PASSING OFF and DOMAIN NAME

by
Prof.(Dr.) Naresh Kumar Vats

RAJIV GANDHI NATIONAL UNIVERSITY OF LAW,

PUNJAB
 CONCEPT OF PASSING OFF
• The concept of passing off has undergone changes in the course of
time. At first it was restricted to the representation of one person's
goods as those of another. Later it was extended to business and
services. Subsequently it was further extended to professions and
non-trading activities. Today it is applied to many forms of unfair
trading and unfair competition where the activities of one person
cause damage or injury to the goodwill associated with the activities
of another person or group of persons.
• In British Diabetic Association v. Diabetic Society, both the parties
were charitable societies. Their names were deceptively similar. The
words 'Association' and 'Society' were too close since they were
similar in derivation and meaning and were not wholly dissimilar in
form and Permanent injunction was granted.
 Elements Of Passing Off
• The three fundamental elements of passing off are Reputation, Misrepresentation
and Damage to goodwill. These three elements are also known as the CLASSICAL
TRINITY, as restated by the House of Lords in the case of Reckitt & Colman Ltd v.
Borden Inc . It was stated in this case that in a suit for passing off the plaintiff must
establish firstly, goodwill or reputation attached to his goods or services. Secondly he
must prove a misrepresentation by the defendant to the public i.e. leading or likely
to lead the public to believe that the goods and services offered by him are that of
the plaintiff's. Lastly he must demonstrate that he has suffered a loss due to the
belief that the defendant's goods and services are those of the plaintiff's.
• Modern Elements of Passing off - In the case Erven Warnink Vs. Townend , Lord
Diplock gave the essential modern characteristics of a passing off action. They are as
follows:-
• 1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or services
supplied by him.
4. Which is calculated to injure the business or goodwill of another trader.
 When the passing off arise?
• After Reckitt & Colman Products Ltd. v. Borden Inc. now there are three essential requirements for the
passing off action:
• (i) The Claimant’s Goodwill: Although damage is the gist of an action for passing off, but the plaintiff
must show that there is a reasonable reason of his being injured by the defendant’s action, even if the
conduct of the defendant might be calculated to deceive the public. A private individual cannot
institute a suit for passing off even if the defendant practices deception upon the public, unless it is
proved that the defendant’s action is likely to cause damage to the individual.
• (ii) Misrepresentation: Misrepresentation in the simplest form of passing off. If A says falsely these
goods I am selling are B’s goods. It is a clear case of passing off. In simple way we can say that
misrepresentation should lead. Or be likely to lead confusion on the part of consumers. In case of
Khemraj v. Garg, in this case the defendants had copied the get up, layout, design and colour scheme,
etc. and the name “manav panchang, mani ram panchang” and “shri vallabh Mani Ram panchang” of
the plaintiff’s panchang. The court held that it is similar to the plaintiff’s product and Interim injunction
was granted.
• In Rupa & Co. Ltd v. Dawn Mills Co. Ltd. Case, the defendant manufacture an underwear which named
dawn as similar to the plaintiff’s manufactured underwear don, which is creating confusion in the
minds of people because the layout, get up and colour combination is same to the plaintiff’s product.
• (iii) Damage: Damages are available in a passing off action. And remedy is available in both cases
whether the infringement suit or passing off action in both the cases remedy is given.
 DOMAIN NAME: Cyber Squatting
•Cyber Squatting:
•It means where two persons claim for the
same Domain Name either by claiming that
they had registered the name first on by right
of using it before the other or using something
similar to that previously. For example two
similar names i.e. www.yahoo.com and
www.yaahoo.com.; www.yahoo.com and
yahooindia.com
 Monetary Over seas v. Montari Industries Ltd.
• The principle underlying the action for passing off is that no man 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 on by
another man.
• The court referred to the case of Monetary Over seas v. Montari Industries
Ltd.; 1996 PTC 42 where it was said that, “When a defendant does business
under a name which is sufficiently close to the name under which the
plaintiff is trading and that name has acquired a reputation and the public
at large is likely to be misled that the defendant’s business is the business
of the plaintiff, or is a branch or department of the plaintiff, the defendant
is liable for an action in passing off.”
• If the two contesting parties are involved in the same line or similar line of
business, there is grave and immense possibility for confusion and
deception and, therefore, there is probability of damage. In this case both
the Plaintiff and the Defendants have common field of activity.
 Yahoo! Inc. v. Akash Arora & Anr.
1999 PTC (19) 201 (Delhi)
• Passing off on the Internet litigation is not very common in India. The first
reported Indian case was Yahoo! Inc. v Akash Arora, the former, the global
Internet media search and information network, filed an action against the
latter on the Internet as those of the plaintiffs’ by adopting the domain
name “yahooindia.com”.
• The plaintiffs domain name “yahoo.com” was registered with Network
Solutions Inc (NSI) since 1995, that it had become well-known and they had
obtained registrations on the trademark “Yahoo” or variations thereof in
approximately 69 countries, although not in India. The defendants
registered the domain name “yahooindia.com” with NSI in November
1997, as well as 16 variations containing the word “yahoo”. The Plaintiff
objected to the defendant’s use of the domain name and the defendants
responded modifying the announcement of their forthcoming web site and
by including the disclaimer that “www.yahooindia.com” had no connection
with Yahoo, Inc. of California, USA. The defendants activated their web site
and adopted substantial part of plaintiffs’ Singapore web site named
“yahoo.com” which contained a section in India.
 Yahoo! Inc v. Akash Arora
• The defendants submitted that a website, unlike a trademark, is a specific
address and that their disclaimer would eliminate any confusion. They further
pointed out that there was no protection for services in India that no goods were
involved in this case. In addition they claimed that, contrary to the plaintiff, that
we offered only content specifically directed to India, that “yahoo” was an English
dictionary word available and that Internet users, who are usually sophisticated
would know the difference between the two web sites.
• The Delhi High Court rejected the defendants’ argument, on the grounds, inter
alia, the trademark law applies equally to domain names on the Internet;
• that, where the parties are in the same or a similar line business, the use of
similar names would result in confusion and deception;
• that the disclaimer by the defendants on their web site did not reduce the
likelihood of the confusion;
• that the plaintiff had obtained registration on the trademark YAHOO and
variations thereof in 69 countries;
• that the mark was widely publicized and well-known; and that the fact that
“Yahoo” was a dictionary word was no reason to deny protection for the mark.
The mere fact that the Internet users were technically educated and literate, this
would not reduce the risk of confusion.
 Yahoo! Inc v. Akash Arora
• The court held that:
• “In an Internet service, a particular Internet site could be
reached by anyone anywhere in the world who proposes to
visit the said Internet site. With the advancement and
progress in technology, services rendered on the Internet has
come to recognized and accepted and are being given
protection so as to protect such provider of service from
passing off the services rendered by other as that of the
plaintiff. As a matter of fact in a matter where services
rendered through the domain name in the Internet, a very
alert vigil is necessary and a strict view is to be taken for its
easy access and reach by anyone from any corner of the
globe.”
 Rediff Communications Ltd v Cyberbooth
• Similarly Bombay High Court in Rediff
Communications Ltd v Cyberbooth was faced with a
case where the defendant has adopted the domain
name “www.radiff.com” despite the existence of a
well-known web site of the plaintiffs
“www.rediff.com”. the court found such an adoption
by defendant was completely dishonest and held that
once the intention to deceive is established the court
would not make any further enquiry whether there is
any likelihood of confusion or not.
 Rediff Communications Ltd v Cyberbooth
• The Court relied upon the decision in Parker Knoll v Knoll
International where the House of Lords had held that where the object is
to device the court will be very much more ready to infer that its object has
been achieved.
• Moreover, in the “rediff” case the Court relied on the fact that both the
plaintiff and the defendant had a common field of activity; both operated
on the net and provided information of a similar nature, both offered the
facility of sale of books, etc., both offered a chat line and a cricket opinion
poll.
• The Court further held that there is every possibility of the Internet user
getting confused and deceived in believing that both domain names belong
to one common source and connection although the two belong to two
different persons. The Court was satisfied that the defendants have
adopted the domain name “Radiff” with the intention to trade on the
plaintiff's reputation and accordingly the defendant was prohibited from
using the said domain name
 Sporty's Farm LLC v Sportsman's Market, Inc
• One of the first cases in which a US court was called upon to
implement the ACPA was in Sporty's Farm LLC v Sportsman's
Market, Inc In the above case, the facts were as follows:
• Sportsman's Market, a mail order catalogue company, was
engaged in the business of selling products to aviation clientele
and had registered the trademark "sporty's" A company called
Omega entered the aviation catalogue business, formed a
subsidiary called "Pilot's Depot", and registered the domain
name "sportys.com"
• After Sportman's Market filed its lawsuit, Omega launched
another subsidiary called Sporty's Farm to sell Christmas trees
and then sold the "sportys.com" domain to Sporty's Farm.
 Sporty's Farm LLC v Sportsman's Market, Inc
• The Court found that the defendant acted with a "bad faith intent to
profit" from the domain name "sportys.com" not because Sporty's
Farm attempted to sell the domain name to Sportsman's Market, Inc,
the other owner of the trademark "sporty's", but because of other
bad faith factors contained in the Act. One fact noted by the court
was that neither Sporty's Farm nor Omega had any intellectual
property rights in "sportys.com" at the time that Omega registered
the domain name. It was also pointed out by the Court that the list of
"bad faith" factors were only indicators that may be considered along
with other facts. The Court found that the purchase and use of the
domain name by Sporty's Farm, generally suspicious in that Omega
created a company in a unrelated business that received the name
Sporty's Farm only after the lawsuit was filed.