Journal of 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 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 respite. Keywords: Passing off, Internet domain names, Domain name disputes, 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 ______†E mail:[email protected]. 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 "law.indiainfo.com", ".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 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 "indiainfo.com", 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 "indiainfo.com" 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- 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 "sportys.com" 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 "sportys.com" 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 "sportys.com" 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 "sportys.com" 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, 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 12 Position in India Internet . 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 19 The Indian Courts on Domain Name Passing fraudulent marks on merchandise 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 20 the previous competitor . 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 “yahooindia.com”. registered proprietor of a trademark or a The plaintiffs submitted that their registered owner thereof using by way of domain name “yahoo.com” 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 21 trademark . Unregistered owners of “yahooindia.com” 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 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 “www.yahooindia.com” 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 “yahoo.com” 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 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 “www.radiff.com” 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 “www.rediff.com”. 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, “tanishq.com”. 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 adopted the UDRP, the registration (1) Time and Cost Effective 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 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 at http://www.indiainfo.com 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 would result in granting trademark at Cybersquatters, February 15, 2000, Upside Today-Upside Counsel at http://www. holders more extensive protection than upside.com 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 http://www.gcwf.com recognize the commercial potential on the 11 1998 F.S.R 265 (Ch.1997). Internet. As large companies try to stake 12 Source: http://www.see-trademarks.com at their claims in cyberspace, they often find 05/17/2003 their prime parcels already in the hands of 13 As amended ‘Act’ 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 balance between the rights of the 20 Sec 11 of the Act provides for the prohibition 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:// www.ladas.com 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 http://arbiter.wipo.int/domains/decisions/html 27 Source: http://www.iptoday.com /2000/d2000-0015.html as on 01/ 13/ 2003