In our previous post we discussed about different tactics that can be used to counter allegations used by the complainant, We discussed different ways to file a reply during an INDRP dispute. The yodha.in series were initiated so you can learn how to fight your own INDRP disputes, if you have missed previous posts then you can check it out here. In today’s post we will discuss common questions raised by the viewers and discuss about trademarks in much more detail and how trademarks can be used against domains which are not associated with the name of the affected business.
It is often asked whether registering normal names of people can be registered as trademarks? and if it is then can it be used to sue you? well answer is partially yes. Normal names which are common among the population can be registered without worrying about trademark infringement, but if the name of the person has acquired good amount of reputation in the society then that person can claim trademark in order to protect his name since his/her name acts as brand to be recognized by his/her followers. Hence registering such names can result in trademark infringement. Common examples of such infringement is Eminem, Beyonce, Jay-z etc. Hence if i am happen to register eminem.in or jayz.in then I am pretty much vulnerable to INDRP dispute.
Now lets discuss about complex use of trademarks and how it can be used against you during an INDRP dispute, One of the problems that was studied was what if the trademark of a business is not associated by the name of the business? and what if it is conflicting with the name of some other business? There has been many new cases where the complainant is the owner of a trademark which is not similar in any way to the name of the complainant’s business. Such trademarks are generally obtained by using the trademark word in order to promote ones business. For example if I own a business called Jashan Solutions, but I promote my business by the name of “Jikes” then I can claim the word “jikes” as a trademark which is associated to my business even though it is not similar to the name of the business in any way. So the question arises is there a way to counter this? Every problem in this universe can be countered with one thing or another equally powerful. So lets first study this situations with a very famous dispute, in fact this was the first case to decide the domain name protection in supreme court of India.
Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd
Case summary and analysis
The complainant (Satyam infoway) alleged the respondent (sifynet solutions) had intentionally registered and operated a domain name that was confusingly similar to one owned by Satyam Infoway. The complainant claimed that it had registered multiple domains pertaining to its business like sifynet.com, sifymall.com, sifyrealestate.com. It submitted that the word “Sify” which was an amalgam of elements of its corporate name “Satyam Infoway” – was a term that was often used by this company, and that it had further garnered substantial goodwill in the market. The respondent is using sifynet solutions as his business name and has been using the word “siffy” which is similar to the complainant’s domain names. The complainant alleged that the respondent is using this name in order to lure its customers believing that they are dealing with the complainant’s business. The respondent replied that unlike trademark registration of domain name doesn’t provide the intellectual property right, which was later challenged by the high court and the decision was held in the favor of Satyam infoway ltd. It declared that domain names are subject to the regulatory framework that is applied to trade marks. The court stated that though there is no law in India which explicitly governs the regime of domain names, this state of affairs does not foreclose protection for domain names under the aegis of the Trade Marks Act. Thus, the court determined that domain names are protected under the law relating to passing off as delineated in the Trade Marks Act.
Now lets draw analysis from the case study, if you happen to register any domain which violates any trademark in such fashion and start a business which leads you to enter a dispute of such type. Then first course of action would be research about the complainant, the key research areas would be the number of similar domains the complainant hold, number similar trademarks the complainant hold etc, because it is necessary to determine the odds before the battle which will help you form your own tactics as you proceed. Now that you have gathered such information and if the complainant initiates the dispute with allegations similar like stated above then your first and foremost act should be to prove that the given “word” or “trademark” does not clearly link the business of the complainant with the trademark, which in return makes it difficult for respondent to know about the trademark prior to the registration. Your main focus in such situations should be prove that the “disputed word” is not linked to the complainant’s business, this is often very difficult to prove but some tactics can be used such as you can state that complainant hasn’t provided any expense journal which could define the money spent in order to advertise this trademark through which the viewers could understand the link behind the trademark and the business associated. After all trademark is simply a mark put on products and services which defines its owner, if the mark clearly doesn’t define the owner of the product/service then it fails its purpose being a trademark.
With this now you are aware on how you can trapped for a trademark infringement dispute even if it was by accident, it is important to remember that in most of the cases related to trademark, your sole purpose should be to question the link between the mark and the disputed domain, which will act as a yard stick to counter other allegations used against you (respondent). Best of luck.