Monday, December 5, 2011

Almost Famous

In the recent past, the Delhi High Court, seems to have been flocked by cases dealing with celebrity personalities. One such case that has caught my attention, and more so has begged me to put in some thought, is the judgment dealing with Arun Jaitley’s right to use his name as a domain name, viz., Mr. Arun Jaitley vs. Network Solutions Pvt. Ltd.

To be brief about the facts, Arun Jaitley, spokesman for one of India’s leading political parties, moved to get registered. Facing difficulty in doing so, he sent a letter addressing Network Solutions, LLC (the registrant as revealed by a search), to which a reply was received stating that the said domain name was already taken. 

An offer to purchase the said domain through Network solution’s Certified Offer Service was also made. However, on scouting around a bit, Mr. Jaitley discovered that the website was “Pending Deletion”, since it had not been renewed by the previous owner.

While I agree with the final outcome of the case, deciding that Arun Jaitley should be the rightful regstrant of the domain name, I am somewhat unconvinced by the manner in which the law of passing off was applied.

To cut a long story short, the judgment relies on decisions dealing in the applicability of trade mark law in the sphere of domain names, primarily keeping focus on Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. To describe these decisions in the broad sense, these decisions apply trademark law to afford protection to domain names that were being infringed vide the use of deceptive URLs.

In my view, the application of these decisions to the case is somewhat flawed. As I read the judicially deliberated law protecting domain names, the law on trademarks is applied to domain names owing to the commercial nature facilitated by both. Where a domain name does not refer to a trade mark per se, I think the tennets of the Uniform Domain Name Resolution Policy should be relied upon, as against an extensive reliance on trade mark law, as in this decision.

As averred by his counsel, Arun Jaitley is a name that has acquired fame and reputation, as one of India’s most renowned lawyers. However, now that he is a full time politician, I wonder if he could still project his name to have a trade mark sort of status. In my view, the only reason to adopt a passing off sort of argument would be its judicially adopted straight jacket treatment vis-a-vis cyberlaw.

Further, while our law does recognize a common law right in a trade mark, however, from a reading of the Act, a name that acquires a trade mark status, whether under common law, or by registration based on acquired distinctiveness, the same must be used in relation to goods and services. 

Additionally, acquired distinctiveness is only a means to acquire a trademark registration, but the Act nowhere purports that every name, personality or term that has acquired a secondary significance to it, should necessarily be protected as a Trade Mark.

This case in my view is a case of false and misleading description, which per the Indian Trade Marks Act, does not cover individual personalities. This is a stark contrast to the Lanham Act, that covers the protection of personalities as well.

Further, I think this case makes one for a tortious claim of misrepresentation.

Although the law of passing off has its roots in the law of torts, and a case such as this could only be best described by using the term “passing off”, however, I strongly feel that in this instance, delinking from the law of trade marks, and the adoption of a direct tort related approach was necessitated.

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