Acqua Minerals Limited v. Pramod Borse & Anr.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Common law passing off and cybersquatting, read with Section 27(2) of the Trade and Merchandise Marks Act, 1958.

Brief facts

Acqua Minerals Limited, the registered proprietor of a well-known trade mark for packaged drinking water with a substantial share of the Indian bottled water market, discovered that the defendants had registered the identical name as a domain name without any authorisation or business connection with the plaintiff. When confronted, the defendants offered to transfer the domain name in exchange for compensation, claiming they had registered it under the mistaken impression that the word referred generically to minerals. The plaintiff sued for passing off, seeking a permanent injunction and transfer of the domain name.

Issues before the Court

1. Did registration of the domain name by a person unconnected with the trade mark owner amount to passing off?
2. Was the registration made in bad faith so as to constitute cybersquatting?
3. Was the plaintiff entitled to a permanent injunction and transfer of the domain name?

Court's findings

The Court held that the plaintiff's mark was well known and distinctive, associated exclusively with its mineral water business, and that registration of the identical domain name by a stranger to that business, followed by an offer to transfer it only for money, was itself strong evidence of dishonest intent.

The Court found the defendants' explanation, that they believed the word to be a generic term for minerals, wholly implausible given the fame of the mark, and held that domain name registration undertaken with the object of trading on another's reputation or extracting a price for transfer constitutes bad faith registration amounting to passing off, even absent any active commercial use by the defendants.

The Court held that the proprietor of a well-known mark is entitled to protect that mark on the internet as it would in the physical marketplace, and that allowing the defendants to retain the domain name would permit them unjustly to hold the plaintiff's goodwill to ransom.

Decision

Permanent injunction granted restraining the defendants from using the domain name, and the defendants were directed to transfer it to the plaintiff.

Keywords

Bad Faith Adoption Cybersquatting Domain Names Passing Off Well-known Trade Mark