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Passing Off in Internet Domain Names—A Legal Analysis


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              Journal of Intellectual Property Rights
              Vol 9, March 2004, pp 136-147

                 Passing Off in Internet Domain Names—A Legal Analysis
                                                          Sunando Mukherjee†

                                      Symbiosis Law College, Senapati Bapat Road, Pune 411 004

                                            Received 30 June 2003; Revised 23 January 2004

                         Internet today has revolutionized the world of communication; it has brought the whole
                    world at the click of the mouse. It has removed all the trade barriers and has transformed the
                    world into a small village. But as there is a growth in the Net subsequently a rise in interaction
                    between more and more number of people, so arises a dispute with the interface, viz. the
                    Internet. The growth of web sites has also given rise to a new area of disputes- domain name
                    disputes. This article has tried to analyse the position of law (before the notification of the Trade
                    Marks Act, 1999) governing such a tort in other countries in comparison to India, and also such
                    other international bodies, which have tried to allay the fears of genuine users, and bring them
                    Keywords: Passing off, Internet domain names, Domain name disputes, Trademark law,
                    Infringement, Cyber squatting

              With the advent of Internet, the world                     take into account all traditional areas of
              today is witnessing a revolutionary                        intellectual property, contract and tort and
              change in the field of communications.                     place them on an inter-jurisdictional
              Out of nowhere, the Internet seems to                      network. The growth of web sites has also
              have exploded on the forefront of several                  given rise to a new area of disputes-
              commercial      establishments,    organi-                 domain name disputes.
              zations, governments and institutions.
              Everybody, who is somebody, seems to                       Domain Name —What is It All About?
              have something to do with the Internet.                       Essentially, a domain name is Internet
              Flashing an Internet address has become a                  equivalent of a telephone number or a
              sine qua non for almost every                              geographical address1. The communi-
              organization. Doing business on Internet                   cation format used on the Internet is
              allows a person to reach beyond his own                    called Internet Protocol (IP). As a part of
              jurisdiction. The thinking must likewise                   the IP,
              go beyond national or provincial                              Internet addressees are comprised of a
              territorial laws. E-commerce law must                      string of digits delimited by periods
                MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                      137

(commonly called “dots”). The delimited      Top Level Domain put together comprise
field indicates the network, sub-network     a "domain name". Thus, in the domain
and the local address, read from left to     name "", ".com," is the
right. A typical Internet address might      TLD, "indiainfo" is the SLD and "law" is
appear as "11.23.55" where "11" denotes      the SD2.
the network, "23" denotes the sub-
network and "55" denotes the computer        Domain        Name       Disputes    and
itself. This all-numeric form is known as    Trademarks Law
the IP address. Domain names are                Domain name disputes are relatively
nothing but proxies for the IP address,      unheard of in the Indian courts. There
although      there    is    no    logical   have been hardly a handful of reported
correspondence between the IP address        decisions regarding domain name
and the domain name. When computers          disputes and the case law has still not
communicate on the Internet, they do not     developed in India. However, with the
"talk" in terms of domain names, but         use of the Internet catching up at an
interpret a domain name into the             amazing pace in the country, the Indian
corresponding IP address. All servers on     courts would surely be faced with domain
the Internet interpret the same domain       name disputes in times to come. A global
names the same way. That is the reason       study of domain name disputes showed
why when one types "", one      that they could be broadly classified
is taken to the Web site hosted by           under     the    following   heads:   (i)
indiainfo, irrespective of where the         Infringement, (ii) Concurrent claim, and
person accessing the data is located or      (iii) Cyber squatting.3
which server he is connected to. It is
essentially for this reason that domain      Infringement
names are unique and therefore, identical       This refers to disputes where the
domain names cannot be offered to two        original registrant intentionally trades off
separate entities. As with IP addresses,     the resemblance between the domain
domain names are also delimited with         name and another famous trademark.
periods (dots), which are read from right    Thereafter, the registrant tries to cash on
to left. Thus, the domain name               the reputation of the trademark holder by
"" indicates ".com " as the     running a business similar to that of the
network and "indiainfo" as the sub-          trademark holder. In such cases, the use
network. The domain name at the              of the mark (domain name) would be
extreme right is called the "Top Level       illegal under the existing trademark law,
Domain" (TLD) and any domain to the          regardless of whether the infringement
left of the TLD and separated by a "."       occurred as Internet domain names or in
(dot) is the Second Level Domain (SLD).      any other context4. The standard factors
A domain to the left of the SLD is known     which determine infringement under the
as the Sub-domain (SD). The Sub-             traditional trademarks law like: (a) the
domain, Second Level Domain and the          strength of the trademark; (b) the
138                        J INTELLEC PROP RIGHTS, MARCH 2004

deceptive     similarity   between    the      divert customers away from a trademark
plaintiff's and the defendant's mark; and      owner's site either for commercial gain or
(c) the likelihood of confusion in the         with the intent to disparage a trademark
minds of the public, etc. would apply in       in a way that creates the likelihood of
cases of infringement of domain names          confusion among consumers7.
also5.                                            One of the first cases in which a US
                                               court was called upon to implement the
Position in US                                 ACPA was in Sporty's Farm LLC vs
   The US seems to be a forerunner as far      Sportsman's Market, Inc8 In the above
as domain name litigation is concerned.        case, the facts were as follows:
Domain name disputes have multiplied              Sportsman's Market, a mail order
many fold in the US over the past few          catalogue company, was engaged in the
years. The US has now passed the United        business of selling products to aviation
States Anti-cybersquatting Consumer            clientele and had registered the trademark
Protection Act (ACPA), which came into         "sporty's" A company called Omega
effect from 29 November 1999. The              entered the aviation catalogue business,
ACPA, also called the Trademark Cyber          formed a subsidiary called "Pilot's
Piracy Prevention Act, calls for a broad       Depot", and registered the domain name
protection of business trademarks. Guilty      "" After Sportman's Market
parties can be found liable for statutory      filed its lawsuit, Omega launched another
damages of up to $300,000 per trademark        subsidiary called Sporty's Farm to sell
if the registration of the Uniform             Christmas trees and then sold the
Resource Locator (URL) is considered           "" domain to Sporty's Farm.
"willful"6. The statute contains a long list      The Court found that the defendant
of factors that suggest "bad faith" on the     acted with a "bad faith intent to profit"
part of a domain name owner and a              from the domain name "" not
trademark owner's ability to bring an          because Sporty's Farm attempted to sell
action directly against offending domain       the domain name to Sportsman's Market,
names. In fact, the list of factors that       Inc, the other owner of the trademark
suggest bad faith goes well beyond the         "sporty's", but because of other bad faith
typical cyber squatting scenario. The          factors contained in the Act. One fact
ACPA does not centre on the fact that a        noted by the court was that neither
cyber squatter offered to sell or transfer     Sporty's Farm nor Omega had any
the domain name to the trademark owner.        intellectual      property    rights    in
It also includes factors such as whether a     "" at the time that Omega
cyber squatter has any intellectual            registered the domain name. It was also
property rights in a domain name;              pointed out by the Court that the list of
whether a cyber squatter has been              "bad faith" factors were only indicators
engaging in a bona fide use of a domain        that may be considered along with other
name to offer his own goods or services;       facts. The Court found that the purchase
or whether a cyber squatter intended to        and use of the domain name by Sporty's
                      MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                  139

Farm, generally suspicious in that Omega          In relation to the Civil Jurisdictions and
created a company in a unrelated business      Judgements Act, 1982, particular
that received the name Sporty's Farm only      attention should be taken of the 1995
after the lawsuit was filed.                   amendments, specifically Sections 10 and
   In the US, the courts have brought          11. Section 10 abolished the double-
cybersquatters within the purview of the       actionability rule, which allowed claims
Anti Dilution Law. Interestingly, not a        only where the tort would be actionable
single court has upheld the right of a         in England under UK law and actionable
cybersquatter to profit from the prior         as a tort in the foreign jurisdiction.
registration of the domain name. In fact,      Section 11 was enacted to clarify the
although the Federal Dilution Act does         required tests for jurisdiction for contract,
not provide for the transfer of a domain       tort and other claims. The rules are as
name as a remedy, the American courts          follows: for actions in tort, the
have not merely enjoined the use or sale       jurisdiction is the place of the tort; for
of domain names by cybersquatters, but         actions in contract, the jurisdiction is the
have also transferred ownership to the         place where there is the substantial
challengers. This is one of the clearest       performance of the contract; for all other
examples of the way in which trademark         actions, the jurisdiction is the country
rights in cyber space are being expanded       with the most significant relationship
beyond their normal meaning in law9.           with the occurrence10.
                                                  The courts have held that cyber
Position in England                            squatting is violative of the rights
   Recent intellectual property disputes       protected under the trademarks law. In
have led to a reconsideration of the           Marks & Spencer PLC v One in a
applicable rules of jurisdiction and           Million11, the High Court of Justice,
justifiability. These actions are needed to    Chancery Division, enjoined the activities
apply the Brussels Luguano Convention.         of two cyber dealers and their related
The scope of application of this               companies, who had obtained and were
Convention may be wider in the UK              offering for sale or “hire”, numerous
courts than of those in Europe.                domain names containing well-known
   In the United Kingdom one is subject        marks. In this group of cases, the Court
to the Civil Jurisdictions and Judgements      enjoined “the threat of passing of” (a
Act, 1982, and the Private International       threat which would become a reality if an
Law Amendment Act, 1995, the common            offending domain name was sold to and
law on conflicts of law and the Supreme        used by a stranger to the trademark
Court rules of practice. The statutes cited    owner), issuing a warning to cyber
incorporate into UK law the Brussels           squatters:
Luguano Convention of 1968, which
affects the whole of Europe (Convention        “Any person who deliberately registers a
countries). Non-convention countries are       domain name on account of its similarity
also affected.                                 to the name, brand name or trademark of
140                        J INTELLEC PROP RIGHTS, MARCH 2004

an unconnected commercial organization         and the system for registering domain
must expect to find himself on the             names, on the other hand. The former
receiving end of an injunction to restrain     system (trademarks) is administered by a
the threat of passing off, and the             public (governmental) authority on a
injunction will be in terms which will         territorial (either national or regional)
make the domain name commercially              basis, which gives to rights on the part of
useless to the dealer"                         the trademark holder that may be
                                               exercised within a territory. The latter
   As is evident from the above, the           system (domain names) is usually
courts over the world have generally           administered by a non-governmental
frowned over cyber squatters and have          organization (Netronics) without any
protected the plaintiffs under the             functional limitation, domain names are
trademark law.                                 registered on a first come first serve basis
                                               and a offer unique, global presence on the
Position in India                              Internet12.
   Although the above cases seem to have          The Trade and Merchandise Marks
great persuasive value for the Indian          Act, 195813, defines trademarks as
judiciary, one has to keep in mind that the    follows:14
above decisions have been passed on the        “trademark” means: (i) in relation to
basis of the applicable codified trademark     chapter X15 (other than section 81)16 , a
laws.                                          registered trademark or a mark used in
   The main issue of contention is the         relation to goods for the purpose of
relationship between domain names and          indication or so as to indicate a
trademarks. While domain names were            connection in the course of trade between
originally intended to perform only the        the goods and some person having a right
function of facilitating connectivity to       as proprietor to use the mark; and (ii) in
remember and use. Businesses have              relation to other provisions of this Act, a
started to realize the significant potential   mark used or proposed to be used in
of web sites as a primary means of             relation to goods for the purpose of
facilitating E-commerce. By using trade        indication or so as to indicate a
and service marks as their domain names,       connection in the course of trade between
businesses hope to attract their potential     the goods and some person having the
customers to their web sites and increase      right, either as proprietor or as registered
their market visibility, ultimately their      user, to use the mark whether with or
sales and profits.                             without any indication of the identity of
   With the growth of Internet in India,       that person, and includes a certification
domain names have increasingly come            trademark registered as such under the
into conflict with trademarks. The             provisions of Chapter VIII.
possibility of such conflict arises from the      Essentially, trademarks are names and
lack of connection between the systems         symbols that a company uses to identify
for registering trademarks, on one hand        its goods or services in the marketplace.
                 MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                      141

Trademarks identify the source of the         central question in any infringement case
product and also help indicate the quality    is whether there is a substantial likelihood
of a product or service17. The trademark      of consumer confusion due to the
law seeks to provide effective protection     similarity between the marks.
of trademarks18 and prevents the use of       The Indian Courts on Domain Name Passing
fraudulent marks on merchandise19             Off
Suffice to state that the Act seeks to           Passing off on the Internet litigation is
prevent consumer confusion as to the          not very common in India. The first
source of a particular good or service by     reported Indian case was Yahoo! Inc. v
prohibiting a subsequent competing            Akash Arora22, the former, the global
business from using an identical or           Internet media search and information
extremely similar product or symbol as        network, filed an action against the latter
the previous competitor20.                    on the Internet as those of the plaintiffs’
   Under the Act, a registered trademark      by     adopting     the    domain     name
is infringed by a person who, not being a     “”.
registered proprietor of a trademark or a        The plaintiffs submitted that their
registered owner thereof using by way of      domain      name       “”      was
permitted use, uses in the course of trade,   registered with Network Solutions Inc
a mark which is identical with or             (NSI) since 1995, that it had become
deceptively similar to the trademark in       well-known and they had obtained
relation to any goods in respect of which     registrations on the trademark “Yahoo” or
the trademark is registered and in such       variations thereof in approximately 69
manner so as to render the use of the         countries, although not in India. The
mark likely to be taken as being used as a    defendants registered the domain name
trademark21. Unregistered owners of           “” with NSI in November
trademarks are also entitled to protection    1997, as well as 16 variations containing
of their marks under the scheme of the        the word “yahoo”. The Plaintiff objected
Act. Therefore, in order to prevail in a      to the defendant’s use of the domain
trademark infringement claim, the             name and the defendants responded
claimant must show that:                      modifying the announcement of their
                                              forthcoming web site and by including
(1)   the marks is protectable under the
                                              the             disclaimer              that
      provisions of the Trade and
                                              “” had no connec-
      Merchandise Marks Act;
                                              tion with Yahoo, Inc. of California, USA.
(2)   the defendant is using the same or
                                              The defendants thereof activated their
      similar mark; and
                                              web site and adopted substantial part of
(3)   the defendant is likely to cause
                                              plaintiffs’ Singapore web site named
      consumer confusion regarding the
                                              “” which contained a section
      origin of the goods.
                                              in India.
Although the first two issues are                The defendants submitted that a web
necessary for finding an infringement, the    site, unlike a trademark, is a specific
142                        J INTELLEC PROP RIGHTS, MARCH 2004

address and that their disclaimer would         such provider of service from passing off
eliminate any confusion. They further           the services rendered by other as that of
pointed out that there was no protection        the plaintiff. As a matter of fact in a
for services in India that no goods were        matter where services rendered through
involved in this case. In addition they         the domain name in the Internet, a very
claimed that, contrary to the plaintiff, that   alert vigil is necessary and a strict view is
we offered only content specifically            to be taken for its easy access and reach
directed to India, that “yahoo” was an          by anyone from any corner of the globe.”
english dictionary word available and that         This was the first case in India in
Internet users, who are usually                 which the court has applied trademark
sophisticated would know the difference         law to support a judgement in a domain
between the two web sites.                      name dispute. This decision is
   The Delhi High Court rejected the            particularly significant as the Indian
defendants’ argument, on the grounds,           Trade and Merchandise Marks Act, 1958
inter alia, the trademark law applies           does not provide for registration of
equally to domain names on the Internet;        service marks and the court in effect
that, where the parties are in the same or a    extended the principles common law to
similar line business, the use of similar       cover services offered through the
names would result in confusion and             Internet23.
deception; that the disclaimer by the              Similarly Bombay High Court in Rediff
defendants on their web site did not            Communications Ltd v Cyberbooth24 was
reduce the likelihood of the confusion;         faced with a case where the defendant has
that the plaintiff had obtained registration    adopted         the      domain         name
on the trademark YAHOO and variations           “” despite the existence
thereof in 69 countries; that the mark was      of a well-known web site of the plaintiffs
widely publicized and well-known; and           “”. the court found such
that the fact that “Yahoo” was a                an adoption by defendant was completely
dictionary word was no reason to deny           dishonest and held that once the intention
protection for the mark. The mere fact          to deceive is established the court would
that the Internet users were technically        not make any further enquiry whether
educated and literate, this would not           there is any likelihood of confusion or
reduce the risk of confusion.                   not.
   The court held that:                            The Court relied upon the decision in
“In an Internet service, a particular           Parker Knoll v Knoll International25
Internet site could be reached by anyone        where the House of Lords had held that
anywhere in the world who proposes to           where the object is to device the court
visit the said Internet site. With the          will be very much more ready to infer
advancement and progress in technology,         that its object has been achieved.
services rendered on the Internet has           Moreover, in the “rediff” case the Court
come to recognized and accepted and are         relied on the fact that both the plaintiff
being given protection so as to protect         and the defendant had a common field of
                 MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                       143

activity; both operated on the net and         and courts but everywhere, more
provided information of a similar nature,      specifically in India the spate of litigation
both offered the facility of sale of books,    is so high that such cases take years to be
etc., both offered a chat line and a cricket   decided. So the forums like WIPO
opinion poll.                                  arbitration and mediation become
   The Court further held that there is        indispensable.
every possibility of the Internet user            The WIPO Arbitration and Mediation
getting confused and deceived in               Center, established in 1994 as a unit of
believing that both domain names belong        WIPO’s International Bureau, offers
to one common source and connection            alternatives to court litigation for the
although the two belong to two different       resolution of commercial disputes
persons. The Court was satisfied that the      between private parties concerning
defendants have adopted the domain             intellectual property. The WIPO Center
name “Radiff” with the intention to trade      has created – with the active involvement
on the plaintiff's reputation and              of many of the foremost alternative
accordingly the defendant was prohibited       dispute resolution (ADR) and intellectual
from using the said domain name26.             property experts – the WIPO Mediation,
   In Titan Industries v Prashant              Arbitration, and Expedited Arbitration
Koorapti & others27, the defendant             Rules and Clauses. The WIPO Rules and
registered      the      domain       name     Clauses, which exist in several languages,
“”. The plaintiff company,          incorporate the latest developments in the
which has been using the trademark             area of dispute resolution and can be used
“tanishq” with respect to watches              in any legal system in the world. The
manufactured by it, sued for passing off       WIPO       Center     advises     on,    and
and alleged that the use of the domain         administers, procedures conducted under
name by the defendants would lead to           these Rules. In addition, parties can draw
confusion and deception and damage the         upon a growing list of over 1,000
goodwill and reputation of the plaintiffs.     independent WIPO arbitrators and
   The Delhi High Court granted an ex          mediators from some 70 countries. The
parte ad interim injunction restraining the    candidates on the WIPO list of neutrals
defendants from using the name                 range from seasoned dispute-resolution
"TANISHQ" on the Internet or otherwise         generalists     to    highly     specialized
and from committing any other act as is        practitioners and experts covering the
likely to lead to passing off of the           entire legal and technical spectrum of
business and goods of the defendants as        intellectual property. The WIPO Center
the business and goods of the plaintiff28.     also plays a leading role in the design and
                                               implementation of tailor-made dispute
WIPO Arbitration and Mediation                 resolution     procedures.     The      most
Centre                                         prominent example is the Uniform
  Though each country has its own law          Domain Name Dispute Resolution Policy
governing protection of domain names,          (UDRP)        which      is    based       on
144                      J INTELLEC PROP RIGHTS, MARCH 2004

recommendations made by WIPO to              name must submit to any proceeding that
address certain abusive practices in the     is brought under the UDRP, regardless of
domain name system. Since commencing         whether the domain name registration
its domain name dispute resolution           was effected before the entry into force of
service in December 1999, the WIPO           the UDRP. Apart from the gTLDs, certain
Center has processed well over 20,000        ccTLDs have also adopted the UDRP on
cases.                                       a voluntary basis.
   Following WIPO’s recommendations,
the Internet Corporation of Assigned         Global Scope
Names and Numbers (ICANN) adopted               The UDRP is international in scope, in
the Uniform Domain Name Dispute              that it provides a single mechanism for
Resolution Policy on 26August 1999. The      resolving a domain name dispute
UDRP provides holders of trademark           regardless of where the registrar, the
rights with an administrative mechanism      domain name registrant, or the
for the efficient resolution of disputes     complaining trademark owner is located.
arising out of bad faith registration and    Any person or company in the world can
use by third parties of domain names         file a request for the resolution of a
corresponding to those trademark rights.     domain name dispute through the UDRP
Under the UDRP, trademark owners may         procedure, asserting that each of the
submit disputes arising from alleged         UDRP criteria is present in its case.
abusive registration of domain names to a    UDRP proceedings administered by the
mandatory      expedited   administrative    WIPO Center have involved parties from
proceeding, by filing a complaint with an    over 100 countries across the world.
approved dispute resolution service             Some of the advantages of WIPO
provider (provider). For gTLDs these         Arbitration and Mediation Center over
providers are accredited by ICANN, and       ordinary litigation are:
for those ccTLDs that have voluntarily
                                             (1) Time and Cost Effective
adopted the UDRP, the registration
                                                Compared to court litigation, the
authority of the ccTLD in question
                                             UDRP procedure is highly time- and cost
accredits the providers.
                                             effective, especially in an international
   Pursuant     to   their   accreditation
                                             context. A domain name case filed with
agreement with ICANN, all gTLD
                                             the WIPO Center is normally concluded
registrars agree to abide by and
                                             within two months, involving one round
implement the UDRP. Accordingly, the
                                             of limited pleadings and using mostly
UDRP is applicable to the gTLDs, .com,
                                             online procedures. WIPO fees are fixed
.net, .org, and to all more recently
                                             and moderate.
introduced gTLDs. The UDRP is
incorporated into the standard dispute       (2) Enforceable Decisions
resolution clause of all gTLD domain            A key advantage of the UDRP
name registration agreements. On this        procedure is the mandatory implement-
basis, the registrant of a gTLD domain       ation of the resulting decisions. There are
                   MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                     145

no international enforcement issues, as         The Three UDRP Criteria
registrars are obliged to take the                 The UDRP procedure is designed for
necessary steps to enforce any UDRP             domain name disputes that meet the
transfer decisions, subject to the losing       following cumulative criteria (UDRP,
party’s right to file court proceedings and     paragraph 4(a)): (i) the domain name
suspend the implementation of the               registered by the domain name registrant
decision.                                       is identical or confusingly similar to a
                                                trademark or service mark in which the
(3) Transparent                                 complainant has rights; and (ii) the
   The UDRP process is transparent. The         domain name registrant has no rights or
WIPO Center posts all disputed domain           legitimate interests in respect of the
names, case status, case statistics and full-   domain name in question; and (iii) the
text of decisions on its web site. In           domain name has been registered and is
addition, the WIPO Center’s online Index        being used in bad faith.
of WIPO UDRP Panel Decisions offers             Reliefs Given by WIPO
easy access to the jurisprudence                   Disputes under the UDRP are decided
developed under the UDRP.                       by independent panels appointed by the
                                                WIPO Center. The remedies available to
(4) Without Prejudice to Court Adjudication     a complainant in a UDRP proceeding are
   Once a complainant initiates a UDRP          limited to the transfer of the disputed
proceeding, the registrant of a domain          domain name registration to the
name must submit to the process.                complainant, or the – rarely requested –
However, in line with its administrative        option of cancellation of the domain
character, the UDRP does not preclude           name registration. Neither monetary nor
the domain name registrant or the               injunctive relief is available. Panels
trademark holder from submitting the            decide on the basis of the submitted
dispute to a court for independent              complaint and response, without oral
resolution; either party may commence a         hearing. If a panel decides that a disputed
lawsuit in court before, during, or after a     domain name registration should be
UDRP proceeding. Paragraph 4(k) of the          cancelled     or transferred to the
UDRP also allows a losing domain name           complainant, the concerned registrar will
registrant to challenge the administrative      normally implement the decision after ten
panel’s decision by filing a lawsuit in a       business days. If the complaint is denied,
competent court and thereby suspend the         the registrar will unlock the domain name
implementation of the panel decision.           for the benefit of the respondent.
Although parties retain this court option,         The first case which was decided by
in practice this is a rare occurrence. The      the body was World Wrestling Federation
WIPO Center maintains a selection of            Entertainment, Inc v Michael Bosman29,
court orders and decisions in relation to       wherein the respondent had registered the
the UDRP or specific UDRP cases at its          domain name of the complainant only to
web site.                                       sell them at US $1,000,000. The
146                       J INTELLEC PROP RIGHTS, MARCH 2004

Administrative panel ordered the              language in legitimate ways without fear
respondent to transfer the ownership of       of being used.
the domain name to the complainant.
Subsequently the panel has also decided a     References and Notes
plethora of other disputes, which include      1 Ira Natheson S, Showdown at the domain
a number of Indian companies as well30.          name corral: Property rights and personal
                                                 jurisdiction over squatters, poachers and other
                                                 parasites, 58 University of Pittsburg Law
Conclusion                                       Review, 991 (1997)
   The global experience has shown that        2 Bhatia Sanjay, Domain names, cybersquatting
even the US has tried to plug the legal          and trademarks in India- A legal perspective,
lacuna by passing the Trademark Cyber          3 However this article deals with only
Piracy Prevention Act. As far as India is        infringement and passing off in domain names
concerned, one has to be pragmatic and it      4 Milton Mueller, Trademarks and domain
is to be realized that the virtual world of      names: Property Rights and Institutional
cyberspace needs a law for itself.               Evolution in Cyberspace
                                               5 Supra n 1
Bringing passing off within the                6 Null Christopher, Name Grab, April 2000,
framework of the Trade and Merchandise           ZDNet- Smart Business at wysiwyg://parent
Marks Act, which is an antiquated                Win.70/http://www.z…6605,2453036,00.html?
legislation (passed in the year 1958),         7 Simrod Eric J and Neclerio John M, Swatting
                                                 at Cybersquatters, February 15, 2000, Upside
would result in granting trademark               Today-Upside Counsel at http://www.
holders more extensive protection than 
what the legislature originally intended. A    8 Source id
trend of increased disputes over web           9 Supra n 4
addresses is gaining ground in India over     10 Connely Lian M, Jurisdiction over trademarks
                                                 and domain names: The view from Canada,
the past few years as companies                  April, 2001 at
recognize the commercial potential on the     11 1998 F.S.R 265 (Ch.1997).
Internet. As large companies try to stake     12 Source: at
their claims in cyberspace, they often find      05/17/2003
                                              13 As amended ‘Act’
their prime parcels already in the hands of   14 Sec.2(1)(v)
somebody else. The WIPO Arbitration           15 Chapter X of the Act deals with offences,
and Mediation Center may order the               penalties and procedure
respondent only to refrain from the use of    16 1 Sec. 81 of the Act provides for penalty for
the “domain name”, but has no power to           falsely representing a trademark as registered
award damages for the loss caused to the      17 Tanner Michael, Trademarks, Internet domain
                                                 names and the NSI: how do we fix a system
complainant. The decision of Justice KS          that is already broken? Journal of Technology
Gupta preserves the hope for the people          Law and Policy, 3 (2) 1998
who are not trademark holders of their        18 Statement of objects and reasons to the Act
domain names and strikes the proper           19 Preamble to the Act
                                              20 Sec 11 of the Act provides for the prohibition
balance between the rights of the                of registration of certain marks and Sec 12(1)
trademark holders and the rights of the          of the Act prohibits registration of identical or
public to use words in the English               deceptively similar trademarks
                 MUKHERJEE: PASSING OFF IN INTERNET DOMAIN NAMES                            147

21 Sec 29 of the Act                           28 Ibid
22 1999 PTC 1920 (Del)                         29 Case No D99- 0001
23 Source: http:// as       on   30 The First Indian case before the administrative
   05/17/2003                                     panel was Bennett Coleman & Co Ltd v
24 AIR 2000 Bom. 27                               Steven S Lalwani, Case No. D2000- 0014;
25 [1962] RPC 265 (HL); per Lord Devlin           Source:
26 Supra n 2                            
27 Source:                 /2000/d2000-0015.html as on 01/ 13/ 2003

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