Protecting Domain Names In The Age Of Rapid Technological Advances
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Protecting Domain Names In The
Age Of Rapid Technological Advances
The Hon'ble High Court of Delhi granted a permanent injunction in favour of the plaintiff, NRB Bearing Limited. The matter related to domain name infringement.
The plaintiff is a renowned company in the business of manufacturing needle roller bearings, ball bearings and various other types of bearings used in the automotive industry and all other engineering industries. The plaintiff's name was changed to NRB Bearing Ltd. in the year 1990 and it is stated to be the owner of the trademark "NRB" which was registered in the name of the plaintiff for the first time in the year 1965 which has also been registered in different classes in the name of the plaintiff. The domain name "nrbbearings.com" was created by the plaintiff in 1997 which was to expire in 2013. The plaintiff intended to renew the domain name for further periods.
The defendant company Windsor Export, established in 1996 is stated to be a leading manufacturing export house for automobile spares, agro machineries, pumps and diesel engines. It was submitted that the defendant is recognized by its customers particularly from Europe, Middle East and North West Africa.
The plaintiff became aware of the defendant company in the year of it's incorporation, i.e. 2011 and also that the defendant was intending to sell ball bearings and related products. It further came to the plaintiff's knowledge that the defendant had adopted an identical trade mark and also an identical corporate name. Also, the defendant's website "nrbearings.com" is deceptively similar to that of the plaintiff's.
The plaintiff's arguments pointed towards the fact that while the defendant is named "Windsor" but has fraudulently named its website confusingly similar to that of the plaintiff's by deleting the letter "b" which appears twice in the plaintiff's domain name. It was also argued that both the marks are deceptively similar, cashing on which, the defendant is seeking to use the plaintiff's domain name, thus committing an act of passing off and misrepresentation. This would result in causing grave damage to the plaintiff's goodwill and reputation while giving a profitable leverage to the defendant.
The defendant argued that the suit is liable to be dismissed as the contentions of infringement and passing off haven't been proved and also that the suit is filed without authorization, making it liable to be dismissed under Order 7 Rule 11 read with Order 29 Rule 1 of the Civil Procedure Code. It was also argued that the two marks are different and the plaintiff has no exclusive right in the letters/ word "NRB/NR" per se, being abbreviations of Needle Roller Bearing and Needle Rollers, respectively, as the said terms are publici juris, i.e. freely accessible by public.
The Hon'ble High Court discussed the definition of "Mark" as per Section 2(1) (m) of the Trade Marks Act, 1999. The definition includes letters and numerals and these can acquire distinctiveness on account of high degree of goodwill, reputation and long user. It affirmed the fact that the letters NRB is a registered trademark of the plaintiff, which according to the evidences is a well known trademark and is highly distinctive with the goods and business of the plaintiff alone.
As regards the law on passing off, the Hon'ble High Court stated that such issue of law is well settled. The principle underlying the action is that no one is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried by another man.
The Court proceeded to discuss the issue of domain name infringement and its function as a trademark. That the domain name serves the same function as a trademark, therefore is entitled to equal protection as a trademark is an undisputed fact. The trademark law applies to the activities on internet. The plaintiff submitted on table some important cases with respect to domain name infringement like, like Acqua Minerals Ltd. v Pramod Borsey and Another, Rediff Communications Ltd. v Cyberbooth, Satyam Infoway ltd. v. Sifynet Solutions Pvt. Ltd. and Yahoo!, Inc. v Akash Arora & Anr. and the Court went on to refer the said decisions.
According to these various decisions, when two similar domain names are considered there is every possibility of internet user being confused and deceived in believing that both domain names belong to a common source and connection although belonging to different persons. Such confusion occurring from use of the same or similar domain names is even higher with the rapid increase in use of e-commerce due to instant accessibility. Further, when the two contesting parties provide their services in the same area, the likelihood of confusion is even greater. It is an established fact that there is a possibility for an internet user while searching the website of one party to enter the website of another through only a small mis-spelling of the domain name. The defendant had referred to just one case which did not help the present matter, as the facts in both were materially different.
The Hon'ble High Court decided that the plaintiff's mark NRB in the present matter is highly distinctive and has acquired residual goodwill and reputation. The plaintiff is also an earlier user and NRB is also a registered trademark. The Court noted the fact that the defendant hasn't challenged the validity of the registration which makes the defences rather weak and baseless.
It was thus decided by the Hon'ble High Court that the defendant is infringing the legal right of the plaintiff by using a deceptively similar mark as a part of its domain name. The plaintiff has made a strong case prima facie due to which the balance of convenience lies in the favour of the plaintiff. The usage of a same or similar domain name would result in irreparable injury to the plaintiff due to the confusion that could occur in the minds of the internet users. The defendant was restrained from using the domain name "nrbearings.com" or any other similar name like NRB or NRB Bearing or these words in any combination.
Thus, with this decision in NRB Bearings Limited v Windsor Export, the Hon'ble High Court of Delhi, upheld the equal position of Domain Names vis-a-vis Trademarks under the Trade Mark Law, thus acknowledging the ever increasing population of internet users who need to be kept away from confusion or deception of any sort. The protection of genuine domain name owners is also of utmost importance. It is the need of the hour to protect Intellectual Property Rights from passing off, misrepresentation and/ or infringement of any type in this age of rapidly expanding Internet horizons.
Contributed By : Hetvi Trivedi (Advocate)
Designed By : Vikash Singh