India: The Essential Nature Of Cyberspace Mandates Flexible And Efficient Judicial Remedies- High Court Of Bombay

Last Updated: 19 August 2011
Article by Sonam Lhamu Bhutia

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:

  1. The Defendant's domain name was deceptively similar to theirs.
  2. Their copyright in the artistic works had been purloined and had been substantially reproduced on the website of the defendant.

  3. The defendant had used the Tata Sky mark as part of its domain name; and

  4. The defendant, besides using the house mark Tata Sky of the plaintiff had also used their brand extensions, namely Plus and HD.

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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