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DOMAIN NAMES - CASE LAWS IN INDIA

 

INDIAN IP LAWS

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A trend of increased disputes over web addresses is gaining ground in India over the past few years as companies recognize the commercial potential on the Internet. While the global marketing and advertising strategies through Internet constitutes considerable potential for business expansion the utilization of the trademark on Internet is still a complex issue. The conflict between various issue regarding domain name disputes and legal protection needs to be properly addressed so as to strike a balance between the rights of the trademark holders and the rights of the public to use the words in the English language in legitimate ways, as ably reflected in domain name dispute of business.in, where the domain name was considered generic and hence was cancelled and forfeited by NIXI. Following are some cases which have been decided successfully by NIXI

Starbucks Corporation v. Mohanraj (Decided on 26th November, 2009)

Respondent’s domain name www.starbucks.co.in was confusingly similar to complainant’s domain name www.starbucks.in. It was contended that the domain name of the respondent is identical & confusingly similar to the complainant’s domain name. Also, it was contended that the respondent had no legitimate interest in the domain name. Further it was contended that the mark was used by the respondent in bad faith.

The respondent on the other hand contended that at the time of registration the .IN registry or his registrar didn’t ask him to submit any supportive documents to register the domain name. The respondent further submitted that that the complainant had neglected the disputed domain name for 4 years at the time of registering www.starbucks.in even though the .co .in was available before the .in extension was released. The respondent prayed for cancellation of complaint and to allow him to use the domain name for his own purpose of another business which would not be in complainant's industry.

The rejoinder submitted by the complainant  stated that the mere fact that at the time of booking/ registering the domain name www.starbucks.co.in the .in registry or his registrar did not ask respondent to submit any supportive documents / evidence to register the Domain, did not bestow upon him any absolute right in the said domain name. Further it was submitted that respondent had not given any explanation as to how he came about adopting or hit upon the domain name www.starbucks.co.in, when he is the registered proprietor of the trade mark Starbucks in India since 1995. Also it was submitted that the respondent is neither commonly known as Starbucks nor making a legitimate or fair use of the said domain name. The complainant further submitted that the domain name of respondent was identical to complainant's registered trade mark and service mark Starbucks. The complainant further submitted that it had bonafide right in the registered trade mark Starbucks and the respondent had no right or legitimate interest in the domain name and he had got it registered for unjust enrichment. The domain name had been used in bad faith and therefore the respondent was not entitled to retain the said the domain name. The complainant prayed for the transfer of the domain name www.starbucks.co.in to the complainant.  

The learned arbitrator held that the disputed domain name was confusingly similar or identical to the complainant and that  they had right in the trademark. Regarding the question of legitimate interest, it was held that since the respondent did not provide any positive, cogent and specific evidence that it was known or recognized by domain name, he had neither put forth nor provided such evidence. Therefore, the respondent had no right or legitimate interest in the domain name. Further it was held that the respondent had got the domain name registered in bad faith. Also it was held that domain name be transferred to the complainant. 

Morgan Stanley v. Bharat Jain (Decided on 28th October, 2010)

The disputed domain name www.morganstanleybank.co.in was registered by the respondent on June 20, 2010. The complainant contended that addition of ccTLD “.co.in” was insufficient to render the disputed domain name dissimilar to the complainant’s mark MORGAN STANLEY. Hence the disputed domain name was confusingly similar to the above stated mark.

Further it was contended that as the respondent was not commonly known by the mark MORGAN STANLEY he had no right or legitimate interest in respect of the disputed domain name. Regarding the element of bad faith, it was contended that the respondent had registered the above stated domain name with the intent of earning profit and mislead the customers/ users of the complainant’s domain name www.morganstanley.in 

The learned arbitrator held that the complainant’s mark and domain name MORGAN STANLEY was a coined word and highly distinctive in nature and as such the consumers looking for MORGAN STANLEY may instead reach the respondent’s website and hence the disputed domain name was confusingly similar to the complainant’s trademark. Regarding legitimate interest, the learned Arbitrator upheld the complainant’s contention that the respondent was in no way known with the said trademark and further held that as the complainant had not licensed or permitted  the respondent to use the trademark the respondent did not have any legitimate interest in the disputed domain name. The respondent through one of its customers had tried to sell the disputed domain name to the complainant when a cease & desist letter was sent to the respondent which reflected that the domain name was registered and used in bad faith and with the intent to offer the disputed domain for sale to the complainant or to a competitor for a valuable consideration. 

Google Inc. v. Gulshan Khatri (Decided on  6th May, 2011)

The Complainant  filed the instant complaint challenging the registration of the domain name <googlee.in> in favour of the respondent. The grievance of the complainant was regarding the latter’s act of adopting an identical domain name and that also in respect of similar services to that of the complainant

The Complainant contended in its claim that the Respondent simply wished to usurp the domain name and ride on the goodwill that the Complainant has built over the years by its hard work. Further it was contended that the disputed domain name was visually, conceptually and substantially identical to the Complainant's domain name and that there was no difference between both the domain names. The complainant further contended that the name <googlee.in> appeared immediately and obviously connected with the Complainant and its business and the public would perceive it as such. It was also contended that both the domain names were used as search engines. The Complainant further contended that the confusion which is likely to be brought into people's mind through the disputed domain name would not only improperly benefit the Respondent but also disrupt the business of the Complainant, dilute its rights and expose it to the risk of fraud.

The Complainant further submitted that the disputed domain name was registered in favour of the respondent on 17th February 2007 whereas the same domain name <google.in> had been extensively operating and serving the market worldwide way back from 1997. Furthermore the Complainant submitted that it had not authorized, licensed or otherwise consented to the Respondent's use of its mark or brand.

The respondent did not deny the knowledge and use of the domain name/trade mark GOOGLE ‘by the Complainant.

The learned Arbitrator held that impugned domain name <googlee.in> was identical and confusingly similar to the other prior registered domain name and registered trade mark of the complainant and directed the Registry to cancel the said domain name forthwith and transfer the said domain name in favor of the Complainant. 

Reference link for dispute decisions: An Evaluatiuon of the .IN DOMAIN Name Dispute Resolution Policy(INDRP) in India

The complete list of INDRP pending dispute decisions can be viewed on: Pending Dispute Decisions

The complete list of INDRP decided case decisions can be viewed on:  Dispute Case Decisions

For more information on Domain Name Case Law in India please write to us at: info@ssrana.com

 

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