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TMI Blog2016 (9) TMI 1643X X X X Extracts X X X X X X X X Extracts X X X X ..... e the contesting Defendants' domain name registration. 2. When the suit was first filed, there was a complaint that the contesting Defendants had used articles and material from the Plaintiff's website. This has been resolved since. Both sides accept this. 3. The Plaintiff belongs to the People Group of Companies. It owns several well-known websites, brands and trade marks. Among these are the marks Shaadi.com and Shadi.com. The 1st Defendant is registrant of the domain name www.secondshaadi.com. Defendant Nos. 1, 3 and 4 are Directors of the 2nd Defendant. The website is operated through the 2nd Defendant. 4. In 1996, one Siddharth Mehta, the Plaintiff's predecessor-intitle adopted the mark Shaadi.com in relation to online matrimonial services. The Plaintiff acquired Mehta's rights in the mark and the domain name under an Assignment Deed dated 9th October 2001. From that time, the Plaintiff has used the mark and domain name to provide online matrimonial and matchmaking services. The device and label mark SHAADI.COM, Plaint, Exhibit "E2", p. 91 and the word mark SHADI.COM, Plaint, Exhibit "E4", p. 95 were registered in 2004 in Class 42. The Plaintiff's other word marks SHAADI.CO ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... -142 It was only on 28th September 2013, i.e., a good six years after the 1st Defendant's reply to the Plaintiff's cease-and-desist notice, that the Plaintiff sent it another demand., Plaint, Exhibit "J", pp. 143-145 This is of some consequence since a defence of acquiescence is raised. The 2nd Defendant replied on 15th October 2013, refuting the Plaintiff's claim, and, inter alia, specifically contending that the words 'shaadi' and 'shadi' are generic., Plaint, Exhibit "K", pp. 146-150 The defences in the correspondence are also the defences to the present Motion. 8. Mr. Khandekar for the Plaintiff says that it is now settled law that a domain name has all the characteristics of a trade mark. The Defendants' domain name is deceptively similar to the Plaintiff's registered marks Shaadi.com and Shadi.com. He says the whole of the Plaintiff's mark is subsumed in that of the contesting Defendants. The Plaintiff's mark, he says, has now gained a 'secondary meaning'. 9. In fairness, Mr. Khandekar concedes that the mark Shaadi.com (in any of its various iterations) is not inherently distinctive: 'shaadi' is a transliteration of the Hindi word for marriage. Considered in a vacuum, he sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd must agree with Dr. Tulzapurkar for the Defendants, when he says that the word 'shaadi' is generic and commonly descriptive. That word lends itself to no meaning other than its ordinary lexical one. 'Shaadi' (and synonyms such as 'vivah') mean matrimony or wedding. The word, as Dr. Tulzapurkar says, is generic. He points out that there are any number of entities that use the word to provide similar services: he has a list of 29 websites that all use 'shaadi' in their domain name, and 10 companies that also prefix 'shaadi' to their names. Written Statement, pp. 261-262 Whether or not this list is accurate is largely irrelevant, for 'shaadi.com' is a non-unique combination of words that clearly indicates the function and purpose of the website. 11. There are two issues here: first, the matter of acquisition of a 'secondary meaning'; and, second, whether a domain name always assumes the features of a trade mark. As to the first, in Indchemie - a decision that does not, in my view, support Mr. Khandekar at all - Gupte J referenced Miller Brewing Company v G. Heileman Brewing Company Inc. 561 F.2d 75 and noted the 'spectrum' of degrees of distinctiveness: (1) generic or commonly des ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ow trade mark protection granted to a narrowly defined class to be broadened to goods demonstrably distinct in character, quality and purpose. This rubber-band approach of stretching statutory rights to include, willy-nilly, all circumstances without heed to particularity of registration is without basis in trade mark jurisprudence. 14. In my view, in Indchemie Gupte J did not advocate an overly rigid demarcation between these four classes. The law in the US might be different from the English common law and from our own adoption (and adaptation of it), and from our statutory provisions as well. In an outlying case, it may yet be possible for a mark to move from a lower class to a higher class of distinctiveness. The four-fold classification is a broad one; it is by no means the intellectual property or trade mark equivalent of an ancient, immutable and highly stratified caste system of any kind, where a mark is doomed to remain forever in the category in which it, on adoption, falls. 15. That takes us directly to the question of 'secondary meaning' or 'secondary significance'. When does an expression acquire a 'secondary meaning' and how does it acquire it? Again, this is a phra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n as part of their trade name would have to differentiate it. Simons J held 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. 17. As to this question of risk of similar use by others, the material on record is, in my view, against the Plaintiff. Annexed to the Affidavit in Reply is a very long list of rival or competing marks, at various stages. All use the word shaadi in some form or the other. Many are opposed by the Plaintiff. Several use the name of a community before the word shaadi (agarwalshaadi, konkanishaadi, patelshaadi and so on). Notice of Motion paper book, Exhibit "D-6", pp. 372-404 I do not think Mr. Khandekar's response is of much use; he says that the Plaintiff has obtained domain name registrations for a very large number of variants. This is hardly evidence of exclusivity. In fact, it points to the contrary, viz., that others have, and continue to, use the word shaadi almost at will. The Affidavit in Rejoinde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... proof. That proof must be directed to establishing that the 'merely descriptive' expression in question is now firmly established in the public imagination with the claimant and its goods and services. High sales and expenses will not do; the claimant must show from carefully neutralized market surveys, etc., that this is indeed how the public perceives the mark - not as a mere description, but a pointed reference to the origin, viz., the claimant. Use itself does not establish distinctiveness. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one are conclusions to be drawn from evidence. Kerly on Trade Marks, 14th Ed., Sweet & Maxwell, 2005-2007 That evidence, showing the displacement of the primary meaning by the secondary meaning, must be of the members of the public as well, not merely those specially placed to attest to its uniqueness. Narayanan on Trade Marks, 6th Ed., pp. 272-275, 10.21-10.24 19. I will pause here for a moment to consider what it is precisely over which this claim of exclusivity is made. Is it 'shaadi' or is it 'shaadi.com' (as in, shaadi dot com)? If it is the first, the claim fails entirely on th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... taken as a whole. Undoubtedly this is registered. Let us, however, consider what it is the Plaintiff does when it applies for and secures such a registration? It takes a commonly descriptive or generic word and tacks on a technically necessary suffix to it: .com. Every domain name needs some Top Level Domain ("TLD") suffix such as .com, .net, .org, .in, .gov and so on. Without one of these, the website and its related services do not function. These are, therefore, also entirely generic. They have no distinctiveness at all. No one can claim exclusivity in any TLD or any domain suffix of any level (such as .gov.in or .net.in), nor does the Plaintiff claim it. The result, possibly, is that if we follow Mr. Khandekar and Mr. Dhond down this path of deconstruction, then we are left with nothing that is on its own registrable and it then might well be perfectly legitimate to contend that neither shaadi nor dot-com are ever registrable. Therefore, what remains is the combination taken as a whole, and it is over this that the Plaintiff claims dominion: shaadi.com. But this surely begs the question; if both constituent integers are entirely commonplace, and one must look only to the mark o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ary.com' and 'investment.com'. This is inconceivable, and it is not the law. Where a person uses a suitably distinctive trade mark, and has protection of it, his use of a domain name that has the same trade mark carries with it the same degree of protection. The fundamental requirement of distinctiveness remains true for both. An example, as an illustration, might suffice: using wildebeest.com for job hunting, for instance; there, the use of the expression is sufficiently distinctive. 23. In Info Edge (India) Pvt. Ltd. & Anr. v Shailesh Gupta & Anr., 98 (2002) DLT 499 : (2002) ILR 1 Delhi 220 a learned single Judge of the Delhi High Court had before him a case where the plaintiff had the mark and domain name naukri.com in relation to employment placements and job hunting. The defendant seems to have used a domain name naukari.com and diverted traffic to his website jobsourceindia.com. There seems to be some confusion in the Manupatra report on the precise domain name that the defendant used. There again, the argument of 'secondary significance' was made and, on the material before the Court, seems to have been accepted. That, however, was a clear-cut case of an attempted hijacking ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ain names are not permanent. Trademarks registration can also be cancelled if improperly obtained or the failure to use a trade-mark may also result in its cancellation. However, failure to use a domain name will not necessarily result in its cancellation. The failure to renew the registration of a domain name will result in loss of the domain name. (Emphasis added) This actually presents a conundrum for the Plaintiff before me; for, should that domain registration lapse or be cancelled for any reason, nothing at all will remain of the trade mark itself, since the mark is nothing but the domain name. 25. In paragraphs 76 and 77 of Raymond Ltd, Paragraph numbers are from the Manupatra report. Menon J said: 76. In India in absence of legislation expressly dealing with dispute relating to domain name leads such disputes to be taken up for adjudication in the Court including by way of action of passing off. The Statement of Objects and reasons of the Trade Mark Act, 1999 does not reveal any intention to widen the scope of amended Act so as to specifically cover the protection of trade-marks in domain names. The aforesaid mentioned standards of the UDRP will be useful as a guide fo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... my website'. They may, and many possibly do. I just do not know if that is because shaadi.com is the Plaintiff's website address, or because they link 'marriage' or shaadi exclusively with the Plaintiff or its services. That argument is also a mite self-defeating. If shaadi-dot-com is a destination for Indians seeking matrimony, then, by the same token, secondshaadi-dotcom must be the destination for those seeking to repeat the experience. 27. Mr. Kamath carries this further. If this be so, he says, then shaadi.com as a word or an expression is incapable of registration. Its constituent integers are both entirely generic. Their combination is a mere address. None may pillage or use that address, but that is because the domain name is registered to the Plaintiff, not because it is a trade mark. That registration is, he submits, vulnerable. He invites a finding to this effect. I notice that the certificate notes that a rectification application has been filed. Plaint, Exhibit "E1", p. 90 I am not required to consider whether this registration as a word mark is liable to cancellation within the narrow exceptions in paragraph 59 of the Full Bench decision in Lupin Ltd v Johnson & Joh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ply. Further, if these expressions commonly describe the nature of the services, then this use is also protected by Section 35. 31. In Notice of Motion (L) No. 2312 of 2014, I granted the Plaintiff an injunction against the proprietors of www.getshaadi.com. Plaint, Exhibit "F1", p. 107-120 That relief, however, was in passing off. On those defendants' website, the emphasis was on the words 'shaadi.com', and the word 'get' was set off above the word 'shaadi'. The attempt was ex facie deceitful: those defendants attempted to divert traffic from the Plaintiff's site to theirs. This is certainly not so in the present case. The contesting Defendants place the word 'second' prominently above 'shaadi.com'. The domain name is secondshaadi.com, a sufficient variation. There is also a device of what is presumably a leaf placed by the word 'second'. Below the expression 'shaadi.com' is the tagline "Start a New Life", which is in no manner similar to the Plaintiff's tagline "The World's No.1 Matchmaking Service". The font and stylization of the contesting Defendants' mark is completely different from that of the Plaintiff. So, too, is the get up and look-and-feel of the two websites. 32. In ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are of the contesting Defendants' website since 2007. It sent the contesting Defendants a cease-and-desist notice on 27th July 2007. The contesting Defendants responded on 13th August 2007, refusing to cease-and-desist. The Plaintiff did not reply. It was only on 28th September 2013, i.e., a full six years after the initial correspondence, that the Plaintiff sent the contesting Defendants another notice. That, too, met a denial. For those intervening years, the Plaintiff sat by idly and allowed the contesting Defendants to build their trade until it felt threatened. Indeed, Mr. Khandekar says precisely this, when he argues that in 2007, the contesting Defendants were too insignificant to merit legal attention or action; and that it is only now, when the contesting Defendants' operations have attained a certain critical mass, that the Plaintiff feels the threat. The contesting Defendants invested substantial sums of money to popularize and market their website. They amassed a significant client-base. The Plaintiff stood by with full knowledge of its rights and did nothing. This is not a case of a mere delay. Midas Hygiene Industries Pvt Ltd v Sudhir Bhatia, (2004) 3 SCC 90 36. Acqu ..... X X X X Extracts X X X X X X X X Extracts X X X X
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