There seems to be an increasing trend towards cybersquatting in recent times, particularly by parties in foreign jurisdictions, who register domain names that are strikingly similar to well known trademarks in India. In this post I will cover a recent domain name dispute decision delivered by Justice Sistani of the Delhi High Court, involving ICICI Bank Ltd. (The decision can be found here
Background to the Case
In this case, ICICI Bank filed a suit for permanent injunction to restrain the defendants from operating the domain name www.icicigroup.com. Interestingly, the domain name was registered by a Chinese entity based in Beijing on the ground of trademark infringement of the ‘ICICI’ mark.
Establishing Global Reputation and Goodwill of the ‘ICICI’ mark
This was perhaps the easiest task and counsel for ICICI was successful in establishing the fact that ‘ICICI’ has become a famous/well known trade mark within the purview of a well-known trade mark as defined under Section 2 (1) (zg) of the Trade Marks Act, 1999.
It was submitted that the mark “ICICI” was first adopted and incorporated by it (its predecessors in business) in the year 1955 and has since then acquired necessary reputation and goodwill. Moreover, ICICI” stands registered in many jurisdictions, such as, Hong Kong, Japan, Korea, Russia, Saudi Arabia, Singapore, Switzerland, China etc.
An important point with specific reference to this case and given the impugned domain name is the fact that a series of companies and subsidiaries of ICICI, together with the parent company, constitute the ‘ICICI Group’, all of whom use the ‘ICICI’ trademark.
Establishing Internet Presence
Further, given the nature of the dispute, it was important to demonstrate that there is a likelihood of confusion on the part of an unknowing individual, looking to access the bank’s website, based on striking similarity of the impugned domain name and the ‘ICICI’ trademark.
It was submitted that the ‘ICICI’ mark is featured prominently on the website (www.icicibank.com) and that there is uniformity in the use of the mark online as well as in the physical world. It was also explained that the website received hundreds of thousands of hits from consumers of its banking and financial products and services. Lastly, it was also shown that the plaintiffs had taken precaution to prevent misuse of its mark online by registering several domain names containing the said mark such as , , , , , , ,, , , , , , , .
Failure of Defendants to Appear before the Court
As explained earlier, there have been quite a few cases off late where individuals/entities based in foreign countries have registered domain names that are strikingly similar to trademarks registered in India and have acquired global reputation.
In this case too, the defendants are a Chinese entity, based in Beijing. However, even the plaintiffs’ attorneys were unable to extract more details about the defendants, outside of a basic WHOIS search. Perhaps unsurprisingly, the defendants failed to show up for any of the hearings and all the orders of the court were passed ex-parte.
Bad Faith Registration
In order to demonstrate the mala fide intent of the defendants in registering the domain www.icicigroup.com it was explained that the domain www.icicibank.com along with all the other domain name that were registered as a precautionary measure and controlled by ICICI Bank Ltd. was registered on 16th July, 1996. The impugned domain name on the other hand, was only registered on 23 rd September, 2004.
The submission appears to be that before registering the domain, the defendants should have conducted a preliminary check ensure that they were not infringing any intellectual property rights, particularly since several domain names with the ‘ICICI’ mark were already registered.
The plaintiff’s counsel emphasised that the registration was purely to encash upon the goodwill and reputation so associated with the plaintiff‟s trademark and was done in bad faith and without authorisation. To support this contention, a series of e-mail communications between the plaintiffs and defendants was also submitted to the court wherein the latter asked for a payment of a ridiculous sum of $800,000.
Likelihood of Confusion
To establish that there was a likelihood of confusion in the mind of a user who wished to visit the ICICI website and for this reason the domain should not be in the control of the defendants, the counsel for the plaintiff explained that the impugned domain:
(i) wholly incorporates the word “ICICI”
(ii) is identical to the Plaintiff‟s trademark “ICICI”, and
(iii) the Defendant No.1 has no right or justification in the impugned domain name
Further, it was elaborated that and that an Internet user who wishes to visit the plaintiff‟s site, www.icicibank.com for information regarding its services, but not being completely familiar with the exact web address, might mistakenly enter into the address toolbar of his Internet browser, the URL “www.icicigroup.com” and therefore be taken to the website of the defendant. Additionally, it was possible that on using the search term ‘ICICI’, an unsuspecting user may click on a result that direct him or her to the defendant’s page, assuming it to be affiliated to the ICICI banking group. As such, the plaintiff contended that there was a clear case of trademark infringement, arising from the act of the defendant in registering a domain name , which is identical and deceptively / or confusingly similar to that of the plaintiff‟s domain name www.icicibank.com
Curious Decision of the WIPO Arbitral Tribunal
While the sole panellist of the WIPO held that a fit case of likelihood of confusion was made out by the plaintiffs, the Arbitral Tribunal on the other hand made some curious observations. It held that though it is confusingly similar, the domain name www.icicigroup.com as registered by the defendants is one in which the defendant has rights since “icicigroup” means a community of like-minded netizens with common interests and the “i” denotes “love” . As such, it held that it would be incorrect to say that ICICI always refers to the plaintiff’s business and since they are not in the same competing business of providing banking and financial services, there can be no confusion between the websites.
Decision of the Delhi High Court
In taking cognizance of the evidence submitted by the plaintiffs in the form of registration certificates and other documents, the judge was convinced of the reputation of the ICICI mark worldwide and the goodwill attached to the mark. Additionally, the evidence of email communications between the two parties where a claim for 800,000 USD was made for transfer of the domain, together with the fact that the ICICI mark was already registered in China prior to the domain being registered, convinced the judge of the bad faith registration on the part of the defendants. In doing so, the judge decreed the suit in favour of the plaintiff, with costs.
A word must be said for the issues that may arise in terms of actual enforcement of the award. The domain continues to be registered with the Chinese entity as we speak and there is no order for either cancellation of the domain or transfer, with the burden being placed on the registrar. Given that the defendants failed to show up for any of the hearings, it is unclear what their position on this matter is and one must seriously question the wisdom in imitating such a costly litigation when enforcement is such a big issue although it is expected that eventually the registrar will be made to cancel the registration.