up of <.in> country code top-level
domain Registry by the Government of India. For this purpose <.in> registry has been
created by NIXI which is an autonomous body under NIXI endowed with primary
responsibility of maintaining <.in> ccTLD and ensuring its operational stability, reliability
and security. It is also responsible for implementing any new policy evolved by the
Government of India & Ministry of Communications and Information Technology,
Department of Information Technology (DIT). The owners of registered Indian trademarks or

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 service marks who wished to protect their marks were given the opportunity to apply for
<.in> domain names before the general public between the period from January 1 to January
21, 2005 that was marked as sunrise period. After the sunrise period, the registry was thrown
open for open registration by the general public. As on December, 2006 more than 2,00,000
domain names have been registered. It is important to note that <.in> registry does not carry
out registration itself but it is done through its accredited Registrars.

4. TRADEMARK AND DOMAIN NAME

Initially, there was controversy as to whether Internet Domain Names are recognizable as
other Intellectual Properties such as Trademarks, which was put at rest by Division Bench of
Hon’ble Apex Court in Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd. 4 wherein it was
held that though the original role of a domain name was no doubt to provide an address for
computers on the internet but with the growth of internet from a mere means of
communication to a mode of carrying on commercial activity, a domain name is also used as
a business identifier. Therefore, it not only serves as an address for internet communication
but also identifies the specific internet site, and distinguishes specific businesses or services
of different companies. In the commercial field, each domain name owner provides
information/services which are associated with such domain name. Ergo, domain name may
pertain to provision of services within the meaning of Section 2(z) of the Trade Marks Act,
1999. Consequently a domain name, it was opined, as an address must, of necessity, be
peculiar and unique and where it is used in connection with a business, the value of
maintaining an exclusive identity becomes even more critical.
5. DOMAIN NAME DISPUTES
Like NSI, ICANN and its accredited registrars are also responsible for the registration of
'second-level domain" name on a first come, first served basis and do not evaluate or pre
screen whether second-level domain' name is same, or deceptively similar to, a registered
trademark or already registered domain name owing to reasons such providing easy
registration to start business, practical difficulty involved in determining who legitimately
hold rights to a domain name; etc. Therefore, on one hand such distribution of domain name
without pre screening identical SLD has resulted in growth of e-commerce all over the world

4
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145.

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 but on the other it gave the opportunity to some persons to pirate the names of others, hence
has created a problem of:
i. CYBERSQUATTING: Cybersquatting is registering various names or trademarks as domain
names with the hope of selling them at profit. Therefore, a user who has registered multiple
domain names' with the hope of selling them to:
• the business house who own trademarks identical to registered domain names; or
• the famous person (celebrity) whose name is identical to registered domain names.
In Panavision International L.P. v Toeppen 5, the appellant, Panavision International L.P.
averred that the respondent had stolen their valuable trademark and registered them as his
domain name. The appellant were having registered trademark "Panavision" and "Panaflex"
regarding camera equipments, that it used to promote its trademark through motion picture
and television credit and other media advertisement. In 1995, it applied for registration of
domain name as "Panavision.com" but realized that respondent, Toeppen had already
registered appellant's trademark as its domain name. The Ninth Circuit Court accepted the
plea of appellant that respondents conduct diminished the capacity of the AC Panavision
trademark that identifies and distinguish Panavision goods and service internet and hence
resulted in dilution of appellant's trademark.
Further, in Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri6, the defendants were restrained
from using the domain name ‘drreddyslab.com’, which was identical to the plaintiff’s
trademark in the name DR REDDY’S. Similarly in Titan Industries Limited v. Prashanth
Koorapati and Ors 7 , the Delhi High Court granted an ex-parte ad-interim injunction
restraining the defendant from using the domain name‘tanishq.com’ identical to the
plaintiff’s registered the trademark ‘Tanishq’ on the ground that consumers would likely
believe that the defendant is an affiliate of the plaintiff and would cause confusion and
deceive the public and further would enable them cash in on the plaintiff’s reputation and
goodwill, causing financial loss to plaintiff.
ii. TYPOSQUATTING: Typosquatting is registering a domain name which is minor variation
or common typographical permutations of already registered domain names so as to divert
internet users to their website by typing errors. Therefore, a typosquatter, is a person who

5
Panavision International L.P. v Toeppen 141 F.3d (1316) (9th Cir. 1998).
6
Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri 2001 PTC 859 (Del).
7
Titan Industries Limited v. Prashanth Koorapati and Ors Delhi High Court Suit No. 179 of 1998.

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 seeks to get profit from controlling domain names and obtain common typographical
permutations of already registered domain names. In Rediff Communication Ltd. v.
Cyberbooth8, the plaintiffs filed a suit for a permanent injunction restraining the defendants
from using the mark/domain name "RADIFF" or any other similar name so as to pass off or
enable others to pass off their business or goods or services as for the business or goods or
services of the plaintiffs. The defendants on the other hand contended that the manner of
watching for information on the Internet is such that there is no likelihood of deception or
confusion between www.rediff.com and www.radiff.com; that the user of the Internet can
never connect to a website by mistake. Besides, the users of the website are person skilled in
the use of computers and are educated people and thus there is no possibility of any
confusion being made by an Internet user in the two names. A.P. Shah, J. of Bombay High
Court observed that prima facie it was apparent that the only object in adopting the domain
name "RADIFF was to trade upon the reputation of the plain domain name and once the
intention to deceive is established, the court will make not further enquiry about likelihood of
confusion. Further the Sole Panelist, Alan L. Limbu in Asian Paints (India) Ltd. v. Domain
Admin9 held that registration of domain name <aisianpaint.com> by the defendants, identical
and confusingly similar to the complainant’s mark and domain name <asianpaints.com> was
a deliberate attempt to exploit users' typographical errors when seeking the complainant's
website www.asianpaints.com. It was further opined that absence of any legitimate interest
in the disputed domain name and the lack of association with paint on respondent website
demonstrate registration and use in bad faith; ergo directed transfer of domain name
<aisianpaint.com> to the complainant.
Similarly, in Electronics Boutique Holdings Corp. v. Zuccarini 10, the Court opined that the
defendant had acted in complete bad faith by knowingly and intentionally trading on
goodwill and reputation of plaintiff, EB in an attempt to mislead the public by registering
domain names ‘www.electronicboutique.com’, ‘www.electronicbotique.com’ similar to
‘www.electronicsboutique.com’ and ‘www.ebwold.com’ and ‘www.ebworl.com’ similar to
‘www.ebworld.com’ registered by the plaintiff. When a potential or existing online cutomer,
attempted to access EB’s website, mistakenly typed one of Zuccarini’s domain name

8
Rediff Communication Ltd. v. Cyberbooth AIR 2000 Bom 27.
9
Asian Paints (India) Ltd. v. Domain Admin Case No. D2002-0649, Admn. Panel Decision, WIPO.
10
Electronics Boutique Holdings Corp. v. Zuccarini 56 USPQ 2d (BNA) 1705 (ED Pa.2000).

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 misspelling, he was ‘mousetrapped’ in a barrage of advertising windows, featuring a variety
of products, including credit card, games, music and internet answering machines and the
internet user could not exit the Internet without clicking on the succession of advertisements
that appeared on the screen.
iii. IDENTICAL SLD IN DOMAIN NAMES REGISTERED BY DIFFERENT REGISTRIES
IN DIFFERENT COUNTRIES: Yet another problem relation to domain name is that
different registries all over the globe are registering the domain name and may provide
identical SLD. Example: www.nokia.com may already be registered but still in India
www.nokia.co.in may be registered which is not affiliated to www.nokia.com.
iv. REVERSE DOMAIN NAME HIJACKING: It means depriving a domain name owner of his
domain name. Generally, a powerful company tries to force a genuine domain name user
(owner) to give up his domain name which was acquired by him in good faith mostly by
deploying coercive measures such as threat of legal proceeding etc. In Giaclone v. Network
Solutions, Inc. & Ty. Inc11., plaintiff named its domain name <ty.com> after his son's name
ty. The defendant, Ty Toy Company tried to purchase the domain name from plaintiff and on
failing to do it threatened the plaintiff to bring legal action for trademark infringement.
Subsequently, plaintiff succeeded in obtaining a permanent injunction, restraining the
defendant from interfering with domain name of the plaintiff. Further, in Telstra Corp Ltd. v.
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India Yellow Pages ; the complainant being Australia’s leading provider of
telecommunications and information services, was publishing Australian Yellow Pages and
business directories. Subsequently, the respondent registered the disputed domain name
<australiayellowpages.com and <australianyellowpages.com> in June 1997. The Panel
observed that the Domain Names, are confusingly similar to a trademark or service mark in
which complainant has rights and held that Domain Names were registered in bad faith and
were used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the UDRP
policy. In doing so, it dismissed the Domain Name Hijacking and directed the respondent to
transfer the domain names <australiayellowpages.com and <australianyellowpages.com> to
the complainant.

11
Giaclone v. Network Solutions, Inc. & Ty. Inc. 1996 U.S. Distt. Lexis 20807 (N.D. Cal. 14.06.
12
Telstra Corp Ltd. v. India Yellow Pages Case No. D2000-0651, Admn. Panel Decsion, WIPO.

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 LIABILITY OF REGISTRAR IN CASE OF SUCH DISPUTES: In Lockheed Martin Corpn
v. Network Solutions Inc.(NSI) 13 , the moot question was whether NSI contravened the
Federal Trademark Dilution Act,1995 by accepting registrations of internet domain names
that are identical or similar to the plaintiff, Lockheed Martin Corpn. Service Mark i.e.
SKUNK works. The Court while dismissing the claims for liability of NSI as a contributory
infringer held that it is not its duty to see whether domain name (to be registered) is identical
or similar, to trademark or service mark of another person.
v. OTHER DISPUTES:
i. METATAGGING: Meta, a special type of tag, is codes contained within websites that
provide a description other than actual text contained in the web page that can be searched
such as author of the web page, general description of contents, keywords, and so on. They
are embedded in the web pages but do not affect its display and are always used in a web
pages <head>…</head> section before the display section that begins with the tag
<body>….</body>. 14 ‘Metatagging’ refers to a strategy, whereby the webmaster, in an
attempt to increase the relevancy score i.e. to optimize its website to receive a higher ranking
on the results page that search engine returns to its users on typing one or more search terms
into the text box of search engine, inserts, as many likely keywords as possible within the
HTML codes that comprise the webpage even when the keywords have little or nothing to do
with the content of webpage. In Re Oppedahl & Larson v. Advanced Concepts 15, Oppendahl
and Larson was a famous law firm with the domain name “patents.com”. They filed a case
against three companies contending that the companies used Meta tagging of the words
“Oppehdahl” and “Larson” to drive traffic to their sites. Court regarded this act of defendant
as trademark infringement and unfair competition.
Further, there have been few instances where the courts have recognized trademark
infringement resulting from the use of meta tags and also its use causing initial interest
confusion i.e during the initial period when a person is looking for a product before the time
of purchase. In Brookfield Communications, Inc. v. West Coast Entertainment Corp.16 the
Appellate Court (Ninth Circuit) for the first time based its decision primarily on initial

13
Lockheed Martin Corpn v. Network Solutions Inc.(NSI) 985 F. Supp. 949 (C.D. Cal 1997).
14
People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622 OF 2014.
15
Re Oppedahl & Larson v. Advanced Concepts 373 F. 3d ,1171 (Fed. Cir. : 2004).
16
Brookfield Communications, Inc. v. West Coast Entertainment Corp 174 F.3d 1036-9th Cir. 1999.

12
 interest confusion. In the instant case the appellant, Brookfield Communications Inc. was
engaged in the business of selling information about the entertainment industry under its
"Moviebuff" software, in which mark was registered in their favour in 1998. It had created a
website offering internet based services searchable database under its "Moviebuff" mark. The
defendant, West Coast Entertainment, one of the largest video rental chains in the United
States used the plaintiff's "moviebuff" mark in the metatags of its website as well as
registered a site at "moviebuff.com", which also contained a searchable entertainment
database. Brookfield sought to enjoin defendant both from operating a site at
"moviebuff.com", and from using the phrase "moviebuff" in meta tags contained on its site.
The district court denied Brookfield's application. The Ninth Circuit reversed, and awarded
Brookfield the requested injunctive relief. The court held that West Coast's activities were
likely to constitute trademark infringement because they were likely to confuse the public
about the source or sponsorship of West Coast's "moviebuff.com" web site. In reaching this
conclusion, the court relied on the fact that the marks at issue were identical, and were both
using the Internet to marketed related products. The court held that the addition of ".com" to
the phrase "moviebuff" was of no significance in comparing the identity of the marks used.
The Court further enjoined defendant from using the "moviebuff" mark in meta tags on its
site based on "initial interest confusion". It concluded that although there is no source
confusion in the sense that consumers know they are patronizing West Coast rather than
Brookfield, there is nevertheless initial interest confusion in the sense that, by using
"moviebuff.com" or "moviebuff" to divert people looking for "MovieBuff" to its web site,
West Coast improperly benefits from the goodwill that Brookfield developed in its mark.
In Playboy Enterprises, Inc. (PEI) v Netscape Communications Co. 17 , plaintiff had
trademarks "Playboy"® & "Playmate®". The defendants (search engines) keyed-in various
adult entertainment advertisements to a group of over 450 terms related to adult
entertainment, including the terms Playboy and Playmate, and also programmed the
advertisements in such a manner so as to appear in response to certain 'key' search terms.
Plaintiff contended that such conduct had the effect of infringing and diluting its mark. The
District Court observed that the plaintiff has not shown that "defendant's use plaintiff’s
trademarks in commerce" and further the words Playboy and playmate are different from

17
In Playboy Enterprises, Inc. (PEI) v Netscape Communications Co 55 F Supp 2d (SD Cal 1999).

13
 their registered trademark. While reversing the order, the Ninth Circuit relied on an expert's
report submitted by Playboy, in which the expert opined that a majority of consumers
believed that Playboy sponsored or was otherwise associated with the unlabelled banner ads
for adult entertainment products that appeared along with their search results for the term
'Playboy' thereby causing actual consumer confusion, the most important of the Sleekcraft
factors 18. The court further noted that a number of additional Sleekcraft factors may support a
finding of likelihood of consumer confusion, including the strength of Playboy's marks, the
fact that Playboy's competitors offered products of a similar nature to that offered by
Playboy, the fact that defendants used plaintiff's marks in their keying program, the low level
of care consumers typically use in making their purchasing decision for adult entertainment
products, and defendants' intentions in utilizing plaintiff's marks, which appeared designed to
capitalize on the goodwill associated therewith.
In People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors.19, the plaintiff averred that the
defendant was trying to pass off his website as that of the plaintiff’s by plugging plaintiff’s
proprietary mark shaadi.com and domain name www.shaadi.com into his website’s ‘web
pages’ meta-tags in his infringing domain name ShaadiHiShaadi.com. G.S Patel speaking for
the single judge bench of Bombay Court found that the defendant had diverted as much as
10.33% of the internet traffic away from shaadi.com to his own domain name. Terming the
defendant’s conduct in this regard as ‘online piracy’, the Bombay High Court held that
“There could be no better evidence of passing off, confusion and deception. This is, plainly,
hijacking the Plaintiffs’ reputation and goodwill and riding piggyback on the Plaintiffs’
valuable intellectual property.” Accordingly, the Court granted interim injunction in favour
of the plaintiff.
However in a bid to restrain an overboard interpretation and application of this doctrine, the
Appellate Court (the Ninth Circuit Court) in Playboy Enterprises Inc. v. Welles20 laid down a
three-factor test i.e (i) the product or service in question must be one not readily identifiable
without use of the trademark; (ii) only so much of the mark or marks may be used as is

18
AMF Inc. v. Sleekcraft Boats 599 F.2d 341 (9th Cir. 1979) viz., (1) strength of the mark (2) proximity of the
goods (3) similarity of the marks (4) evidence of actual confusion (5) marketing channels used (6) type of goods and
the degree of care likely to be exercised by the purchaser (7) defendant's intent in selecting the mark and (8)
likelihood of expansion of the product lines.
19
People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & Ors NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622 OF 2014.
20
Playboy Enterprises Inc. v. Welles 279 F. 3d 796 (9th Cir 2002).

14
 reasonably necessary to identify the product or service; and (iii) lastly, the user must do
nothing that would, in conjunction with the mark, suggest sponsorship or endorsement, by
the trademark holder.
ii. LINKING AND FRAMING: When a user accidently or knowingly clicks on a link
highlighted on a webpage known as “hypertext reference link”, a totally different webpage
appears which transports the user to a new location. This whole process is termed as
“linking”. Trademarks are also misused by this process of linking. Fake companies copy the
trademark of well-known brands and put them in the hyperlinks highlighted on various
websites. This is to deceit the consumers into believing that the website belongs to the
original trademark owners. Framing is another process whereby a website (framing site) links
to another site displaying that site within a window or frame. The first trademark
infringement case with respect to linking and framing was Washington Post v. Total News 21
wherein Total News, a company allowed the users to visit external sites that was linked to
their main site using hyperlink. The external sites were viewed by users within a frame full of
advertisements and logos of the total news company. The plaintiff’s contention was that the
links were located at such places that contained famous trademark icons of the plaintiff
companies. Allegations such as trademark infringement, federal trademark dilution, false
advertising were put on the company. The parties however, decided to settle the matter out of
court and arrived at the conclusion that the news company must take prior permission from
the plaintiff’s in order to link their sites.
6. DISPUTE RESOLUTION:
i. POSITION IN USA
• JUDICIAL DISPUTE RESOLUTION
The US Congress enacted two statutes for domain name judicial dispute resolution. The first
being the Federal Trademark Dilution Act, 1995 (FTDA) which provided protection to
famous trademarks. Injunction was granted to the plaintiff where he established that (a) he is
an owner of a famous mark; (b) that mark has been used by the defendant in commerce; (c)
his mark became famous prior to the defendant's use; and lastly (d) the defendant's use
resulted in dilution of the distinctive quality of the mark. The Act though did prove to be
useful in pursuing cybersquatters but with the origin of more organised forms of

21
Washington Post v. Total News Case No. 97 Civ. 1190 (PKL) settled 6.06.1997.

15
cybersquatting, it failed to act as an effective deterrent. It was felt that in order to curb that
Congress must distinguish between good faith and bad faith cybersquatting; ergo the Anti-
cybersquatting Consumer Prevention Act, 1999 was passed that amended the Trademark Act
of 1946 to make liable, in a civil action by the owner of a mark, (including a personal name
protected as a mark) any person who, with a bad faith intent, to profit from that mark,
registers, traffics in, or uses a domain name which, at time of its registration, is: (1) identical
or confusingly similar to a distinctive mark; (2) dilutive of a famous mark; or (3) is a
protected trademark, word, or name. This Statute was first applied in the case of Sporty’s
Farm L.L.C. v Sportsman's Market, Inc.,' where Omega, a mail order Sporty's catalog
company, selling mainly scientific process measurement and control instruments registered
the domain name "sportys.com" with NSI in 1995. Next year, Omega sold the domain name
to it's another, newly formed subsidiary Sporty's Farm, L.L.C, the plaintiff specializing in the
sale of Christmas trees. The defendant, Sportsman's Market Inc, a mail order catalog
company had been providing aviation equipment to pilots through its mail order catalogue
since the 1960s, under the name "Sporty's". It subsequently sought to recover the domain
name from the plaintiff. The District Court granted an equitable injunction under the FTDA,
1995. On appeal, the Second Circuit determined that the plaintiff acted "bad faith”
as mentioned in the ACPA as Omega was fully aware that sporty was very a strong mark for
consumers of those products. Moreover, after this lawsuit was filed it created another
company in an unrelated business that received the name Sporty's Farm so that it could: (1)
Use the sporty.com domain name in some commercial fashion, (2) Keep the name away from
Sportsman's and (3) Protect it in the event that Sportsman’s brought an infringement claim
alleging that a likelihood of confusion had been created by Omega’s version of
cybersquatting.
• NON-JUDICIAL DISPUTE RESOLUTION
Initially, the domain name disputes were resolved under the NSI's Dispute Resolution Policy
under which the owner of a federal trademark registration in US or a registration in foreign
country could challenge the use of an identical second level domain by submitting the
registration certificate to NSI, along with the proof that the trademark owner has sent the
domain name owner (defendant), written notice of the trademark owner’s (plaintiff) claim
that the use and registration of the domain name violates trademark owner's (plaintiff) legal

16
 rights. Subsequently, ICANN formulated its own dispute resolution policy, called Uniform
Domain Name Resolution Policy (UDRP) on 24th October 1999 that has succeeded in
creating a basis for global uniformity in the resolution of domain name disputes. Asian
Domain Name Dispute Resolution Centre; CPR Institute for Dispute Resolution; National
Arbitration Forum and WIPO are its approved service providers for non judicial dispute
resolution. The two Indian cases which were decided by the administrative panel WIPO
under ICANN' UDRP on March 15, 2000 where complainant got relief were Bennett
Coleman & Co. Ltd. v. Steven S. Lalwani 22 , and Bannet Coleman & Co. Ltd. v. Long
23
Distance Telephone Co. , the respondents registered the domain
names theeconomictimes.com and "thetimesofindia.com" respectively. The complainant,
publisher of two dailies "The Economic Times" and “The Times of India" contended that the
respondents' domain names were identical to its registered domain
names <economictimes.com> and <timesofindia.com> and represented its electronic
publications of its leading print newspapers. It was further contended that the domain names
of the respondent <thetimesofindia.com> redirected the Internet users to the do respondent's
website <indiaheadlines.com> which provided India related news while the
<theeconomictimes.com> redirected the Internet users to the respondent's website observe
<ifindyourperfectmate.com>. In the present case the WIPO panel confirmed the name a
presence of all three elements as stated in Para 4(a) of UDRP and ordered the respondents for
the transfer of disputed domain names to the plaintiff.
In Cox & Kings India Limited v. Rakesh Sud 24, Cox & Kings (C&K), a travel agency, on
discovering that some of their advertising lines had been registered as domain names, filed a
complaint before WIPO's Domain Name Dispute Resolution Centre for Contesting the
registration of domain names <duniyadekho.com> and <addmoretoyourworld.com>. It was
submitted by C&K that the cyber squatter had registered several other popular baselines as
domain names, which included Videocon's 'Bring home the leader', Pepsi's 'Yeh dil mange
more', Thumbs Up's 'Taste the thunder’. Further `Duniya dekho' was the brand for C&K's
group package holidays, whereas 'Add more to your world' was featured as an integral part of

22
Bennett Coleman & Co. Ltd. v. Steven S. Lalwani Case No. D2000-0014, Admn. Panel Decision, WIPO.
23
Bannet Coleman & Co. Ltd. v. Long Distance Telephone Co.Case No. D2000-0015, Admn. Panel Decision,
WIPO.
24
Cox & Kings India Limited v. Rakesh Sud Case No. D2000-0411.

17
 its advertisement; ergo the WIPO Panelist held that complainant had trademark rights in
`Duniya dekho' whereas the expression 'Add more to your world' was a mere advertisement
expression and there was not sufficient evidence service mark right in this expression and
hence the domain name <duniyadekho.com> was transferred to the complainant.
ii. POSITION IN INDIA
• NON-JUDICIAL DISPUTE RESOLUTION
In order to resolve disputes apropos .IN domain names, The National internet Exchange of
India (NIXI) has evolved an Alternative Dispute Resolution mechanism namely .INDRP (.IN
Domain Name Dispute Resolution Policy) and INDRP Rules of Procedures based on the
Indian Arbitration & Conciliation Act, 1996 and the principles encompassed under the
Uniform Dispute L Resolution Policy of ICANN. It came into effect from 28th June, 2005.
Under paragraph 4, every domain name Registrant is required to submit to a mandatory
Arbitration proceeding in the event that a Complainant files a complaint to the .IN Registry,
in compliance with this Policy and Rules thereunder, that:
i. the Registrant's domain name is identical or confusingly similar to a name, trademark
or service mark in which the Complainant has rights;
ii. the Registrant has no rights or legitimate interests in respect of the domain name; and
iii. the Registrant's domain name has been registered or is being used in bad faith.
a. REGISTRATION IN BAD FAITH (para 6): For the purposes of Paragraph 4(iii), the
following circumstances, in particular but without limitation, if found by the Arbitrator to
be present, shall be evidence of the registration and use of a domain name in bad faith:
i. circumstances indicating that the Registrant has registered or acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant, who bears the name or is the owner of the trademark or
service mark, or to a competitor of that Complainant, for valuable consideration in
excess of the Registrant's documented out-of-pocket costs directly related to the domain
name; or
ii. the Registrant has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name,
provided that the Registrant has engaged in a pattern of such conduct; or

18
 iii. by using the domain name, the Registrant has intentionally attempted to attract Internet
users to the Registrant’s website or other on line location, by creating likelihood of
confusion with the Complainant's name or mark as to the source, sponsorship,
affiliation, or endorsement of the Registrant's website or location or of a product or
service on the Registrant’s website location.
b. LEGITIMATE INTERESTS IN THE DOMAIN NAME (para 7): Any of the following
circumstances, in particular but without limitation, if found by the Arbitrator to be proved
based on its evaluation of all evidence presented, shall demonstrate the Registrant's rights
to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii) :
i. before any notice to the Registrant of the dispute, the Registrant's use of, or
demonstrable preparations to use, the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services;
ii. the Registrant (as an individual, business, or other organization) has been commonly
known by the domain name, even if the Registrant has acquired no trademark or
service mark rights; or
iii. the Registrant is making a legitimate non-commercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
c. PROCEDURE OF DISPUTE RESOLUTION (para 5 and INDRP Rules): The .IN
Registry shall appoint an Arbitrator out of the list of arbitrators maintained by the Registry
on its website at www.registry.in who shall conduct the Arbitration Proceedings in
accordance with the Arbitration & Conciliation Act 1996 as amended from time to time
and also in accordance with this Policy and rules provided thereunder.
The .IN Registry shall on receipt of the prescribed fees, forward the Complaint to the
Respondent, if it finds the Complaint to be in accordance with the Dispute Resolution
Policy and the Rules of Procedure, and if not, it shall within three (3) working days notify
the Complainant of the deficiencies identified, who shall then have five (5) working days
to correct any such deficiencies, failing which the arbitration proceeding will be deemed
withdrawn without prejudice to submission of another Complaint by the Complainant in
respect of the same domain name.25 The .IN Registry shall, within five (5) working days

25
Rule 4, INDRP Rules.

19
 following receipt of the Complaint after removal of objections if any, appoint an
Arbitrator from the .IN Registry’s list of Arbitrators and shall forward to him the
Complaint and documents annexed thereto 26 , who shall then within 3 days from the
receipt of the complaint the Arbitrator, issue a notice to the Respondent. 27 Once the
arbitrator is appointed the .IN Registry shall notify the parties of the Arbitrator
appointed.28 The Arbitrator shall, decide the complaint on the basis of the statements and
documents submitted to it and in accordance with the Arbitration and Conciliation Act,
1996, Dispute Resolution Policy, the Rules of Procedure and any bye-laws, rules and
guidelines framed thereunder and any law that the Arbitrator deems to be applicable29 and
pass a reasoned award within 60 days from the date of commencement of arbitration
proceeding 30 i.e the date on which the Arbitrator issues notice to the Respondent as
31
stipulated under Paragraph 5 (c) of these Rules of Procedure . In exceptional
circumstances this period may be extended by the Arbitrator maximum for 30 days.32 IN.
Registry shall communicate the full text of the decision to each Party within five (5)
working days after receiving the decision from the Arbitrator, 33 The language of the
arbitration proceedings shall be English and the fees shall be paid entirely by the
Complainant.
d. REMEDIES (para 10): The remedies available to be awarded by an Arbitrator are limited
to requiring the cancellation of the Registrant's domain name or the transfer of the
Registrant's domain name registration to the Complainant. Costs as may be deemed fit
may also be awarded by the Arbitrator.
e. TRANSFERS DURING A DISPUTE (para 12): The Registrant shall not transfer a
domain name registration to another holder:
i. In case an Arbitration proceeding is initiated pursuant to this policy, for a period of
fifteen working days after such proceeding is concluded; or

26
Rule 5(b), INDRP Rules.
27
Rule 5(c), INDRP Rules.
28
Rule 5(c), INDRP Rules.
29
Rule 12, INDRP Rules.
30
Rule 5(c), INDRP Rules;
31
Rule 4(c), INDRP Rules.
32
Rule 5 (C), INDRP Rules.
33
Rule 13, INDRP Rules.

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 ii. during a pending court proceeding or arbitration commenced regarding the domain
name, unless the party to whom the domain name registration is being transferred
agrees, in writing, to be bound by the decision of the court or arbitrator.
f. SETTLEMENT OR OTHER GROUNDS FOR TERMINATION (Rule 14, INDRP
Rules): If, before the Arbitrator's decision, the Parties agree on a settlement, the Arbitrator
shall terminate the arbitration proceeding and enter the settlement as the decision of the
Arbitrator.
In Meizu Technology v. Virginia Cross 34 , the Complainant, a company registered in
People’s Republic of China providing MP3 players and smartphones since 2003 in
countries like USA and India averred that the Respondent, Virginia Cross of Texas, USA
had registered a domain name <meizu.in> similar or identical to trademark MEIZU
belonging to the Complainant which had got registered in a number of jurisdiction all
around the world including India and USA with the intent of obstructing the business of
Complainant and to mislead the general public and its customers. The respondent did not
submit a response and the case, therefore proceeded ex parte. The Sole Arbitrator, held
that there was no evidence that respondent were known by the domain name; ergo were
not making a legitimate use of the same and had done so to attract customers by creating
likelihood of confusion.
• JUDICIAL DISPUTE RESOLUTION
Though there is no legislation in India which explicitly refers to dispute resolution in
connection with domain names the Indian Trade Marks Act, 1999 affords statutory
protection to trademark owner against trademark infringement. The Hon’ble Apex Court
in Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd.35 opined that although the operation
of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate
protection of domain names, this does not mean that domain names are not to be legally
protected to the extent possible under the laws relating to passing off.
In Yahoo! Inc. v Akash Arora36, plaintiff was granted permanent injunction restraining the
defendants from operating any business, selling, advertising and/or dealing in any services
or goods on the internet or otherwise under the trademark and/or domain name

34
https://ssrana.in/News/2016/11/India-Meizu-Wins-Domain-Name-Infringement-Case.htm.
35
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145.
36
Yahoo Inc. v Akash Arora & Anr. 1999 IIAD Delhi 229.

21
 ‘yahooindia.com’, or any other trademark and/or domain name that is identical with or
deceptively similar to the plaintiff’s well-known trademark “Yahoo!”on the ground that if
an individual is a sophisticated user of the Internet may be may be an unsophisticated
consumer of information and such a person may find his/her way to the different internet
site which provides almost similar type of information as that of the plaintiff and thereby
confusion could be created in the mind of the said person who intends to visit the Internet
site of the plaintiff, but in fact reaches the Internet site of the defendant. Dismissing the
defendant’s contention that the “Yahoo!” trademark/domain name purportedly belonging
to the plaintiff was not at the time registered in India and therefore could not be used as a
basis for an action in relation to trademark infringement and the word “Yahoo!” is a
general word that is neither unique nor invented and as such, did not possess any element
of distinctiveness it was opined that the service rendered by the plaintiff on the internet
had become recognized and accepted globally. The Court agreed that though “Yahoo!”
was a dictionary word, it had acquired sufficient uniqueness and distinctiveness so as to
enable the plaintiffs to be protected against passing off.
In 2004, the Hon’ble Apex Court in Satyam Infoway Ltd. Vs Sifynet Solutions Pvt.
Ltd.37 for the first time decided a case pertaining to domain name dispute. The respondent,
Sifynet Solutions Pvt. Ltd. was restrained from carrying on the business under the domain
name <www.siffynet.net> and <www.sijfynet.com > as it used the word 'Siffy' as part of
the respondent's corporate and domain name which was similar to the trade name of the
appellant i.e 'Sify', a coined word that the appellant claimed to have invented by using
elements of its corporate name, Satyam Infoway and domain names like www.sifynet,
www.sifymall.com, www.sifyrealestate.com etc on the grounds that that the appellant was
the prior user of the trade name 'Sify', that it had earned good reputation in connection
with the internet and computer services under this name; that the respondent's domain
names were similar to the domain name of the appellant and that confusion would be
caused in the mind of the general public by such deceptive similarity. On appeal, before
the High Court it was held that the finding that the appellant had earned a reputation and
goodwill in respect of the domain name 'Sify' was not based on a consideration of the
necessary factors. Allowing the appeal, the Hon’ble Apex Court held there was sufficient

37
Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145.

22
evidence to show that the public associates the trade name SIFY with the appellant.
Further it was held that there was a visual and phonetic similarity between ‘Sify’ and
‘Siffy’and adding an extra f to sify has made the domain name of respondent deceptively
similar to domain name of appellant, and ergo there was likelihood of confusion in the
minds of general public. Lastly, dismissing the respondent’s contention that confusion is
unlikely because they operate in different fields it observed that a deceptively similar
domain name may not only lead to a confusion of the source but the receipt of unsought
for services. Besides, it was opined that the appellants have brought on record printouts of
the respondent's website in which they have advertised themselves as providing inter alia
software solution, integrating and management solutions and software development
covering the same field as the appellant.

23
 BIBLIOGRAPHY

• Ahmed, Farooq., “Cyber Law in India”, New Era Law Publishers, 3rd edition, 2008
• Mittal, D.P., “Law of Information Technology”, Taxmann Publishers, New Delhi, Ed. 2000
• Diwan., Prag and Shimmi Kapoor, “Cyber and E-Commerce Law”, Bharat Publishers, 2nd
Edition, 2000
• Sharma, Vakul., “Information Technology: Law and Practice”, Universal Law Publishers,
2nd edition, 2007
• Verma., Dr.Amita., “Cyber Crimes and Law”, Central Law Publications, Allahabad, Ed.
2012
• Vinod Vipull, “Cyber and Technology Laws”, Krishna Publications, New Delhi, 2009.
Information Technology Act, 2000

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