No Protection For Generic Domain Names
Given the augmenting cyberspace era, domain name disputes are on an ultimate rise and there have been numerous judgments pronounced on domain name disputes and majority of these disputes are focused on the interplay between trademarks and domain names. Last month we had reported a Bombay High Court judgment wherein it was held that there exists no statutory protection for domain names which may also be famous trademarks.
In similar lines, the Bombay High Court has again in a dealt with the concept of protection of generic domain names. The Court in People Interactive (I) Pvt.Ltd vs. Vivek Pahwa refused to grant interim injunction against the use of the domain name SECONDSHAADI.COM in a suit for trademark infringement and passing off filed by proprietors of SHADI.COM.
The Plaintiffs in this case are the proprietors of the of several well-known websites, brands and trademarks, including Shaadi.com and Shadi.com, renowned online matrimonial and match-making services. They are also the registered proprietors of the trademarks SHAADI.COM and SHADI.COM claiming usage since 1996. They have also registered other marks such as Shaadi.com Centre, Shaadi Times, Shaadi Point, Shaadi Mobile, etc. which however claim non-exclusivity over the word Shaadi.
The Defendants on the other hand launched the impugned website SECONDSHAADI.COM in 2006, as a web-based matrimonial site catering to those who seek to marry again. The Plaintiffs thus sought this present case to restrain the Defendants from using the domain name SECONDSHAADI.COM in any manner, including web-based matrimonial services.
Arguments by the Plaintiff:
The Plaintiffs rely on the well-established principle of law that a domain name has all the characteristics of a trade mark and hence considering the fact that they have been extensively using and promoting the marks SHAADI.COM and SHADI.COM, which in turn have acquired distinctiveness and gained a secondary meaning.
They claimed that the word ‘shaadi’ is the ‘essential feature’ of their mark, and when used in relation to matrimonial services is associated only with the Plaintiff’s website. And further that the Defendant’s adoption of the domain name SECONDSHAADI.COM in not bona fide, but merely an attempt to ride the wave of the Plaintiff’s success.
Arguments for the Defendants:
The cornerstone contention of the Defendants was the fact that the word “Shaadi” is a ‘generic’ and commonly descriptive word and as such “Words in everyday language, words of the common tongue are not to be allowed to be monopolized”.
They also argued that there are several rival and competing marks which include the word “shaadi” in some form or the other and hence the Plaintiffs cannot claim exclusivity for such a generic term. Furthermore, the Plaintiff’s trademark registrations also come with a disclaimer of non-exclusivity over the word “Shaadi”.
Courts Observation and Judgment:
The Court yet again held that the word ‘shaadi’ is generic and commonly descriptive and lends itself no meaning other than its ordinary lexical one, which means matrimony or wedding. Furthermore, there is a long list of rival entities that use the word “Shaadi” to provide similar services and this is precisely the risk the law says an adopter of a generic or commonly descriptive expression must expect to suffer.
The Court also reiterated that, “where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run, or else the first user would be allowed to unfairly monopolise the words. In matters of this nature, courts accept even the smallest differences sufficient to avert confusion.”
The Hon’ble Court firmly put forth that “There can be no restraint against the use of general words” and very precisely elucidated that, “I think it is wholly incorrect to take a generic or commonly descriptive expression as part of a mark, and then, …claim that it is ‘prominent’ or ‘essential’ or ‘leading’, and then lay claim to an exclusivity it could never have had if used on its own. This seems to me to be a roundabout way of trying to achieve that which is impossible to begin with.”
Interestingly the Court also pointed out that Top Level Domain (“TLD”) are also generic terms as every domain name needs some TLD suffix such as .com, .net, .org, .in, .gov to function and these are, therefore, entirely generic. They have no distinctiveness at all and no one can claim exclusivity in any TLD or any domain suffix of any level.
And therefore it was held that the Defendants have placed the word “second” prominently above “shaadi.com”, which is a sufficient variation and hence the petition for interim injunction was dismissed.
This judgment comes in as a pretty straight-forward interpretation of law which clearly states that “No monopoly over generic/common words”. First and foremost, one must keep in mind that generic/general/commonly used words cannot be trademark protected (keeping aside exceptional cases wherein a common word is used arbitrarily, eg. – Apple for computer services).
There are ample number of precedents wherein the Courts have time and again reiterated that generic words are accorded as the least distinctive trademarks. However, going against all odds, if one still wishes to register a common/generic term, be rest assured that a risk of confusion would be inevitable. Furthermore, in light of the present judgment, it is highly improbable that generic domain names could be protected by the Courts of Law.