Anatomy of the Case:

Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta And Another (2002)
Core Issues: Can any business register a similar sounding domain name with a minor variation in spelling? Does domain name amounts to Trademark? Plaintiff: Info Edge (India) Pvt. Ltd Info Edge is Indias premier on-line classifieds company in
recruitment, matrimony, real estate and education. The company has a bouquet of websites and associated businesses in each of these segments. Portfolio of Websites products: Naukri.com, shiksha.com, jeevansathi.com, etc.

Defendant: Shailesh Gupta He offered similar services as naukri.com under jobsourceindia.com Subject Matter and Executive Summary: Plaintiff adopted the domain name NAUKRI.COM ON
27 Mar 1997. It was contended that the domain name has assumed distinctiveness as the plaintiff has chosen a Hindi word and used the same in the English script as early as in March 1997 in the Internet world, which is dominated by the English domain names. According to the plaintiff, the word NAUKRI has attained a secondary in connection with its services. The defendant, on the other hand, was offering similar services through jobsourceindia.com. However, it also registered NAUKARI.COM in 1999and used as a hyperlink to jobsourceindia.com. It has decided

to adopt and use the name to attract web-surfers & innocent users for diverting the traffic to the website JOBSOURCEINDIA.COM as any user, who by mistake types NAUKARI.COM instead of NAUKRI.COM, would automatically reach the website JOBSOURCEINDIA.COM
The case was decided in complainants favour.

Arguments of the Complainant and Defendant:

Info Edge (India) Pvt. Ltd
Passing off services as NAUKARI.COM is deceptively similar to NAUKRI.COM There will be grave possibility of nomenclature confusion due to similar businesses Jobsourceindia.com being a competitor is simply capitalizing on the domain name

Shailesh Gupta NAUKRI.COM is generic and, therefore, it could not and is incapable of achieving the trademark significance and hence, not be protected under the Trademark laws A domain name cannot serve a function of a trademark Passing off is not applicable for services

The defendant had registered both the names - jobsourceindia.com and

naukari.com in 1999 itself which was after naukri.com was incorporated in 1997
Domain name has assumed distinctiveness

Adjectives are normally descriptive words and nouns are generic word There are many websites and domain names almost with similar name, and, therefore, there cannot be any monopoly to the plaintiff Consumers are intelligent people and, therefore, they would be in a position to distinguish the various websites

The word naukri is a descriptive (not generic) word and hence describes the business.

Evidence Collection by Info Edge:

Press-Clippings and write-ups to indicate enviable reputation of naukri.com Documents evidencing date of registration

A chart that the other websites with almost similar names are either non-functional or are foreign language websites and they have nothing to do with jobs

Application of Acts
Halsbury's Laws of England : it is possible for a word which is wholly descriptive of the goods or services concerned, to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation Maccarthy has said that the said "part of speech" test does not accurately describes the case law results Paragraph 4(b)(iv) of the Uniform Domain Name Dispute Resolution Policy -"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion Section 28 in The Indian Penal Code, 1860 : A person is said to" counterfeit" who causes one thing to resemble another thing, intending by means of that resemblance to practise deception.

Application of Decided Cases

Yahoo.com v. Akash Arora - Held that, the domain name serves the same function as the trademark. Even if an individual is sophisticated user of the Internet, he may be an unsophisticated consumer of information Marks & Spencer v. One-in-a-million - Held, where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived. The internet domain names to be valuable corporate asset.

Ellora Industries v. Banarsi Dass and Ors. - Tort of passing off (It prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant) is equally applicable for services (Re)Rediff Communication: There is always a possibility of the first user accessing the defendants' website believing it to be the plaintiffs' website.

Decision The case was decided in favour of Info Edge (India) Pvt Ltd and A case of temporary
injunction was made out and the Court restrainedthe defendant from using NAUKARI.COM till the disposal of the suit.

Rationale Based on the evidence at disposal and the decided cases and laws, the trademark/domain
name of the plaintiff has assumed significance and a secondary meaning. User of similar word by a competitor with bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party. No reasonable explanation could be given by the defendant for adopting such a similar domain. A domain name is more than an Internet address and is entitled to the equal protection as that of trade mark.

Recommendations
The Trade and Merchandise Marks Act, 1958 does not contain any clear provision on domain names considered as trademark. A precise amendment should be made in the definition of trademark and domain names should be the part of definition with some exceptions. The Registrar should be more vigilant while allowing similar domain names or trademarks registered.

Conclusion
User of similar word by a competitor coupled with dishonest intention and bad faith is beyond doubt an offence punishable under Law. In fact, even under the Companies Act, a Company can be registered with a particular name clause only after it has complied with the requirements of the trademark laws of India. References 1.Indian Kanoon 2.www. naukri.com 3.www.jobsourceindia.com 4.Extracts of The Companies Act, 1956 5.www.wikipedia.com