A Case Analysis: Times Internet Ltd. v. M/S Belize Domain Who is Services Ltd. & Ors, CS (OS) NO. 1289/2008.
BACKGROUND OF THE CASE
Bennett Coleman & Co. Ltd., the promoters for the plaintiff, had entered the field of e-commerce, by developing an internet site called ‘http.www.indiatimes.com’. The company offered various services such as internet shopping, online games, etc. along with its publications, through this website. The plaintiff had also registered the name “indiatimes.com” as a domain name, in 1996, which was valid till 2016. The trademark for ‘travel.indatimes.com’ was also registered in the name of the plaintiff company on 7th June, 2000. However, the plaintiff came to know that a domain named ‘indiatimestravel.com’ was registered and that the website did not promote any real business and only presented sponsored links which earned domain owners, proceeds on clicks.
The primary issue was that the domain name of ‘indiatimestravel.com’, registered by the defendants was deceptively similar to the site of the plaintiff, ‘travel.indiatimes.co’. The plaintiff had thus sought an injunction regarding the same and prayed for transfer of the defendant’s domain to himself. Damages to the tune of Rs. 20 lakhs were also sought for by the plaintiff.
Whether the adoption and registration of a domain name deceptively similar to that of the plaintiffs’ registered trademark amounts to a crime of cyber-squatting by the defendants?
In the absence of any specific cyber law or provision under the IT Act with regard to ‘domain squatting’, recourse is had to the Indian Trademark Law by the Hon’ble Court. Along with precedents to adjudge this case, the principle of ‘passing off’ was thereby applied.
The Court majorly relied upon the judgment of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., wherein the appellant had registered numerous domain names with the word ‘sify’ in them. The word ‘sify’ in itself was coined by the appellant and these included names such as http://www.sifynet, http://www.sifymall.com, http://www.sifyrealestate.com, and etc. However, later the respondent started operating domain names such as siffynet.net and siffynet.com for business. The appellant filed a civil suit against the defendant for ‘passing off’ their business using the appellant’s business domain name. The High Court however set aside the subordinate court’s decision of holding the defendant liable. The Supreme Court on further appeal, while allowing the appeal, stated that a domain name was not merely an address anymore and was now a mode to carry out commercial activity and that it thus, fell within the purview of Section 2(z) of the Trademarks Act of 1999. It further held that the use of a same or similar domain name could deceive consumers and make the first domain owner lose his market or goodwill and thus, a domain name must therefore be treated as a trademark and allowed to be protected from the principle of ‘passing off’.
The Hon’ble Court also made reference to the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., wherein it was held that ‘passing off’ must be adjudged by finding similarity between the competing marks and the likelihood to cause deception.
The remedy of ‘passing off’ was applied in this case by the Hon’ble Bench because the defendants were trying to ‘squat’ the domain of the plaintiffs. The defendants were misusing the goodwill of the plaintiffs which was developed over the years by spending large amounts (upto almost 2, 65, 00,000) on advertising as has been proved by the plaintiff in the case, ex parte.
The Hon’ble High Court held that the domain names were deceptively similar and as the plaintiff was the prior user and had developed goodwill and reputation regarding the name, the defendant’s domain should be transferred to the plaintiff. The Court considered it obvious that the term ‘indiatimes‘, which was coined and registered by the plaintiff, could not be used by another, as the right to use the term vested only with the plaintiff. The analysis of the Court is found to be absolutely in consonance with the law because though as separate terms, ‘India’ and ‘times’ are generic words but the joining together of these words make up for a new unique term which was not previously used and thus, the right to use the coined term laid with its registered and accustomed prior user only. Due to the existence of such right of prior user, it could not be termed as a generic word.
The principle of ‘passing off’ was aptly applied by the Court in the present case, since the defendant could have perceived to try to pass off as the plaintiff and take undue advantage of the reputation created by the plaintiff, thereby causing harm to his goodwill. The plaintiff’s name and worth was being ‘passed off’ in a maliciously similar way by the defendant.
(I) However, it is pertinent to note that though the application of the principle of ‘passing off’ to the domain names is note-worthy, the present judgment has not referred to the term of “domain/cyber-squatting” anywhere. In Manish Vij v. Indra Chugh, the definition for the term is stated to be “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”, even though the defendant carried out no real business on the impugned domain. However, this does imply for a malicious intent and fraudulent use of the name.
(II) Furthermore, no reference is also made to the Uniform Domain Name Dispute Policy (UDRP) implemented in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN). This policy is one which is adopted by WIPO in deciding cases. Rule 4(A) of the said policy refers to a ‘cyber-squatting test’ which is applicable when domain names are deceptively similar, or there are no rights or legitimate interests in respect of the domain name or when the domain name in conflict is not being used. As the defendant’s policy was already in consonance with the ICANN and was also referred to by the plaintiff in the present case, the application of these rules could have proven the guilt of the defendant beyond reasonable doubt.
The Court ruled in favor of the plaintiff and ordered the defendant to transfer the domain to the plaintiff within four weeks of the order. However, no damages were awarded to the plaintiff.
The Court adjudged the matter by using the ‘passing off’ principle under Trademark Law in the absence of any separate law regarding the same. And as the domain names were extensively advertised and used, they were said to have inherited the characteristics of trademarks. However, the judgment could have detailed over the concept of cyber-squatting and its effects in relation with the UDRP Policy, so as to clarify the issues often faced in this technological era. While the Court in itself agrees upon the significance of domains and e-commerce, it has failed to take any steps to secure domains, as is evident in the present case. This is necessary due to the lacunas in the Information Technology Act, which do not provide for any provision regarding domain squatting. This being said, recognition of the ICANN would have been a welcome addition to the small family of information technology laws in India and would have agreed with the precedent of Shreya Singhal v Union of Indiaso as to provide clarified laws for the observance by citizens.
Further, a direction by the Hon’ble Court for a separate law regarding domain squatting or a provision in the Information Technology Act would have been well received, since the Trademark law of the country has no extra-territorial jurisdiction. The lack of such extra- territorial jurisdiction does not also provide adequate protection for domains, which more often than not operate with an international viewer base, thereby requiring protection globally. To illustrate this scenario, the example of the same factual matrix wherein the defendant would have resided and operated in Europe and thus, the Indian Courts could not have delivered justice to the plaintiff due to the void in law is apt. A separate independent adjudication body may also be set up alternatively, as has been done in the US and the Czech Republic.
Though the Hon’ble Court did satisfactory justice to the parties of this case, the judgment lacks a vision for dealing with any future problems which may arise. A prospective view to eliminate deficiencies and the zeal to avoid imminent litigation in the future regarding similar issues of law is what seems to be missing.
 Times Internet Ltd. v. M/S Indaitimes.com & Anr, CS(OS) 1426/2006 (India), https://delhicourts.nic.in/APRIL13/times%20Internet%20Ltd%20Vs.%20Indiatimes%20Co.%20and%20Another.pdf.
 Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., A.I.R. 2004 S.C. 3540 (India).
 Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd, (2001) 5 S.C.C. 573 (India).
 Manish Vij v. Indra Chugh, A.I.R. 2002 Del 243 (India).
 Zohaib Hasan Khan et al, Vol. 6, Issue 2, Cybersquatting and its Effectual Position in India, INTERNATIONAL JOURNAL OF SCIENTIFIC & ENGINEERING RESEARCH, 880, (2015).
Domain Squatting, PSA, Dec. 2010, 2.
 Shreya Singhal v. Union of India, (2013) 12 S.C.C. 73 (India).