In this day and age of digital marketing when brands are constantly on the lookout for new and innovative strategies to optimize their online presence, effective protection of domain names is critical to their efforts. While domain names do perform the traditional trademark function of acting as source identifiers in the cyber world, what further accentuates their importance for firms is their ability to attract those potential customers to the website of the firm who may not have intended to visit that particular website in the first place. Thus business entities often try to have a domain name that is not just relevant, unique and easy to remember, but can also optimize the ranking of the website in the search engine results when users key in any related query. Prima facie there is nothing illegal in business entities taking measures to expand their online customer base but problems arise when some entities in their pursuit of higher search engine ranking or a large online customer base resort to measures such as cybersquatting or using trademarks of other famous/competing brands in their meta tags.
Meta tags and trademark infringement in the cyber world
While India does not have a legislation specifically dealing with domain names, judiciary has played a pivotal role in according them adequate protection which was once again reflected in a recent Bombay High Court Order in People Interactive (I) Pvt. Ltd. v. Gaurav Jerry. 1
The defendants in this case had interalia, used plaintiffs' proprietary mark shaadi.com and its domain name www.shaadi.com as part of meta tag in its website with domain name ShaadiHiShaadi.com. Meta tags are special tags in HTML(standard languages for creating websites) which provide information about the website to the search engines. Though most of the popular search engines no longer use meta tags to determine the ranking of the website they, nevertheless, are important as meta tag descriptions appear in search results; and if well written can significantly increase click rates to the website which may translate into increased customer base for the website. Considering that search engines use a completely robotized procedure to assess the contents of the website , illegal use of meta tags may prove to be very damaging for the original website as search engines may display the website with pirated meta tags even if users are searching for the original. For instance, if a website copies the domain name of another as its meta tag then if users search the original website , the search results will display the domain name of the pirated website which may in its description have the domain name of the original website thus confusing users. And what's worse, users may not only be redirected to the wrong website but may also end up continuing there thus jeopardizing the business prospects of the original. In view of this, Bombay High Court took a rather stern view on the matter and equated copying of domain names as part of metatags to online piracy which not only diverts internet traffic away from the plaintiff but also hijacks plaintiffs' reputation and valuable intellectual property and amounts to passing off and consequently granted ex- parte interim injunctions to the plaintiffs.
What should be the scope of trademark protection available to metatags?
While it's the first time in India that trademark protection has been accorded even to invisible meta tags (meta tags are not visible on the web page but only in the HTML version or the source code of the web page), defining the scope of protection that should be accorded to metatags has been quite contentious in USA. Concerns raised there, pursuant to Bombay High Court's recent order, have become pertinent for India as well.
Judiciary in USA has often invoked the doctrine of "initial interest confusion" to establish trademark infringement in case a trademark has been used as part of a meta tag. In Brookfield Communications, Inc. v. West Coast Entertainment2, the defendant was using the trademark MovieBuff of the plaintiffs in its metatags and although there was no evidence of direct confusion , 9th Circuit held defendants liable on the reasoning that using trademark of plaintiff as meta tag is similar to posting the sign of plaintiff in front of defendant's store and even customers who would have originally preferred plaintiff's product, once they have entered defendant's store would settle for it as they would no longer want to take the trouble of going back and looking for plaintiff's store. Thus,the case considered initial confusion sufficient to determine trademark infringement whether or not there is actual likelihood of confusion on the ground that original website loses business consequent to the initial confusion caused. The judgement has diluted the burden of proof required to establish trademark infringement and is often criticized on this ground. After all in digital world even if the customers are directed to a different website because of initial confusion, once there and realizing it's not where they intended to be in the first place, they are merely a click away from the original website.
However Bombay High Court, as of now, does not seem to be following its USA counterpart and the order before granting ex- parte injunction expressly states that even on reaching defendant's website any person may mistake it for plaintiff's branch or division and confusion is thus beyond doubt. The mandate of Indian Judiciary thus is, when trademarks are used as part of meta tags they must be protected but protection should not entail dilution of burden of proof required to establish trademark infringement. Initial confusion may raise a presumption of infringement but conclusive inference can be drawn only when "sufficient likelihood of confusion" is established.
NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622 OF 2014
174 F.3d, 1036, 1045 ( 9th Circuit,1999)
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