Post on 10-May-2015
description
A case study in domain name disputeBy – onkar singh
28 oct ,2009
Onkarsigh.naarm@gmail.com
Introduction
What is domain name -is an identification label that defines a realm of administrative autonomy, authority, or control in the Internet, based on the Domain Name System (DNS)
Whenever human beings use a word to identify a business trademark law comes into play
Unique URL addresses Internet protocol started as a series of numbers that
were difficult to remember Domain names started being used Useful mnemonic means of locating specific computers
on the Internet
Detail of case
Background
When /why issue arise
What are the effect
Decision
Effect of decision
BACK GROUND
Tata Sons Limited under the Indian Companies Act, 1913 having its registered office at Bombay House, 24, Homi Mody Street, Mumbai – 400 001, India.
TATA Group of companies-India’s oldest, largest and best-known conglomerate, with a turnover that is over USD 62 Billion. Total turnover for 2007-08 is stated to be Rs.251,543 crores (USD 62.5 billion).
Makemytrip.com
MakeMyTrip.com - Gurgoan based travel company that in a span of 8 years has garnered a wealth of experience and respect in the travel industry.
The pioneers of online travel services in India; leading travel website in the country, with over 2 million unique
visitors each month choosing to use our travel services.
MAKE MY TRIP .COM TO OK TATA BYE BYE .COM
three years after MakeMyTrip.com launched an online travel community and called it OkTataByeBye.com
See the sites
www.tataindicom.com www.tatamotors.com www.tcs.com www.tatasteel.co.in www.tatacommunications.com www.tata.in www.makemytrip.com www.oktatabyebye.com
Issue arise ‘TATA’ is a well-known and registered trademark and service mark
over which Tata, being the registered proprietor had statutory rights as well as common law rights by virtue of a long and continuous use.
scope for confusion in the minds of relevant group of consumers . The use of the word ‘tata’ in the first part of the domain name could lead to consumers assuming it to be a site maintained by Tata
MakyMyTrip did not establish “any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services” when it already had a site makemytrip.com in connection with its business.
Claimant says …
The MakeMyTrip had “ill intention” behind creation ofoktatabyebye.com in order to infringe the intellectual property rights of its registered trademark/service mark ‘Tata’.
confusingly similar to its ‘Tata’ brand and the travel portal runner has no rights or legitimate interests to use it.
Respondent points..
Make my trip was an online travel portal rendering travel consultancy services, while oktatabyrbye.com community portal for travelers to share their experiences and give first-hand travel advice to other wanderlusts.
the word ‘tata’ had been used in a colloquial sense which is to bid adieu and this was clear from the way it had been placed between the words ‘ok’ and ‘bye bye’.
the word ‘tata’ could be found on practically every truck on an Indian highway and this was used in a generic sense.
ICANN
Internet Corporation for Assigned Names and Numbers (ICANN) a non profit corporation is now responsible for co-ordinating the assignment of protocol, and management of the Domain Name system
Located - California, non-profit corporation that consists largely of Internet society members. created on September 18, 1998 in order to take over a number of Internet-related tasks previously performed on behalf of the US Government.
First come-first served policy and put on hold if complaint made
URDP Uniform Domain Name Dispute Resolution Policy is a
policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from cyber squatters.
All domain name registrars have the power to grant “.com”, “.net”, and “.org” generic top-level domains must follow the UDRP.
Domain name registrar will cancel, suspend, or transfer a domain name that is the subject of a trademark-based dispute, it must have an agreement signed by the parties, a court order.
UDRP ….
The UDRP created a streamlined "cyber arbitration" procedure to quickly resolve domain name ownership disputes that involve trademarks.
All owners/registrants of “.com”, “.net”, and “.org” domain names are subject to the UDRP by virtue of the registration agreements agreed to with their registrars at the time of acquiring their domain names
DECISION
(i) Discontinue use of domain name of oktatabyebye.com
(ii) Transfer the aforesaid domain name to the Complainant in accordance with the applicable procedure
(iii) Refrain from all manner of use of the aforesaid domain name or any other mark, name, domain name, etc that is confusingly similar to the trademark of the Complainant.
WIPO direction
•As per directions issued by WIPO on August 24, 2009 the transfer of the domain name okaytatabyebye.com would not take place if MakeMyTrip went in for legal proceedings against Tata Sons in the matter within a period of 10 days.
Methodology
search – Blog ,journal ,act , web search Opinion on case study Interpretation Conclusion
Opinion ….
Oktatabyebye in no way concerns tata as Ta Ta is the word used by everybody when they go out. Its not a name that they have used in their domain, they have used a verb (Tata denotes an action, the hand wave). The WIPO judgment is wrong.
"The business of oktatabyebye does not in any way compete with any known Tata Group business. The phrase Ok-Tata-Bye-Bye is a form of greeting and hence connects instinctively to travel. MakeMyTrip has never attempted to confuse their customers or travellers by soliciting them using any Tata product as the peg.“ deep
Opinion ……
This domain has to be transferred to tatas asap... Kumar lawyer
The name tata itself is not the sole property of tata sons. There are sites like http://tatacubancafe.com/page/1hdnf/Home.html which is for a cafe which has been running from years ago.-pavan sastry
will tata sue every lorry owner in the country?
Conclusion
good bye Tata company name
No commercial use commercial use
no violation violation
Conclusion Tata will not sue all the lorry holder Violation of right happened Before the sue anybody can use but after the sue owner
will use as http://tatacubancafe.com/page/1hdnf/Home.html they are using
Ignorance is no bliss
Valuable opinion ….
Shri Pavan Duggal, Cyberlaw Consultant,President, Cyberlaws. ,member ICANN
Prof. Vivekanannd, Rajiv Gandhi School of Intellectual Property Law-IITK Kharagpur
Dr D.Rama Rao HeadInformation and Communication Management Division, NAARM
Dr.R.Kalpana Sastry Principal ScientistAgricultural Research Systems Management and Policies Division, NAARM
Prof . Nawaz – asian school of cyber law
Reference
http://us.makemytrip.com/various/Online-Travel-Company-India.htm case detail by wipo www.wipo.int/amc/en/domain
s/decisions/.../d2009-0646.html http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-064
6.html
www.watblog.com/.../oktatabyebye-name-confusing-makemytrip-loses-case-against-tata
http://spicyipindia.blogspot.com/2009/09/wipo-rules-in-tatas-favour-on-cyber.html
Rediff business - http://business.rediff.com/slide-show/2009/sep/14/slide-show-1-the-ok-tata-bye-bye-controversy.htm
Reference..
ta ta word meaning http://dictionary.reference.com/browse/tata?
qsrc=2446%20- The hindu busnessline -
http://www.thehindubusinessline.com/2009/08/31/stories/2009083151390200.htm
Disclaimer ..
I declare that . The content which I have used in my presentation for study purpose only no any purpose . The opinion which are present in this presentation it is not any legal opinion.
for further detail you can content .. Onkar singh on Onkarsingh.naarm@gmail.com
( post graduate student of intellectual property and technology management at national academy of agricultural research management . Hyderabad )