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 respite. 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 ________ †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 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 "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-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 "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.