THE CURIOUS SAGA OF WWW.GOOGLEE.IN
By Kshitij Malhotra, Partner and Moumita Roy, Associate
“You no longer search for something. You Google it.”
Google, the internet search portal, is a big name throughout the world. Infringement of the brand value of Google, not only is threatening but also critical in the internet space. Therefore, the recent Delhi High Court Decision relating to registration of conflicting .in registry of search portal googlee.in is such an interesting topic of discussion.
Back ground of the dispute:
In this interesting case, way back in 2007, an ingenious defendant had managed to secure registration of a domain named www.googlee.in and incredibly operated the website for almost 4 years. After use of the website came into notice of the world famous brand Google, and they immediately launched a complained at the National Internet Exchange of India, the watchdog of internet space in India. As per the available IN Registry dispute resolution mechanism, any complaint has to be referred to the arbitrator, and accordingly an arbitrator was appointed to look into this case.
Figure 1, Figure 2 are the comparative screen shorts of the web pages of Googlee (on left) and Google (on right).
In complaint to the IN registry, Google contended that they are a well-established brand worldwide since 1997. They added the following contentions:
- That the disputed domain name is visually conceptually and substantially identical to their domain, and
- The use of both the domains is as search engine.
The arbitrator awarded in favour of the Google and found a proprietary right of the complainant over the domain name googlee.in. The arbitrator ordered cancellation of the disputed domain with such direction to the registry. The infringer appealed.
The Proceedings at Delhi High Court:
In the appeal filed before Delhi High Court, the appellant, without having many choices to defend, tried to challenge the arbitrator award on technical grounds on which the arbitrator reward was granted rather than denying infringement of domain name. The court rejected the grounds taken by the appellant.
Interestingly, the court pointed out that the appellant/ petitioner had failed to defend why have he selected a domain name similar to world’s most popular search engine. Further, the court pointed out the intentional adoption of similar domain names. The court said that:
“It was clear that the adoption of such a name is not a co incidents but intentional.”
The court pursued the decision of the arbitrator and rejected the defence of the petitioner mentioning the conflicting search portal as a slavish imitation.
Conclusion: The advocate representing the brand Google has rightly gauged the well-known ness of the Google in terms of a search engine. He said “You no longer search for something. You Google it”. The search verb has metamorphosed in web English into Google. Moreover, Google is a recognised well known mark in India since 2011.
It is interesting to know that in India, domain names are recognized as trademarks. In a similar case, Rediff Communication Limited vs. Cyberbooth on April, 1999, the High Court of Bombay decided that:
“Internet domain names are of importance and can be a valuable corporate asset. A domain name is more than an Internet address and is entitled to the equal protection as trade mark. With the advancement and progress in the technology, the services rendered in the Internet site have also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as his services.”
In any case, the incorporation of a domain by just adding mere ‘e’ with the name of such a mammoth brand can only is caused by the ignorance of the amount of legal protection behind the brands. It is alarming to the legal system. The true sense of brand value, the meaning of trade mark protection should be taught to the trading class explicitly. The High Court decision is a steady stride in desired direction which is worth acclamation.