Satyam Infoway Ltd Vs Siffynet Solution Pvt Ltd.

In a domain disputes case, the Supreme Court of India has held that trademark laws and legal principles can be applied to disputes involving Domain Names.

The case:

Satyam Infoway Ltd, a leading IT service company, incorporated in 1995 for doing business of software development, software solution and connected activities, registered several domain names like ‘www.sifynet’, ‘www.sifymall.com’, ‘www.sifyrealestate.com’ in June 1999 with ICANN and WIPO by coining the word ‘Sify’ by using elements of its corporate name “Satyam Infoway” and therefore claimed wide reputation and goodwill in the name “SIFY”. Siffynet Solutions Pvt Ltd began doing business of network marketing in 2001 under the domain names, ‘www.siffynet.net’ and ‘www.siffynet.com’, having also registered its domain names with ICANN.

After becoming aware of Siffynet’s use of the name “SIFFY”, Satyam Infoway filed a suit before the City Civil Court Judge and obtained temporary injunction on the ground that it was the original user of the “SIFY” trademark.

However, after hearing the appeal from the district court’s order, the High Court of Karnataka reversed the district court’s order, saying that merely because Satyam Infoway was incorporated first and had earned goodwill in respect of domain name ‘Sify’, no order can be granted in its favour without considering where the balance of convenience lies. The High Court also found that there was no similarity between the two businesses, and hence there was no question of customers getting confused or misled. Satyam Infoway filed an appeal to the Supreme Court.

SC verdict:

The Supreme Court held that while the original role of a domain name was to provide an electronic address for businesses on the Internet, the Internet has developed from a mere means of communication to a mode of carrying on commercial activity, and acts as a business identifier. Thus, a domain name could qualify as services and be entitled to protection under section 2(z) of the Trade Marks Act. Furthermore, on the issue of passing off, the Supreme Court found that use of a similar domain name even for different services could result in confusing the consumers. The user may mistakenly access one domain name instead of another.

The Supreme Court allowed the appeal and confirmed the injunction order earlier granted by the district court.