In today’s digital day and age celebrities and famous entities are brands themselves. There exists a long-standing debate with respect to the protection accorded to names of such well-known personalities. The Indian courts have adopted a ‘rights-based inclusive model’ in order to address the aforementioned issue. This paper aims to provide an in-depth analysis of the principles of trademark law as relevant to domain names by critically assessing a series of judicial decisions.
The statutory provisions which govern the registration of trademarks form part of, the Trademarks Act, 1999 (“the Act”). As per the Act a mark includes a device brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof . A distinguishable mark in respect of goods and services is a trademark. There are two classes of requirements for the registration of a trademark under the Act –
- The absolute grounds for refusal , as mandated under Section 9 of the Act
- The relative grounds for refusal, as mandated under Section 11 of the Act
After registration of a trademark, the exclusive rights to utilize it are vested in the individual or entity making such a registration. The Indian courts have recognized the importance of exclusivity of use of personal names if they are evocative of only those well-known people, to whom they belong. With the emergence of the internet as a mechanism for building brand identities and carrying out commercial activities[i], it has become essential for public figures to maintain a continuing presence on social media websites.
The Satyam Case
The aforementioned understanding as propounded by the Apex Court, laid the foundation for its verdict in the case of Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd. (“Satyam Case”). The main contention in the Satyam case, was with reference to the legal protection available to domain names as subjects of intellectual property. Justice Ruma Pal eloquently wrote in this matter in relation to the several facets of passing-off and opined that domain names are business identifiers; therefore, they are bound to be treated as trademarks. The Supreme Court read beyond the letter of the law and widened the scope of the definition of “Services” as provided by Section 2(1)(z) of the Act. Thereby, conferring a liberal interpretation to the issue surrounding the applicability of trademark jurisprudence to domain names. The division bench’s decision in the Satyam Case is celebrated by proponents of the right of publicity. It has also manifested further in pronouncements delivered by the Delhi High Court and other adjudicatory bodies.
The Arun Jaitley Case
The Judgement of the Delhi High Court in the case of Mr. Arun Jaitley vs. Network Solutions Private Limited & Ors.  (“Arun Jaitley Case”) encapsulated within its ambit, the essence of the holding in the Satyam case. In the Arun Jaitley Case, the complainant being a renowned politician and advocate wished to register the domain name <www.arunjaitley.com>. Upon thorough research, it was found that the domain name in question, had already been registered by Network Solutions Private Limited. Mr Jaitley addressed a letter to the respondents, citing that he was the real owner of the domain name, therefore, they must withdraw their registration at the earliest. The respondents refused to pursue this course of action, instead, they offered a price to the complainant at which he could buy the domain name from them. They also claimed that the domain name was pending registration, thus, if Mr. Jaitley was not willing to purchase it, he could wait till the registration automatically expires. In furtherance of receiving this response, the complainant filed a case before the Delhi High Court, alleging trademark infringement and cybersquatting.
The Delhi High Court took cognizance of the complainant’s argument that Arun and Jaitley, singularly would qualify as generic names. However, cumulatively as a name, it is attributable to a very famous person – whose achievements are globally known. It was held, that the name “Arun Jaitley” was inherently distinctive, as owing to his reputation, it denotes only Mr. Arun Jaitley. Under the trademarks regime, personal names are not safeguarded as they do not possess a distinct character. Cybersquatting is the practice of registration of names of famous individuals or entities by other persons as internet addresses, the cybersquatter aims to capitalize by making use of such titles as domain names. The likelihood of allowance for registration of a domain name increases if it is premised in a claim of cybersquatting, and such an allegation is put forward by a famous person as their name has goodwill attached to it. The Delhi High Court acted on the above-mentioned exception, as set forth by the mandate of the judicial interpretation. The name of the claimant was granted protection under trademark law, additionally, damages were also awarded.
National Internet Exchange of India
Arbitral tribunals constituted by the National Internet Exchange of India (“Nixi”) have also decided on a catena of domain name disputes. The Judgements of the Nixi Tribunals prima facie recognize the importance of affording legal protection to domain names, thereby, reiterating the precedent set by the Supreme Court in the Satyam Case. The two noteworthy decisions of the Nixi Tribunals in this regard, are its Judgements in the cases of Kenneth Cole Productions Inc. vs Viswas Infomedia (“KC Case”) and G.A Modefine S.A vs Naveen Tiwari (“Armani Case”),
- In the KC Case, the Claimant, is Kenneth Coleman, a famous fashion designer. The Respondent had registered the disputed domain name in 2007 without obtaining any authorization. The domain name as registered by the Respondent resembled the domain name of Kenneth Coleman’s fashion house. In this regard, a legal notice was filed by Kenneth Coleman. After receiving such notice, the Respondent offered to sell the domain name back to the Claimant for monetary benefit. The Nixi tribunal held that it was not essential for the Claimant to have a registered trademark in his personal name. The actions of the Respondent would constitute infringement, as they were carried out in bad faith and there was no legitimate interest in the usage of the terms Kenneth Coleman.
- In the Armani Case, the Nixi tribunal held that – the original owner, to whose name goodwill and reputation is attached does not necessarily require vesting of prior rights. It was concluded that failure to renew the registration of a pre-existing domain name, would not entitle another entity to act in an opportunistic manner and register a similar name.
Upon assessing the facts of the cases as mentioned above, a recurring pattern emerges. Cyber squatters in India operate within a pre-existing matrix, wherein in most cases, the main objective of registration is to eventually sell the domain name to the original owner at a high price or to utilize it for personal gains. A direct consequence of this practice is that the cyber- squatter gets to cash in on the profits from the usage or sale of the registered domain name. Thus, the legal disputes surrounding the registration of domain names for internet protocol addresses across India are premised on the principle of enhancing economic efficiency.[ii]
It is clear from the aforementioned cases that courts probe three main criteria in the process of deciding on issues of domain names –
- distinct character and the likelihood of confusion,
- the interest of the respondent vis-à-vis the usage of the domain name and
- intention for registration.
Celebrities seek to protect the economic associative value of their persona.[iii] This includes their image, likeness, voice, and several other attributes. While the trademark’s discourse may not be sufficient to secure all the traits – names have been recognized as commercially viable instruments. Thus, they can be shielded as trademarks.
While the Supreme Court and different High Courts acknowledge that it is imperative to permit trademark registration of domain names, celebrities or other famous personnel have not been granted a monopoly to make such registrations. Honest persons making use of their own names during the course of trade are permitted to do so in good faith, even if their names resemble those of a well-known individual or entity. The decisions as espoused in the Satyam Case, Arun Jaitley Case, KC Case and Armani Case followed a rights-based approach in order to reach a consensus. In my opinion, all the adjudicatory bodies acted upon the understanding that execution of a uniform rule of law favouring popular persons who form only a specific section of the populace would have adverse ramifications. It would take away the agency of other non-famous individuals to access their intellectual property rights, and in furtherance of the same lead to infringement. Therefore, in order to accommodate varying and diverse interests that may exist in a society, it is crucial for statutes to be written and implemented in a nuanced fashion.
 Section 2(1)(m), The Trademarks Act ,1999
 Section 9, The Trademarks Act ,1999
 Section 11, The Trademarks Act, 1999
 (2004) 6 SCC 145
 (2011) 181 DLT 716
[i] (2004) 6 SCC 145
[ii] GHOSH, PAPIYA. “Domain Name Disputes: An Economic Analysis of Some Court Cases in India.” Economic and Political Weekly, vol. 47, no. 51, 2012, pp. 52–58. JSTOR, www.jstor.org/stable/23391159. Accessed 8 Apr. 2021.
[iii] Kumar , Aakanksha. “Celebrity Domain Name Arbitration: Enforcing the Right of Publicity Through Private Dispute Resolution in India .” Alternative Dispute Resolution Prospects and Challenges , Bharti Publications , Darya Ganj , New Delhi , 2020.