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Buffalo Networks Private Limited & Another v/s Manish Jain & Others

    Suit No. 2212 of 2000

    Decided On, 15 February 2005

    At, High Court of Delhi


    For the Appearing Parties: None Appeared.

Judgment Text

Pradeep Nandrajog, J.

1. Defendants were proceeded ex parte. Plaintiffs have led affidavit by wa3' of evidence. Case of the plaintiffs is that the first plaintiff, by virtue of an agreement dated 20.7.2000 took over the operations of plaintiff No. 2 as a going concern. Plaintiff No. 2 had a news portal 'www.tehelka.com'. Since plaintiff No. 2 faced difficulties in registering the domain name from India, one of its employees, Aniruddha Bahal requested his cousin, Ashish Mehra to register the domain name, 'www.tehelka.com' with the understanding that at a future date, domain name would be assigned to the plaintiffs. Domain name was registered with the registering authority, Register.com.Inc.' Subsequently, Mr. Ashish Mehra assigned the domain name to plaintiff No. 2 in March 2000.

2. It is accordingly claimed that in view of the agreement dated 20.7.2000 between the plaintiffs, plaintiff No. 1 has become the absolute owner and proprietor of the domain name, 'www.tehelka.com.'

3. It is stated that the name 'tehelka', is a word chosen by the plaintiffs as a domain name. It is not a word of common usage and is not related to the service of news.

4. It is stated that defendant No. 2 which appears to be an entity of defendant No. 1 registered the domain name, 'www.tahelka.com'. It appeared for the first time somewhere in January, 2000. It is also averred that the defendants had lifted material from the website of the plaintiffs and in particular, the transcripts of the conversation between certain cricketers and had posted the same at its website.

5. It has been accordingly prayed that the defendants be injuncted from using the word 'tehelka' or 'tahelka' or any other name which is identical with or deceptively similar to the plaintiffs trade mark/name 'tehelka' or containing the word 'tehelka' as an essential or dominant feature thereof. Prayer for transfer of the domain name, 'tahelka.com' to plaintiff No. 2 from the register of Internet Network Information Centre is also prayed for. Plaintiffs have also claimed damages in sum of Rs.10 lakhs for eroding, diluting and reducing the value of the website of the plaintiffs.

6. By way of evidence led, following documents have been proved:-

(i) Ex.P-1 & P-2, being the Power of Attorney in favour of Mr. Tarun J.Tejpal to institute the suit and verify pleadings.

(ii) Ex.P-5.being the registration details of the domain name 'tehelka. com'

(iii) Ex.P-6, being the assignment by Mr. Manoj Prabhakar (a cricketer) of the copyright in the sound records of the conversation recorded by him with various persons, to plaintiff No. 2.

(iv) Ex.P-7 to P-16, being transcript of the conversation on plaintiffs website and on the defendants website.

7. In view of the evidence led, it stands established that plaintiff No. 1 is the owner of the domain name 'www.tehelka.com'. It also stands established that the defendant, has deceptively started using the word 'tahelka' as its domain name which is deceptively similar to the word 'tehelka'

8. The question whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade marks was a subject matter of consideration before the Supreme Court in C.A. No. 3028/2004 Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. Taking note of the definition of 'trade mark', 'mark' 'Goods' and 'services' in sections 2(zb), 2(m), 2(j) and 2(2) of the Trade Marks Act, 1999, their Lordships posing the question whether a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the internet, in the context of the cumulative affect of the definitions of the words afore-noted held:

"12. The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information services which are associated with such domain name. Thus, a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is 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, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. "As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc. the distinctive nature of the domain name providing a global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value". The answer to the question posed in the preceding paragraph is therefore an affirmative."

9. In paras 16 & 17 it was held:

"16. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers users seeking to locate the functions available under one domain name may be confused it they accidentally arrived at a different but similar web site which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off.

10. Learned counsel for the plaintiff does not press for relief of damages or rendition of accounts as prayed.

11. Suit is acco

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rdingly decreed in terms of prayers (i) and (ii). Defendants, their servants, agents and assignees and all others acting on behalf of the defendants are restrained from, using the domain name 'www.tahelka.com' or the word 'tehelka' or any other word comprising of the same or deceptively similar to it on the internet or otherwise. The registration of domain name, 'www.tahelka.com' in favour of the defendants is cancelled and the said domain name is transferred to plaintiff No.1. Registered.Com Inc. is directed to take the necessary steps in accordance with their declaration dated 9.11.2000 furnished in this Court. 12. Though defendants have chosen to remain exparte, costs shall follow in sum of Rs.1 lakh in favour of the plaintiffs and against the defendants.