Case Summary
| Citation | Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd, AIR 2004 SC 3540 |
| Keywords | trademark, reputation, injunction, domain names, decision, websites, section 2(zm), 2(z) of Trademark Act,1999 |
| Facts | Satyam Infoway registered several domain names pertaining to its business: sifynet.com, sifymall.com, sifyrealestate.com, with the ICANN and WIPO in 1999. The word “sify” derived from Satyam Infoway and that it had further garnered substantial goodwill in the market. Meanwhile, Sifynet Solutions had started using the word “Siffy” as part of the domain names under which it carried on internet marketing (namely siffynet.com and siffynet.net), claiming to have registered them with ICANN in 2001. Satyam Infoway claimed that Sifynet Solutions used their domain names and attempting to pass off its services. And this would cause confusion in the minds of customers with the Sifynet Solution’s services. |
| Issues | Whether domain name carry intellectual property rights? Whether the reputation declines of the Satyam infoways? Whether injunction can be granted? |
| Contentions | Sifynet Solutions claimed that the domain name does not carry intellectual property rights. It averred that a domain name is merely an address on the computer, which allows communications from the consumers to reach the owner of the business, and confers no comparable property rights in the same. |
| Law Points | City Civil Court granted injunction against Sifynet Solutions and stated that Satyam Infoway was the prior user of the word “Sify” and also created immense popularity among customers. High Court ruled in favour of Sifynet solutions by stating that they had already invested in securing customer base for the business and it would cause harm and irreparable injury to them. It will not cause any hardship to Satyam Infoways by denying injunction. Supreme Court set aside the High Court decision and stated that domain names are subject to the regulatory framework that is applied to trade marks. The court stated that though there is no law in India which explicitly governs the regime of domain names, thus, domain names are protected under the law relating to passing off as delineated in the Trade Marks Act. After examining the section 2(zb) & (z) & (m), court said that a domain name has evolved from a mere business address to a business identifier. Therefore, a domain name is not merely a portal for internet navigation, but also an instrument which distinguishes and identifies the goods or services of the business, while simultaneously providing the specific internet location. Satyam Infoway discharged this burden by demonstrating that the name “Sify” had acquired immense repute in the market in association with their services. |
| Judgement | The court also ruled that the right to use similar domain names could not be conferred upon both the parties in equal measure, since upon evidence adduced during the proceedings it was reasonable to conclude that Sifynet Solutions had adopted Satyam Infoway’s mark with a dishonest intention to pass off its services as those of Satyam Infoway’s. |
| Ratio Decidendi & Case Authority |
