1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY O.O.C.J. NOTICE OF MOTION NO.516 OF 2006 IN SUIT NO.484 OF 2006 I Plus Inc., .... Plaintiffs vs 1 Consim Info Private Limited 2 Network Solution Inc. ... Defendants Mr. M.P.S. Rao i/b. Dewen Dwarkadas & Partner for the plaintiffs. Mr. Ravi Kadam, Advocate General with Mr.Vishal Kanade i/b. M/s.Bhagwati & Co. for the defendants. CORAM: ANOOP V. MOHTA, J. DATE : 13th August, 2009 P.C.: 1 The Suit revolve around two domain names i.e. “IndiaProperties.com” a registered domain name of the plaintiffs since 21st September, 1998 and “IndiaProperty.com” a registered domain name of defendant no.1 since 21.10.2001. The plaintiffs, therefore, filed the Suit for various reliefs including a perpetual injunction/order against defendants 1 and 2. A Notice of Motion has been also taken out in the year 2006. By order dated 20.02.2006 in the Notice of Motion, this Court refused to grant any ad-interim relief. This order of refusal of ad-interim relief remained intact till this date. In the result, there is no order of any injunction in operation since then. The present motion is listed for final 2 hearing in due course. 2 The basic facts, as averred, are as under: On 21st September, 1996 the plaintiffs registered their domain name `indiaproperties.com’ with Network Solutions Inc., USA. Defendant no.1 applied for and got registered their domain name `IndiaProperty.com’ with the Network Solutions Inc., USA. Defendant no.1 registered their domain name with full knowledge of plaintiffs domain name and its popularity. Defendant no.1 has been using the website for the same and identical business that the plaintiff is conducting. 3 Plaintiffs receiving letter/correspondence form clients indicated that they have used Defendant no.1’s website assuming it to that of the plaintiffs. 4 On 11th August 2000/4th January, 2001, the plaintiff issued legal notices to other two companies which were using a deceptively similar domain name as that of the plaintiffs as a result of which the companies had stopped using the said name. 5 On 29th December, 2005, the plaintiff by their Advocate’s letter called upon defendant no.1 to forthwith withhold, cease and discontinue the use of the website `India Property.com’. On 12th January 2006, defendant no.1 replied to the said notice denying the plaintiffs contentions. On 30.01.2006 an internet user registered with defendant no.1 his property for sale thinking that he had 3 registered with the plaintiff. 6 The plaintiffs filed the Suit and the Notice of Motion to restrain the defendants from further using the domain name `Indiaproperty.com’ and other relief. Defendant no.1 has filed its written statement/reply and resisted all the reliefs/prayers so made by the plaintiffs. 7 The conflict of domain names in the present case also connect with the dispute about the trade marks and passing off action. The plaintiffs, though aware of the registration of defendant no.1 since 2004, only after exchanging letters some time in June, 2006 filed the present Suit in August 2006 along with the Notice of Motion. Defendant no.1 registered the domain name in 2001, but commenced operation since 2004-2005. However, as recorded above, the plaintiffs failed to get the order from the Court against the defendants. In the result, defendant no.1 has been using extensively the said domain name i.e. “www.IndiaProperty.com” and have also built up huge goodwill and reputation. There is also material on record to show the huge business, sales and purchase figures, expenses and the popularity in support of their defence. 8 The submission that delay or latches that should not be the reason to refuse interim relief so claimed as there is a case and material in support of plaintiff for the reliefs as contemplated under the Law of Trade Marks and passing off, is unacceptable. 4 9 The words “India” and “Property” are general and descriptive words having direct reference to the character and nature of services rendered. There are other persons who have also adopted and have been extensively using the website, with the combination of words “India” and “Property”, which are enumerated in affidavit-in-reply of respondent no1 dated 16.08.2006, as under: “7. The said portal has been carefully designed keeping in mind the users, i.e. Builders, property brokers, buyers and sellers and gives them a free hand to post a property, add photographs and search the property with various parameters. I state that the 1st defendant has adopted the domain name www.indiaproperty.com with honest and bonafide intention. I state that the domain name www.indiaproperty.com adopted by the 1st defendant, consisting of the words India and Property, are both generic words. I further state that the words INDIA and PROPERTY whether in singular or in plural, are descriptive words, having direct reference to the character and nature of services rendered, viz., details of properties available in various cities in India and hence no one can claim monopoly over the use of such generic words. I state that there are several other persons who have adopted and have been extensively using the websites, with the combination of the words India and Property and which are enumerated hereinbelow: > Indianproperties.com; > Propertiesindia.com; > Indiapropertyshop.com; > Indianpropertymarket.com; > Indiapropertyloans.com; I therefore state that in the circumstances, the domain name of the plaintiff, comprising of two generic and descriptive words INDIA and PROPERTIESW, is not and can never be capable of protection as a trademark. The said trade mark has also not acquired a secondary meaning which is precondition for granting protection to descriptive words. The plaintiffs therefore are not entitled to any reliefs as prayed or otherwise.” The other similarly named websites are mentioned in the additional affidavit filed 5 by the defendants along with the development of the business. 10 These words “IndiaProperty” or “Properties” are descriptive words. The words speak for itself. They are, therefore, not coined and/or invented words. In Diabolo case, Parker, J. (25 RPC 565), has explained the meaning of “invented word” as follows: “To be an invented word within the meaning of the Act a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate, any obvious meaning to ordinary Englishman. It must be a word having no meaning or no obvious meaning until one has been assigned to it.” 11 The domain name of the plaintiff comprising two generic and descriptive words “India” and “Property”, therefore are not and can never be capable of protection as a trade mark. These words are also not coined words of the plaintiff. 12 A Division Bench of Bombay High Court in I.T.C. Ltd. Vs. G.T.C. Industries Ltd. & Ors., 2008(2) Mh.L.J. 922, has already observed referring to the registration of Trade Mark “MAGNUM” in respect of cigarettes, bidies, the word which is a laudatory, descriptive and is under common usage, cannot be registered under the Trade Marks Act. 13 This Court in Asian Paints Limited Vs. Home Solutions Retail (India) Limited, 2007 (35) PTC 697 (Bom.) refused to grant injunction by holding that the expression ‘HOME SOLUTIONS’ cannot claim to have exclusivity as it is inherently becoming distinctive of any single person. 14 The Delhi High Court in Online India Capital Co. Pvt. Ltd. & Anr. 6 Vs. Dimensions Corporate, 2000 PTC 396, refused to grant interim injunction for the words “Mutual Fund” as part of domain name “www.mutualfundsindia.com”, as it is a descriptive/ generic word and no monopoly can be claimed in relation thereto by any person. It is also observed that the Court will undoubtedly take into consideration long user of a descriptive name but single and small differences may suffice. 15 The reliance on Yahoo!, Inc. Vs. Akash Arora & Anr., 78 (1999) Delhi Law Times 285, is also of no assistance as that was the case of invented/coined domain name/ trade mark. 16 In Competition Review (P) Ltd. Vs. N.N.Ohja - 1996 PTC (16) page 124, Delhi High Court refused to grant interim injunction as the word “competition” is a word of English language and is generic term. 17 The Judgments cited by the learned counsel appearing for the Plaintiff are distinguishable on facts itself. The present case is not of invented and coined word. 18 The submission of learned counsel appearing for the plaintiff, based upon Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145, is not sufficient to grant any interim reliefs on facts itself. The case is totally different and distinguishable, as in that case, the invented and the coined word “Sify” was 7 involved. That was not the case of descriptive words. The law so laid down in the said judgment with regard to the trade mark and passing off, the concept of prior use, the likelihood of confusion with possible injury to the public and consequential loss to the appellant and irreparable injury are not in dispute. Strikingly, it has been observed in para 18 of Satyam (supra) as under: “18. However, there is a distinction between a trade mark and a domain name which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the scope of the protection available to the right. The distinction lies in the manner in which the two operate. A trade mark is protected by the laws of a country where such trade mark may be registered. Consequently, a trade mark may have multiple registration in many countries throughout the world. On the other hand, since the internet allows for access w3ithout any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require worldwide exclusivity but also that national laws might be inadequate to effectively protect a domain name. The lacuna necessitated internatio0nal regulation of the domain name system (DNS). This international regulation was effected through WIPO and ICANN. India is one of the 171 States of the world which are members of WIPO. WIPO was established as a vehicle for promoting the protection, dissemination and use of intellectual property throughout the world. Services provided by WIPO to its member States include the provision of a forum for the development and implementation of intellectual property policies internationally through treaties and other policy instruments.” 19 The internet mechanics as elaborated in Kerly’s Law of Trade Marks and Trade Names, 13th Edition (Sweet & Maxwell) is as under: “At one end is the user accessing the Internet from, usually, a PC. At the other end is a server, on which is stored in electronic form, the website which the user wishes to access. The user gains access to the Internet at a gateway, either via an internet service provider (ISP) or via a smaller, usually internal, network called an Intranet. (Intranets frequently have a permanent telephone connection to the Internet.). In the middle is a highly sophisticated 8 network comprising router and other computers linked together. Computers connected to the Internet have unique numerical addresses (for example, 1.256.123.123) so that electronic information is delivered to the right place. To make these identification numbers more user friendly, they can be associated with identifiers consisting of alphanumeric characters. These identifiers are Internet domain names. Because they are made up from alphanumeric characters, it is possible for the sequence of characters to spell out words and hence trade marks or other signs used by businesses.” Most people are now familiar with the suffix .com, which identifies one of the generic Top Level Domains, or gTLDs. In our example, squiffo is the second part of the domain name and is called a Second Level Domain (or SLD). This is a sequence of characters which is unique within the set of .com domain names and therefore operates as a unique identifier.” Once registered, a domain name is used in various ways. 20 There are various levels, categories of the domain name. In the present case, the top level domain name (TLD) is “.com”. The second level domain name “IndiaProperty or IndiaProperties”, anyone can register any domain name subject to registration Rules and forms. There are many Registrars with whom TLD can be registered. The first category/level of domain names are normally for commercial organisation (i.e. .com/.net/.in etc.). 21 For Government Agency network providers, the domain names are like “.Gov/.net/.in etc “ are available. Strikingly, the domain names are available on “first-cum-first served” criteria as per the Regulation/Policy. There are Agencies which provide to solve and settle the domain dispute including the complaint. The effect and the impact of the registration of domain name on the trademarks 9 or service marks or corporate name, need detail deliberation and trial and in a given case, by referring to internet policy on the subject. The issues of dishonest adoption or mis-appropriation of domain name are again matter of full trial and the evidence. The issue on “jurisdiction” are complex issues in view of the different Rules relating to the subject, in view of the unclear and vague provisions of law. Therefore, I am also inclined to reject this application/motion for an ad- interim interdict. However, I do not deny the right to contest the same in the trial. 22 Accessing a website – as per Kerly (supra) – is elaborated as under: “The user at his or her PC connects to the Internet, either via an ISP or via an intranet. The user identifies the website which he or she desires to visit. This is done either by typing in the domain name or by selecting the website from a search listing or a hyperlink. The last command from the user-either pressing the return key or clicking on the domain name shown on screen-sends an electronic message equivalent to: “please send the web page identified by the domain name”. The message is routed through to the web server on which the website is stored. The web server receives the message and responds by sending an electronic message containing the web page back to the PC of the user. The web page is received by the PC and displayed on the user’s screen. Frequently, the first web page received will direct the user to other web pages which form part of the whole website. The user selects a second web page by clicking on the hyperlink. Thus, the user sends a second message “please send me the web page” identified and so the process continues. In between sending and receiving messages, the user’s computer is sitting there waiting. Likewise, once the web server has received, processed and responded to the user’s request, it is either waiting for another request or dealing with a request from a different user.” 23 The purpose of an effective domain name is to brand the site. The various general domain names are available. Normally the owner select domain name for the business/service they want to provide and/or to attract the 10 customer/business. Therefore to provide service/business on estate property, houses and/or related business in India, the domain name referring to words “India” and “Property” are very common. No right can be claimed on these words. Such words cannot be said to be trademark names or brandable names. These words cannot be claimed/treated as coined names. The more visits/hits categorise as scale of popularity of the web-site. 24 To select or adopt such permissible domain name is not prohibited. On the contrary, it is not prohibited but acceptable mode to do the related business by selecting such related domain names to exploit the user’s mis-spell or mistakes of the words. The web-site of similar nature with similar words, therefore, in no way a sufficient reason or ground to pass any interim order in the present case in absence of any changed circumstances. 25 Even otherwise, the concerned customers, once open the site, unless log in and registered, cannot do business, merely by opening the site. Therefore, such person with full knowledge, if opens the site, by typing the domain name, even at this stage, there is no case of any confusion and/or hampering of any business as alleged. Once site is open, the respective logo, the basic graphics, branded words or trade marks, shape or design, shape of the page and colour combination and words itself separate the website/site from the respective business and purpose. The popularity of such website is also depend upon the satisfaction of service of business or services which the said website provide to the customer or the client. There is no question of any confusion or wrong impression. 11 26 There is a recognised distinction between the domain name and the trademark. The word “IndiaProperty” or “Properties”, individually or conjunctively, are common words. There is no distinctiveness in these words. Apart from the domestic law, if the position is unclear and/or silent, the general international Treaties, Convention and laws, need to be looked into for proper consideration of the issues. The domestic law governs within the territorial limits/boundaries, therefore, the trademark rights are also territorial. The inter- net has no territorial limits/boundaries. There is nothing to control the physical boundaries/jurisdiction irrespective of the domestic laws or regulations. The user/customer of the internet knows, the various facets of internet trade/business. The submission therefore, based on prior use itself is also not sufficient to grant any interim-relief. In the present case, the business/hits on the respective sites are quite equal and sufficient in number. 27 The possibility of confusion in such cases is applicable to both the parties having adopted similar domain name, actual damages, if any, may be determined at the full trial. 28 The plaintiff failed to establish a prima facie case of trademark infringement or of passing off. It is not the question of granting damages, based upon the domestic law at this stage, but of an effective injunction order. It also depends upon the law of the country and the reciprocal arrangements for enforcement, if any, made on the subject in view of the International 12 harmonization and for the time to come in view of developing global trading and commercialisation. The domain name thefts have increased and, therefore, also the related dispute. 29 The internet domain name is nothing, but an internet protocol, electronic specified address and a unique identification. Such IP address is basically consists of groups of numbers unlike the telephone numbers. Everybody knows the effect of dialing one wrong number. The user/customer who wants to do the business on the inter-net is normally aware of effect of mis-spell or mistake in typing the words to open the site/Home page. Even if the site is open, to do business/trade, a registration or log-in is necessary, at least for the first time, unless provided otherwise. Once registered, the customer is aware, having accepted the terms and conditions and normally proceeds to do the business accordingly. In my view, there is no question of confusion or doubt, except first hit and/or first time surfing, even if any. There is no dispute, in the present case, about the Home page, colour, shape or any design. 30 Taking note of the plaintiffs affidavits and the affidavit of the defendants, including of their expansion of respective business, ties ups, further agreements and markets, in my view, balance of convenience tilt in favour of the defendants, specially when the plaintiffs failed to make out the prima facie case or any connected reasons to grant any relief as prayed in the Notice of Motion. 31 In view of above, the Notice of Motion is dismissed. No costs. (ANOOP V. MOHTA, J.)