A domain name represents an internet protocol resource, such as a personal computer used to access the internet, a server computer hosting a website or the website itself or any other service communicated via the internet. For example, edu- educational institutions, org – organizations (non profit), com – commercial business, etc. Passing off on the Internet litigation is not very common in India. The modern tort of passing off has five elements:
* a misrepresentation
* made by a trader in the course of trade,
* to prospective customers of his or ultimate consumers of goods or services supplied by him,
* which is calculated to injure the business or goodwill of another trader and
* And which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.
The first reported Indian case was Yahoo! Inc. v Akash Arora, the former, the global Internet media search and information network, filed an action against the latter on the Internet as those of the plaintiffs’ by adopting the domain name “yahooindia.com”. The plaintiffs submitted that their domain name “yahoo.com” was registered with Network Solutions Inc (NSI) since 1995, that it had become well-known and they had obtained registrations on the trademark “Yahoo” or variations thereof in approximately 69 countries, although not in India. The Delhi High Court rejected the defendants’ argument, on the grounds, inter alia, the trademark law applies equally to domain names on the Internet; that, where the parties are in the same or a similar line business, the use of similar names would result in confusion and deception; that the disclaimer by the defendants on their web site did not reduce the likelihood of the confusion and that the mark was widely publicized and well-known; and that the fact that “Yahoo” was a dictionary word was no reason to deny protection for the mark. The mere fact that the Internet users were technically educated and literate; this would not reduce the risk of confusion.
The court held that: “In an Internet service, a particular Internet site could be reached by anyone anywhere in the world who proposes to visit the said Internet site. With the advancement and progress in technology, services rendered on the Internet has come too recognized and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by other as that of the plaintiff. As a matter of fact in a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe.”
REMEDIES AVAILABLE FOR PASSING OFF ACTION
There are two types of remedies available: a) Civil and b) Criminal.
CIVIL REMEDIES: Under Section 135 of the Trademarks Act, 1999, the court grant relief for Passing Off includes, Permanent & Interim injunction and either damages or an account of profits together with or without any order for delivery up of the infringing labels and marks for destruction or erasure.
CRIMINIAL REMEDIES: In case of a criminal action for infringement of registered trademark Section 103 of the Trademarks Act, 1999, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than INR 50,000 but which may extend to INR 200,000.