Trademarks and Meta-Tags – The match made in Court
Petitioner: People Interactive (I) Pvt. Ltd.
Respondent: Gaurav Jerry & ors.
Decision making Authority: Bombay High Court
In 1996, Siddharth Mehta launched an online matchmaking, matrimonial and wedding services portal under the name and mark Shaadi.com. Four years later in February 2000, the Plaintiff was incorporated. The Plaintiff belongs to the People Group of Companies. They own several well-known domain names, websites, brands and trademarks. One of these is Shaadi.com.
In October 2013, the Plaintiffs found that a domain www.ShaadiHiShaadi.com had been registered and was used in respect of identical services: online matchmaking / matrimonial services, wedding planning, dating services etc. The Plaintiffs’ conducted a search and found that the domain name was registered by the 1st Defendant through the domain name registration services offered by the 2nd Defendant and that the site was hosted by the 3rd Defendant.
The Plaintiffs sought an injunction against the 1st Defendant from using the domain name ShaadiHiShaadi.com or any other word or expression identical or confusingly similar to the Plaintiffs’ registered trademark Shaadi.com and Shadi.com in any manner, including as part of domain name for an Internet or web-based service.
Another injunction was also sought to restrain 1st Defendant from passing off his website ShaadiHiShaadi.com as that of the Plaintiffs. The third relief sought was to restrain the 2nd and 3rd Defendants from hosing the 1st Defendant’s website ShaadiHiShaadi.com and directing them to de-register or terminate the registration of the domain name ShaadiHiShaadi.com.
Defendant No. 1 started providing a similar service under the domain name ShaadiHiShaadi.com. Defendants No. 2 and 3 provided domain name registration and web hosting services in the United States and India respectively. The 3rd Defendant is the Indian arm of the 2nd Defendant.
Whether Shaadihishaadi.com was cashing in on the reputation of Shaadi.com.
Whether there was passing off, confusion, and deception.
The counsel on behalf of the plaintiff stated that services offered were identical. The spelling of the word shaadi was identical to that of the plaintiff’s. Although the web page, banner, lay out and look-and-feel may not be exact, it makes very little difference. The 1st Defendant’s in his website, had used the tagline “World’s Biggest Matrimonial Service” written underneath the domain name ShaadiHiShaadi.com. Similarly the Plaintiff had also used the tagline “The World’s Largest Matrimonial Service”, written underneath the domain name Shaadi.com. It could therefore be observed that the 1st Defendant was using the same idea, wordings and style as that of the plaintiff. The defendant’s website had not enjoyed reputation, longevity, goodwill or publicity that the Plaintiffs had. Therefore any person who was visiting the 1st Defendant’s website was bound to mistake it for a branch, division or variation of the Plaintiffs’ website. Thus proving beyond doubt that the website was similar to shaadi.com and was also deceptive as well as confusing.
The Plaintiffs had conducted a web analysis of the 1st Defendant’s infringing domain ShaadiHiShaadi.com. They found that the 1st Defendant has used the Plaintiffs’ proprietary mark shaadi.com and its domain name www.shaadi.com as part of the “meta-tags” in the 1st Defendant’s domain name. Meta tags are special lines of code embedded in web pages. All HTML (hypertext mark-up language), used in coding web pages, uses tags. Meta tags are a special type of tag. They do not affect page display. Instead, they provide additional information: the author of the web page, the frequency of updation, a general description of the contents, keywords, copyright notices and so on. They provide structured data (actually, meta-data) about the web page in question. Meta tags are always used in a web-pages ‘<head>…</head>’ section, before the display section that begins with the tag ‘<body>… … </body>’
In the judgment, it was stated that Meta-tags had routinely been in use by the search engines and search engine robots had been using Meta-tags on a regular basis to assess webpage contents and other relevant material relating to a webpage in the building of search engine indices.
It was further stated that when a meta-tag uses the domain name, trademarks, or any other mark that defines the domain, at such a juncture, a search engine would be bound to report that a particular domain in question is same as that of the other. That is the search for a particular website would lead to the display of another website which may or may not offer the same services as the original website. Therefore if a person were to search for a particular website using a particular keyword, description, or Meta tag, he or she would land up at the unlawful website.
The judgment further stated that the plaintiff had managed to acquire adequate proof stating that by unlawfully connecting the plaintiff’s mark and domain name into the defendant’s webpage’s Meta tags, the first defendant had succeeded in diverting a lot of people towards his website than allowing them to utilize the services of the plaintiff’s website. Hence through this act, the defendant had unlawfully used the goodwill, and reputation of the plaintiff by unlawfully replicating the plaintiff’s intellectual property.
Therefore the court stated that the Plaintiff had made out a strong, and an overwhelming prima facie case. The 1st Defendant had taken advantage of the Plaintiffs’ mark shaadi.com and created Shaadihishaadi.com. The first defendant had unlawfully used the plaintiff’s mark and had compromised on the distinctive character of the plaintiff’s mark. Therefore the court held that the defendant should not continue to use ShaadihiShaadi.com.
In case of Defendants No. 2 and 3, it was stated that they were innocent on this matter. But on the contrary they had also played a role in getting the mark of the first defendant registered and therefore the 2nd and the 3rd defendant were asked to take immediate steps to cancel the registration of the first defendant’s domain as well as suspend the web hosting services that they had offered to the first defendant.
It’s great to see that the Court recognized and analysed the use of meta-tags and its role in passing off. As technology keeps changing and the means of circumventing the law with it, it is good to see the Court’s keep up with the times!