No relief when you imitate established trademarks

January 12, 2021by admin0

Google Inc. USA (Google) gets a fair order in its favour whereby the use of a deceptively similar domain name has been rightly held as infringement of domain name.

The matter flows as below:

In 2007, the alleged infringer had applied for the domain name of “googlee.in” with .IN Registry which was granted to him and renewed for 4 years in 2008. It was further renewed for 8 years to be available till 2020. The domain name, as is suggestive is confusingly similar to “google.in”. Not only is the domain name similar, but the website is almost identical to Google in terms of font, style, layout, etc. In order to claim its right, Google issued a ‘cease and desist’ notice to the applicant in 2010.

The applicant paid no heed to the Notice after which Google filed a complaint against him under the .IN Domain Name Dispute Resolution Policy (INDRP) asking for the domain name ‘googlee.in’ to be transferred to it and the costs be awarded. Thereafter, an Arbitrator was appointed by the National Internet Exchange of India (NIXI) to look into the complaint and address the issue at hand. A notice was issued by the Arbitrator to the alleged infringer. The Arbitrator held in favour of Google directing that the alleged infringer has not offered any explanation for using a confusingly identical domain name, nor has he denied the knowledge and use of trademark ‘google’. Therefore, the Arbitrator directed the cancellation and transfer of the infringed trademark, “googlee.in” to Google.

The alleged infringer challenged the Arbitrator’s decision in the High Court of Delhi. The High Court of Delhi on 20th March 2017 rightly upheld the decision of the arbitrator thereby stopping the petitioner from using a domain name which is deceptively so identical to Google that it is bound to lead the infringer to wrongly exploit Google’s brand name and goodwill.

The decision of the High Court makes it clear that nobody can ride on the popularity and brand name that has been established over a period of time as a result of consistent efforts. While filing for a trademark it is advised that due care is exercised to ensure the mark being proposed is unique and distinguishable.

Arashveer Brar

Partner

Maheshwari & Co.

arash@maheshwariandco.com

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