Trade Marks and Domain names - Can there be a broken link?

A recent decision of the Delhi High Court, deals with the inextricable link between Domain names and Trade Marks, and more specifically a domain name containing a generic term - namely,“internet”. 

The decision addresses petitions that challenge an award by the sole Arbitrator, appointed by the National Internet Exchange of India (NIXI) to adjudicate the issue.

The domain name “internet.in” was registered by one Stephen Koenig, and was complained against as being identical and confusingly similar to Jagdish Purohit’s trademark “internet”. It was alleged that the acquisition of the domain name was a fall out of Koenig having no legitimate interests in the domain name, and hence, acquired in bad faith. 

The Arbitrator in view of the nature of the term "internet" and .IN Dispute Resolution Policy (INDRP), had awarded that the domain name be struck down and denied the plea to transfer the domain name to Purohit.

The High Court, however, held that the cancellation of the registration of the domain name ‘internet.in, would not automatically entitle the transfer of the domain name in favour of the defendant. Clearly, as the Court noted, the Respondent was unable to show that he was actually using the trademark ‘internet’ in his business.

Additionally, the Court stated that the fact that the word ‘internet’ is generic and that the trademark ‘internet’ of the Respondent is therefore a weak one, are relevant considerations that support the decision of the learned Arbitrator to decline the prayer for transfer of the domain name ‘internet.in’ in the respondent's favour.”

To this extent, the Delhi High Court, was in agreement with the Arbitrator’s decision. However, in one sentence, the Judge held that the direction in the impugned Award that the domain name ‘internet.in’ should be confiscated and kept by the .IN Registry, be set aside.

This to me, seems somewhat strange. If a term is generic, and hence a holder of a related domain name is said to be squatting upon the use of such a domain, why should the same not be confiscated? After all, if the law governing domain names follows the rationale behind trade marks, this is a natural corollary, especially since generic terms are disentitled from protection as trade marks.

If this is the case, what about trademarks that have become generic? The most common example that comes to my mind is Google, which has attained a tone of usage similar to a verb, rather than being used as a proper noun or adjective. 

Am sure a player as big as Google has acquired domain names with nearly every possible top-level domain name. So in a hypothetical situation, where a deceptive or confusingly similar variant of google.com is registered as a domain name, will Google loose all its rights? Or is Genericism a trade off to being as big a brand as Google is?

I think some of our readers will be able to throw in some predictions. For now, I hope that 2012 brings about interesting quirks and questions for the blog to pursue!!

Stale News: Delhi Courts Issue Notices to Social Networking Sites

A few days ago, a Delhi Court issued an ex parte order directing 22 social networking sites to remove derogatory content which might hurt religious sentiments.  The order was issued in a petition lodged by Mufti Aijaz Arshad Qasmi. The websites were asked to respond to the petition by yesterday i.e. December 24, 2011.

In another private complaint, another Delhi Court has issued notice to Facebook, Orkut, Google and Youtube for publicly exhibiting obscene lascivious comment.

One wonders if it’s sheer coincidence that these complaints were filed in the immediate aftermath of Kapil Sibal’s call for censorship of the internet. After all, in this country, it isn’t that difficult to plant complainants...

Policing Netizens?!?!?!

I am told that during one of India’s toughest political times, when editorials were curtailed due to an Emergency, one prolific newspaper carried Nobel laureate Rabindranath Tagore’s wonderful words:

Where the mind is without fear and the head is held high

Where knowledge is free

Where the world has not been broken up into fragments

By narrow domestic walls

Where words come out from the depth of truth

Where tireless striving stretches its arms towards perfection

Where the clear stream of reason has not lost its way

Into the dreary desert sand of dead habit

Where the mind is led forward by thee

Into ever-widening thought and action

Into that heaven of freedom, my Father, let my country awake

Recently, our Minister for Communications and Information Technology, Kapil Sibal who is also one of India’s most renowned figures in the legal fraternity, made a statement regarding policing the internet and social media. While his statements were the much heated subject of discussion in the Indian media over the course of last week, they indeed do attract one’s attention, at least for a moment or two, to look at the pros and cons of doing so, pertinently in the context of social media.

Of course as far as policing one’s parallel life on the internet goes, in my mind several issues may arise. The most prominent of these issues is the constitutionality of such policing, vis-à-vis the Freedom to Speech and Expression, guaranteed under the Constitution. Undoubtedly, as we all tweet, Facebook or share via Google+, not just do we share our lives, but these platforms have given us an opportunity to become more vocal and on several occasions, severely critical as well.

However, with the expansion of media, whereby one can “voice” one’s opinion, is the need for policing also called for? My personal opinion, which I believe is the majority opinion, is an emphatic NO. While the Constitution guarantees the Freedom to speech and expression, the same is unrestricted across the media of communication. Additionally, since Art. 19(1)(a) is a guaranteed freedom, I believe that the only action viable, if at all, would be a civil defamatory suit for libel.

Having said this, my concern runs somewhat deeper, beyond what Mr. Sibal has to say. I worry most about copyrighted content and sharing the same, particularly of videos.

If one were to consider such content, the same is being dealt with by making access to the content itself unavailable to a particular geography -just as many websites, youtube videos, online telecasts are not available to a particular ISP addressee.

However, I am unsure if the walling off content would prevent someone from “reposting” a link on an online forum. The catch here is that while a video may be unavailable in a particular geography, I may be able to access the same the moment I shift location.

On one hand, since one may consider the absence of commercial benefit to the profile hosting such content, and may advocate this use to be fair, on the other hand, the mere lack of commercial benefit shouldn’t amount to misuse. If a pay-per-view system be in place, would this form of contributory infringement come to rest? Or, since songs, et al. do speak our minds the best, more often than not, would our Freedom of Expression?!?!?

There is a new song that has become a rage amongst the Indian public, called Kolaveri di, and has had over a couple billion hits. Thanks to social media and sharing, the song has acquired the popularity that it has. Now, that was someone’s mind without fear and head held high!!!