Securing domain name protection in India

In Satyam Infoway v Sifynet Solutions Ltd ((2004) 6 SCC 145) the Supreme Court, while finding that a domain name can be capable of distinguishing a product or service made available to internet users, stated that:

"As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try to guess its domain name has further enhanced this value."

As India continues to present itself as an attractive destination for investment, an increasing number of both Indian and international companies are seeking to assert their trademark rights by obtaining ".in" country-code top-level domains (ccTLDs) as part of their Indian operations.

Registration
".in", the ccTLD for India, is administered by the INRegistry. The INRegistry is an autonomous body under the National Internet Exchange of India (NIXI) and accredits registrars through an open selection process. Registrations are not carried out by the INRegistry itself. In line with the Code for Best Practice for ccTLD Managers, NIXI enters into standard form contracts with registrars setting out standard terms to be entered into with end users of their services (registrants). To obtain accreditation, registrars are required to enter into a registrar accreditation agreement, which is largely similar in substance to the Internet Corporation for Assigned Names and Numbers (ICANN) global TLD registrar accreditation agreement. The agreement contains an arbitration clause making it compulsory for a registrar and NIXI to submit disputes to arbitration in India.

In 2005 NIXI implemented a narrow "sunrise" period giving priority to trademark owners. The INRegistry has now introduced terms and conditions binding all registrants. Registrars are required to attach these terms and conditions to all contracts between registrars and potential registrants. The terms and conditions impose an obligation on registrants to comply with all Indian legislation. Publishing pornography, phishing and pharming are all considered illegal use of a domain name. The INRegistry also reserves the right to suspend or cancel operation of a domain name if a registrant violates the terms and conditions.

Dispute resolution
The terms and conditions also require registrants to submit to a mandatory arbitration proceeding under the ".in" Dispute Resolution Policy and Procedure (INDRP). This is issued by NIXI to deal with complaints related to the issues arising from domain name registration. When a complaint is received by NIXI, provided that the conditions required in the rules and policy are met, NIXI serves notice to the registrant of the disputed domain name and allocates an arbitrator to the dispute from the INRegistry’s list (available on its website).

A complaint can be submitted on three grounds:

• The registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights.
• The registrant has no rights or legitimate interests in respect of the domain name.
• The registrant’s domain name has been registered or is being used in bad faith.

These grounds are identical to those set out in the ICANN Uniform Dispute Resolution Policy (UDRP).

The INDRP sets out the factors to be taken into account when determining the issues. These factors are largely similar to the provisions of the UDRP, with the exception that the INDRP does not impose the burden of proof on the complainant. However, in Monster.com (India) Pvt Ltd v Domain Leasing Company an arbitral tribunal held that this omission does not mean that the onus to disprove the complainant’s assertions is on the respondent. Relying on the Evidence Act 1872, the arbitral tribunal held that the complainant would still have to prove these matters in accordance with the act. The Evidence Act requires a party to prove the facts on which it wishes to rely to obtain a judgment (Jagdish Purohit v Stephen Koeing INDRP/006, 5th July 2006, available at www.inregistry.in/system/files/internet_0.pdf). There also appears to be no restriction on obtaining ex parte orders in cases where the domain name registrant resides outside India and fails to respond to notices sent to the address maintained by the registry.

Proceedings initiated under the INDRP are of a quasi-judicial nature and are statutorily recognised arbitrations under the Arbitration and Conciliation Act 1996. Therefore, a judgment is enforceable in the same manner as a civil court decree. However, the contractual provisions that allow cancellation of the domain in the event of an arbitral decision enable the INRegistry to enforce an arbitral award effectively, even in the absence of enforcement of the award in accordance with civil procedure. It should be noted that the INDRP is neither a statute nor an act, and an arbitrator’s status under the INDRP is that of neither a judge nor a judicial officer; he or she has only a limited mandate to adjudicate on the three questions referred to in the policy.

In direct contrast, Section 134 of the Trademarks Act mandates that only a district court can deal with cases of trademark infringement or passing off. Therefore, the arbitral tribunals under the INDRP cannot provide adequate and effective redress for all disputes, and a ruling or damages obtained from such a tribunal for trademark infringement would be liable to challenge on the grounds of being outside the arbitrator’s mandate.

Civil court jurisdiction
As a result, another avenue available to businesses which seek to stop infringement of their domain names and assert their trademark rights in one consolidated proceeding is to approach the civil courts, as the introduction of the INDRP does not exclude the jurisdiction of the civil courts. Therefore, it would be wise to examine the approach taken by the Indian courts towards domain name disputes.

The well-known Yahoo! case in 1999 was one of the earliest decisions to protect a domain name in a passing-off case. A single judge of the Delhi High Court granted relief to Yahoo! Inc’s petition seeking injunctive relief against the defendants, who were attempting to use the domain name "yahooindia.com" for internet-related services. Yahoo! contended that the defendants had not only adopted a deceptively similar domain name, but also copied the format, content, colour scheme and source code of the India section of Yahoo!’s website. At that time, service marks were not recognised by the applicable trademark legislation; however, the court held that the domain name could be protected on the basis of passing off. Therefore, the court granted an injunction against the owner of a domain name on the basis of an existing IP right.

The Supreme Court has dealt with the question of whether internet domain names are subject to the legal norms applicable to other IP rights such as trademarks (eg, in Satyam Infoway v Sifynet Solutions Ltd). Satyam Infoway Limited was an incorporated company with several domain names (eg, "sifynet", "sifymall.com" and "sifyrealestate.com") registered with international registrars under ICANN. Satyam claimed to have invented the word "sify" using elements of its corporate name. At a later date, Sifynet Solutions Pvt Ltd began an internet marketing business under the domain names "siffynet.net" and "siffynet.com", and also obtained registrations from the relevant authorities.

Examining the applicability of the trademarks principle of passing off to domain names, the court stated that ordinary consumers seeking to locate the functions available under one domain name could be confused if they accidentally arrived at a different but similar website which offered no such services. Such users could conclude that the first domain name owner had misrepresented its goods and services through its promotional activities, resulting in the first domain name owner losing customers. As such, the court concluded that a domain name may have all the characteristics of a trademark and could lead to an action for passing off.

Regarding the case at hand, the court stated that since a passing-off action is based on the goodwill possessed by a trader, the appellant would succeed only if it could demonstrate that the public associated the name "Sify" with the services provided by the appellant. The court relied on evidence produced by the appellant to hold that the goodwill and reputation claimed by the appellant in the trade name "Sify" were established. Furthermore, apart from the close visual similarity between "Sify" and "Siffy", there was a phonetic similarity between the two names. The court also recognised the prior use by Satyam of the domain name and rejected the respondent’s contention that the parties carried on different business activities. Therefore, the Supreme Court allowed the appellant’s appeal and confirmed the grant of an injunction against the respondent.

The Indian judiciary has not only examined the applicability of the principles of passing off in domain name cases, but also determined questions of jurisdiction on the basis of whether a website is passive or interactive in nature, among other considerations. In a fairly recent case the Delhi High Court held that the mere presence of a website and accessibility by an audience in a particular jurisdiction does not automatically give the courts of that country jurisdiction. Jurisdiction of the forum court is not based merely on the interactivity of the website accessible in the forum state. In addition to the degree of interactivity, the nature of the activity permissible and whether it results in a commercial transaction must be examined (Banyan Tree Holding (P) Limited v A Murali Krishna Reddy, MANU/DE/3072/2009; Sholay Media Entertainment v Yogesh Patel, MANU/DE/0262/2010; Presteege Property Developers v Prestige Estates Projects Pvt Ltd, MANU/KA/0695/2009).

Internationalised domain names
The recent move by ICANN to support internationalised TLDs in different languages is particularly significant in linguistically diverse countries such as India. At present, the INRegistry does not support foreign characters. However, once internationalised TLDs are introduced, in order to bridge the digital divide there will have to be a move towards second and third-level internationalised domains in Indian languages. Bearing in mind the peculiarities of Indian scripts and the ICANN recommendations for the preparation of internationalised domain name tables, greater state government involvement will be necessary.

This article first appeared in World Trademark Review, published by The IP Media Group (www.worldtrademarkreview.com).