FACTS
The Plaintiff, Arun Jaitley, wanted to book the domain name “www.arunjaitley.com”. However, after the expiration of the domain name, the Defendants, alleged to have mala fide intentions, did not deleted the said domain but transferred it to Defendant No. 3, Portfolio Brains LLC, which was an auction site for domain names. However, an interim order was passed on 15.09.2009 by the court restraining Defendant No. 3 from transferring, alienating or offering for sale the said domain name www.arunjaitley.com to any third party and from creating any third party interest in the said domain name www.arunjaitley.com . The Defendant No. 3 was also directed to maintain status quo in relation to the domain name. However, despite an order of injunction as on date by the Hon’ble Court, repeated transfers continued to take place.
ISSUE RAISED
Whether permanent injunction restraining the Defendants, Network Solutions Pvt. Ltd. and Ors., from the use and immediate transfer of domain name “www.arunjaitley.com” can be awarded?
ARGUMENTS PUT FORTH BY THE PLAINTIFF
The Plaintiff contented that the Defendants neither deleted the said domain nor transferred the same to the Plaintiff due to mala fide intentions. The Defendants, on the other hand, had asked the Plaintiff to purchase the domain through their Certified Offer Service, wherein there is no guarantee that the domain name would be transferred to the bidder. Further, it is evident from the price assessment to procure the domain that the intention of the Defendants was to have a monetary gain by collecting sums of money for the domain name.
Moreover, the transfer was done without the notice or knowledge of the Plaintiff who was expecting a positive reply in view of the letter and thus the transfer made to Portfolio Brains LLC is contrary to their own rules. All theĀ Registrars of the domain names including Network Solutions, VeriSign, Portfolia Brains LLC, etc., however, are bound under the UDRP Policy, whose violation is to be construed very strictly by the ICANN. It was also submitted that the domain name protection is amply given by the courts as that of the trade mark. Even if the word domain name is not mentioned in the definition of the mark under the trade marks, the judicial opinion is well settled that the domain names are to be given the protection under the law of passing off under the common law remedy (relying upon the dicta of Satyam Info way Ltd. v. Sifynet Solutions Pvt. Ltd).
ARGUMENTS PUT FORTH BY THE DEFENDANT
The Defendant No. 1 and 2 argued that they are not the Registrar of the domain name in question. It was further added that no malafides which can be attributed to the Defendant No. 1 and 2 as the when the said Defendants were informed about the Plaintiff’s rights wrote to him that they will cooperate with him. Respondent No. 3, however, did not file the written statement.
HELD
Justice Manmohan Singh of the Delhi High Court gave the concerned judgment, wherein the right to use a personal name was considered superior to that of the commercial right of using the trade mark and thus the entitlement to use it as a trade mark or domain name was vested with the person having its personal name. Further, domain names are protected under the law of passing off with a personal name being no exception.
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