Trademark

TRAVEL.INDIATIMES v. INDIATIMESTRAVEL – CLASSIC INSTANCE OF CYBER SQUATTING


Cybersquatting (also known as domain squatting) is the act of mala fide registering, trafficking in, or using a domain name with the intent to profit from the goodwill of a trademark belonging to someone else. The term is derived from “squatting,” which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use.
The fact situation in the recent Delhi High Court judgment in Times Internet v. M/s Belize Domian Whois Service Ltd & Others is a classic instance of cyber squatting. The judgment reaffirms the domain name-trademark / passing off principle. Contrary to oktatabyebye.com dispute where WIPO ruled in favour of Tata sons requiring Gurgaon-based travel portal MakeMyTrip to transfer the domain oktatabyebye.com to Tata, passing off in the instant case is evident.
Facts:
Indiatimes.com is an e-commerce portal owned by the plaintiff company, Times Internet. Since 2000, the website offers a wide range of services including travel services through travel.indiatimes.com.  The defendant, M/s Belize Domain Whois Service Ltd & Others, registered Indiatimestravel.com in 2005. It carries some sponsored links.

Arguing that “indiatimestravel.com” is deceptively similar to that of platintiff’s registered domain name “travel.indiatimes.com”, plaintiff submitted that the defendant was trying to take advantage of its brand name. The plaintiff, citing revenue figures, submitted that its website enjoys reputation and signifies the services and products marketed through the website. The plaintiff sought for an injunction restraining the defendants from cyber squatting, using any other identical or deceptively similar name and transferring the domain name “indiatimestravel.com” to the plaintiff.

Judgment

The Court referred to the Supreme Court judgment in Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC) which had a similar fact situation. In the instant case, Supreme Court observed that “a domain name …….is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.” Comparing both the domain name and the trademark, Supreme Court held that a domain name can have all the characteristics of a trademark. Accordingly, domain names can be protected under Trademarks Act, 1999.

In the instant case, the High Court observed that the plaintiff owned the mark “indiatimes.com” way before the defendant created the mark “indiatimestravel.com”. Further, “indiatimes” which was the essential component of the domain name, was used by the defendant without any explanation. This can confuse an ordinary netizen and can result in associating defendant’s portal with that of the plaintiff company. The use of impugned web portal by the defendant may also jeopardise the reputation of the plaintiff if the products and services which are advertised through the website lack quality. Further, as the defendant did not appear before the Court and contest the claims of the plaintiff, defendant’s conduct was held to be in mala fide. Considering the above mentioned aspects, the instant dispute was held to be a clear case of “passing off”. As the plaintiff was held to have the sole right to use the words “indiatimes”, defendant was directed to transfer “indiatimestravel.com” to plaintiff.

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

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