In the case of Tata Sky Ltd. v Sachin Cody & Ors,
the issue arose when Sachin Cody (1st Defendants)
launched a website using the domain name
"tataskyplushd.com", the 2nd Defendant was the
Registrar and the 3rd Defendant facilitated the hosting
of the website. According to a Joint Venture Company between Tata
Sons Limited and Sky Broadcasting Group plc. (Plaintiff),
this domain name was identical with and similar to their TATA SKY
marks and their prior domain names.
The Plaintiff is engaged in the business of providing Direct to
Home(DTH) services in India through a satellite television service.
They are the proprietor of several registered domain names
including "tatasky.com" and "tataskyplus.com".
These domain names are used in relation to their websites, which
are utilized for business purposes. Further a copyright is owned
for all the contents appearing on its website. With the large sales
turnover and the Tata Sky marks being promoted and advertised in
print and electronic media, the plaintiff claimed that the marks
are associated with their trade by the public at large.
The Plaintiff contended that the registration of the domain name
by the 1st Defendant was a dishonest act for the
following reasons, that:
The Defendant's domain name was deceptively similar to
Their copyright in the artistic works had been purloined and
had been substantially reproduced on the website of the
The defendant had used the Tata Sky mark as part of its domain
The defendant, besides using the house mark Tata Sky of the
plaintiff had also used their brand extensions, namely Plus and
The Court in this regard observed that the material, placed on
record prima facie, indicated that the plaintiff had a registration
in regard to the domain name "tataskyplus.com" as well as
in regard to the name "tatasky.com". The website of the
1st Defendant was not merely deceptively similar but
almost identical in all material respect to that of the
plaintiff's. Thus, there was justification that the domain name
"tataskyplushd" was an undisguised attempt to tread on
the reputation of the plaintiff, which had to be injuncted.
Further, it was observed that there was no plausible or justifiable
reason for the 1st Defendant to adopt and register a
domain name which used the logo of the Plaintiff – Tata
Sky in combination with the words Plus and HD. The Court opined
that the 1st Defendant's activity was in the nature
of cyber squatting.
The Court further opined that in dealing with matters relating
to infringement or violation of propriety interest in intellectual
property, it must be conscious of the grave consequences of the use
of deceptively similar domain names in cyber space. The court in
this regard referred to Sifynet Infoway Ltd. v Solutions Pvt
Ltd. wherein the Supreme Court had emphasized the importance
of domain names and the danger that is exposed by unlawful
infraction. It was laid down that with the increase of commercial
activity on the Internet, a domain name is used as a business
identifier. Therefore, the domain name may pertain to provisions of
services within the meaning of section 2(z). A domain name should
be easy to remember and use, and 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, it serves to identify and
distinguish the business itself, or its goods and services and to
specify its corresponding online internet location. Further, as
more and more commercial enterprise trade or advertise there
presence on the web, domain names have become more and more
valuable and the potential for dispute is high. Unlike trademarks
where a large number containing the same name can co-exist
comfortably, the distinctive nature of the domain name providing
global exclusivity is much sought after.
The Court thus held that an interim mandatory direction
requiring the 1st Defendant to transfer the domain name
to the Plaintiff was warranted. It was additionally stated by the
Court, that merely directing the cancellation of domain name would
not serve the ends of justice. The essential nature of cyberspace
mandated flexible and efficient judicial remedies. The seamless
nature of cyberspace and the ease and flexibility with which a
violation can take place should suggest a course of action where
other infringers are left without an opportunity to violate the
proprietary interest of the Plaintiff in the mark.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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