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TMI Blog2001 (4) TMI 944X X X X Extracts X X X X X X X X Extracts X X X X ..... s distributed in over 500 towns and cities of India and constitutes 70% of the branded bottled mineral water in the country. That it has a huge distribution network all over the country which ensures that the mineral water under the mark BISLERI is made available to consumers all over the country. 3. That plaintiff has also spent huge sums of money on the advertisement and publicity of its product BISLERI and its reputation has grown over the years as result of enormous consumer confidence and trust in the mineral water and the mark BISLERI has come to be associated exclusively with the plaintiff and, therefore, belongs to the plaintiff and no one else has the right to use the said mark in relating to any product whatsoever. 4. That the word BISLERI has no dictionary meaning and is an Italian surname which is entitled to the highest degree of protection like various other surnames which fall in this category namely Colgate, Bata etc. One Mr. Felice Bisleri, an Italian entrepreneur has set up business of mineral water in India and the business was bought by one of the plaintiff's group companies and all the rights in the BISLERI marks now vest exclusively in the plaintiff comp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ration certificate under the Copy Right Act. (iii) Ex.P-5 is an extract of registration of the domain name of the defendants BISLERI.com. (iv) Ex.P-6 is the copy of the e-mail dated 22nd January, 2000 sent by the defendant in response to the plaintiff's telephone call. (v) Ex.P-7 is the letter by the plaintiff to the defendants informing the plaintiff to make the domain name available to the plaintiff which is the domain name of the plaintiff for the 20 years. (vi) Ex.P-8 is the information received by the plaintiff from Network Solutions intimating that they have de-activated the domain name of the defendants BISLERI.com pending the result of this suit. 12. The reply sent by the defendants in response to the telephone of the plaintiff is highly relevant and needs to be reproduced. It reads as under :- "Please refer to telecom you had with us for your demand for the domain name. After discussion with my partner and all my senior staff members, we mention following We are a team of professional technocrats working hard. We are presently working on following protals (under construction) We had done lot of ground work for designing these sites and has put in may effort ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ruled by one person or government. Wester's dictionary defines it in various contexts as under :- 1. A field of action, thought, influence. 2. The territory governed by a Single ruler or government; 3. Region characterised by a specific feature. 4. Law. 5. Land of which their superior title and absolute ownership. 16. Thus, in common parlance any title or name or mark or brand or identity in any field of activity or a trade name over which a particular individual has the exclusive, prior and lone claim is the domain name or trade mark for any kind of activity. Trade mark is at par with a territory and the owner of any trade mark is placed in the same position as owner of a territory. 17. If an owner or possessor of a trade mark has prior and exclusive use and lone claim over the trade mark, he attains not only superior title but absolute ownership thereof. This is what is the genesis of the work 'domain' and when the property or the territory or the activity relates to a trade or commerce and has been given the name or mark under which the commercial activities are identifiable with the carried out under the said name the user or owner thereof has a domain over i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ader so to conduct his business as to lead to the belief that his goods or business are the goods or business of another. This wrong is known as "passing off". It is immaterial whether the false representation, as to goods or business, involved in passing off, is made expressly words, or impliedly, by the use or imitation of a mark, trade name or get-up with which the goods of another are associated in the minds of the public." 24. So far as the Registering Authority of the domain name is concerned it agrees for registration of domain name only to one person. That is on first come first serve basis. If any persons gets the domain name registered wit the Registering Authority which happens to be the trade name of some other person, the Registering Authority has no mechanism to inquire into it to decide whether the domain name sought to be registered is in prior existence and belongs to another person. 25. In a celebrated case of Mark and Spencer PLC.Vs. One In A Million Ltd 1998 FSR 265 it was observed that a domain name comprises groups of alphanumeric characters started by dots and a first group commonly comprises the name of the enterprises or a brand name or tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t in English dictionary and did not find word 'Bisleri' and came to know that it was a brand name. They further informed the plaintiff that at the time of registering they had different intention and today also they do not have any bad intention but still they would make the domain name available to them if they got the returns for work done on this project after considering the future business. 30. Interestingly the domain name and the site when uploaded does not provide any information with regard to minerals. They claim themselves to be a team of professionals and to imagine that they did not know that BISLERI is a trade name or brand name is highly surprising and hard to ram down the throat. 31. Under the Uniform Domain Name Dispute Resolution Policy, Network Solution requires a party before it applies to register a domain name to verify that to its knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and that it will not knowingly use the domain name in violation of any applicable laws or regulations and also that the domain name is neither identical nor similar to a trade mark or service mark in whic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 35. The explanation of the defendants that they were under the impression that BISLERI was a name related to minerals and therefore they wanted to develop the site for providing information in relation of the minerals and that they did not know that it has no dictionary meaning or did not have the knowledge that it was a brand name is extremely unplausible and incredible. On the one hand they claim to be technical professionals while on the other evinced little knowledge about universally known brand of a product that is used by all and every one and at hourly or so frequency. It is not surprising that they themselves might be using the mineral water of 'Bisleri' mark day in the day out in view of the growing consciousness about hygiene and risk of water born diseases. 36. It is obvious and self-axiomatic that the domain name 'Bisleri' was chosen by the defendants with malafide and dishonest intention an as a blocking or squatting tactic. The reply sent by the defendant that they are ready to forego with the domain name if they are compensated with the cost incurred by them for developing the site demonstrates that their sole object in getting the domain name reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ned counsel for the plaintiff has contended that the services rendered through internet domain name have at least to be recognised for an action of passing off. 40. In support of this, the learned counsel relied upon the decision of this court in Yahoo Inc. vs. Akash Arora and another 1999 (19) PTC. 201 where domain name "Yahoo" of the plaintiffs and "yahooindia" of the defendants were subject matter of the controversy. It was argued on behalf of the defendants that the internet users are sophisticated users and only literate people who are able to as certain can approach the actual internet site that they intend to visit. However, this argument did not find favor and it was held that if an individual is a sophisticated user of the internet and even if he may be an unsophisticated consumer of information such a person may find his or her way to the different internet site which provides almost similar type of information as that of the plaintiff and thereby the confusion can be created in the mind of the said person who intends to visit the internet site of the plaintiff but in fact reaches the internet site of the defendant. 41. Thus, the unanimous view is th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... other losses due to the illegal hoarding by the defendant of the domain name "bisleri.com". 46. The defendant is therefore neither the legal user nor has nay information to provide on the "bisleri" and the fact that he is reoffering the domain name to the plaintiff against huge amount of money bares the ill designs and a bad faith of the defendant in getting this domain name registered. 47. In view of the settled position of law enunciated down the lines and particularly in Cardservice International Inc. Vs. Micgee (42 USPQ 2nd 1850) that the domain name service functions as the trade mark and is not a mere address or like finding number on the internet and, therefore, is entitled to equal protection as trade mark for it also identifies the internet site to those who reach it, much like a person's name identifies a specific company, the defendants have to be injuncted upon by way of permanent injunction. 48. As a result, the suit is decreed and the defendants, their directors, servants, agents, licensees, franchises, representatives are restrained in terms of prayers (A), (B) and (C) of the plaint. Plaintiff is given the liberty to approach the Network S ..... X X X X Extracts X X X X X X X X Extracts X X X X
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