Facts

• In 1995, the appellant registered various domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com in June 1999 through recognized Registrars, including the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO).
• The term 'Sify' was a coined word blending elements of its corporate name, Satyam Infoway.
• Claiming a wide reputation and goodwill in 'Sify', the appellant alleged infringement when the respondent began internet marketing under domain names www.siffynet.net and www.sijfynet.com from 5^th June 2001.
• The respondent asserts registration of these names with ICANN on 5th June 2001, and 16th March 2002, respectively.
• Upon learning of the respondent's use of 'Siffy', the appellant demanded cessation and domain name transfer, to which the respondent objected.
• Consequently, the appellant initiated legal action alleging passing off its business and services.
• The City Civil Court granted a temporary injunction, citing the appellant's prior usage of 'Sify', its established reputation, the similarity of domain names, and the potential for confusion among the public.
• The High Court granted an interim stay on the City Civil Judge's judgment in response to the respondent's appeal.
  • The HC later allowed the appeal, challenging the injunction favoring the appellant.
• It reasoned that the appellant's precedence in business alone did not warrant the injunction.
• The respondent had distinct business operations, investing significantly and accruing a substantial customer base of 50,000 members.
  • HC said that denying the injunction would cause irreparable harm to the respondent, which had established its own brand, unlike the appellant, who operated under a separate trade name, Satyam Infoways.

Issue Involved

• Whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trademarks?

Observation

• SC said that the HC had found that no prejudice would be caused to the appellant because it had another domain name, which was a consideration that might have been relevant if there had been a case of bonafide concurrent use and where the right to use was co-equal.
• The doubtful explanation given by the respondent for the choice of the word "Sify," coupled with the reputation of the appellant, could rationally have led to the conclusion that the respondent was seeking to cash in on the appellant's reputation as a provider of service on the internet.
• In view of the findings, albeit prima facie, on the dishonest adoption of the appellant's tradename by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the tradename Sify with the appellant, the appellant was entitled to the relief it claimed.
• A different conclusion might have arrived if evidence to the contrary had been adduced at the trial.
• However, at that stage and based on the material before the Court, it was the view of the SC that the conclusion of the HC to the contrary was unwarranted.
• Conclusion
• The decision of the HC was set aside by SC, and it was held that the decision of the City Civil Court was correct. There was no order as to costs.