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Just when we were thought that the Google Adwords trademark infringement case was about to end in Europe, the Indian chapter of litigation just started.

Google sells words/terms to Internet search advertising and displays the advertisement in the right side whenever the term is searched using Google search engine.

But what happens when the terms turnout to be registered trademarks?

Companies such as shoe stores, for example, may buy the trademarked words pay Google so their name appears alongside Internet search results for a brand of designer shoes they sell or even a counterfeit, which is what happen in Europe when Google sold the Adwords of famous luxury brands to other who sold imitation products of the luxury brands.

Louis Vuitton had filed number of suits in different jurisdiction in Europe for trademark infringement claiming that Google had no right to use their mark and sell them to others for advertisement. The litigation in the France was heard by the European Court of Justice and on 22nd September, adviser and Advocate General Poiares Maduro in his opinion had favored Google, noting that they had not committed trademark infringement and the use by Google did not amount to ‘use of trademark’. A detailed analysis of this opinion can be read from IPkat blog here. The complete opinion of the Advocate General to the European Court of Justice in the Louis Vuitton v. Google can be read here.

Now the Indian Chapter of Google Adwords litigation has started.

Consim India, a company that owns the famous Indian matrimony website bharatmatrimony.com, has filed a trademark infringement suit against Google.com at the Madras High Court for what is alleged to be a two pronged infringement by Google. It is also been reported that they have been successful in obtaining an injunction, stoping Google from displaying such ads. However till date we don’t see any action. The reports from Medianama (which can be read here).

1. First alleged infringement by Google was that when the trademarks of Consim India like ‘bharatmatrimony.com’ are searched through Google, competitive website such as shaadi.com and simplymarry.com were displayed in the advertisement space of the search results.

This is the common activity by Google where certain Adwords including trademarked terms were sold to the competitors and on which the trademark owners had been fighting with Google in different jurisdiction for sometime now.  The above-mentioned case of Louis Vuitton also related one such abuse of trademarks.

One interesting issue pointed out by medianama (here) in their report was that Bharatmatrimony themselves were involved in such practices, i.e when one typed shaadi.com as the search term, advertisements by bharatmatrimony would be displayed on the side.

However when checked today, this was removed.

2. Second allegation by Consim was that when a generic term is searched, Google displayed advertisement which had the trademark of Consim but did not direct to their site. In other words when someone searched for ‘Tamil Bride’, which is a generic keyword, advertisement from competitors were displayed which used trademarked terms in the text of the Advertisement including the term bharatmatrimony but instead linked to the competitor’s websites.

Read medianama reports for more information on this. This round of Google Adwords infringement will sure be interesting.  We would keep you posted on the developments as it happens.

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A federal jury in California has held two Web hosting companies and their owner liable for contributory trademark and copyright infringement for hosting sites that sold counterfeit Louis Vuitton goods and not acting even after Louis Vuitton had sent numerous notices to the Web hosting company.

In a decision last week, the jury awarded damages totaling more than $32 million against hosting companies Akanoc Solutions Inc., Managed Solutions Group Inc their owner Steven Chen for knowingly allowed several Web sites they hosted to sell products that infringed Louis Vuitton’s copyrights and trademarks.

The US Digital Millennium Copyright Act’s (DCMA) protects ISP from contributory infringements if they can prove that they do not have actual knowledge of the infringement and upon obtaining such knowledge acts expeditiously to remove, or disable access to, the material  and does not receive a financial benefit directly attributable to the infringing activity. In this instance however the Web hosts had been informed of the activity by Louis Vuitton but still refused to implement a policy for removing the offending sites, which was their responsibility.

This is said to be the first successful application on the Internet on contributory liability for trademark infringement.

Though this looks like a clear case of non compliance on the part of the web hosts, in reality, it would be difficult for web hosts to scrutinize between valid complains before acting upon it, as it is no legal expert to scrutinize trademark infringements and cannot pull the plug off its customers without being 100% sure.

Trade barriers between countries can not only cost you business but also your domain name. This was proved in the recent judgment dated 19th August, by a WIPO Administrative Panel’s Alan L. Limbury, in a domain name dispute between an Indian company and a Pakistani company. The complaint, Mahashian Di Hatti Limited (trading as MDH Spices), a famous Indian company selling spices and condiments under the logo MDH, had filed a complain for transfer of domain name www.mdhfoods.com registered by Syed Hussnain Ali Kazmi of Muhammad Dawood Hassan Food Company, a Pakistani company

The complaint (MDH Spices) in nearly a century long business, had acquired repute among Indian and Pakistani nationals and had also obtained registration of its mark MDH in at least 10 other countries other than India, however due to trade barrier between India and Pakistan it did not sell its product in Pakistan. On the other hand Muhammad Dawood Hassan Food Company (trading as MDH foods) had been selling spices and claimed to be in business since 1983 and has also applied for registration of the mark MDH in Pakistan.

The panelist though accepting that the disputed domain name was confusingly similar to the Complainant’s mark noted that the respondent had legitimate rights to use the name.

Noting that the Complainant does not sell its goods into Pakistan, (and consequently may not enjoy there the same fame as it claims to enjoy elsewhere) the panelist adjudicates that this left a possibility the Respondent did not have the Complainant in mind when registering the disputed domain name. He further went to note that there was evidence the Respondent, whose trading name incorporates the initials MDH (standing for Muhammad Dawood Hassan),  has been trading in foods and spices and advertising under the MDH mark in Pakistan since 1984 and had also applied to register that mark in that country (Pakistan) before registering the dsiputed domain name. Therefore on the above reasoning, the panel noted the complaint had failed to prove absence of legitimate rights on the part of the Respondent and thus the request for the domain name transfer was denied.

In a decision dated 11th August, WIPO Domain Dispute Arbitrator Pavan Duggal had ordered the transfer of the domain http://www.oktatabyebye.com (disputed domain) to Tata Sons (Complaint) from makemytrip.com(mmt) (Respondent), the travel & ticketing company, who hosted a online travel community allowing users to share their travel experience on the contested domain. Though the respondent (mmt) had argued that the common parlance “OK Ta Ta Bye Bye” was used as a farewell and that the disputed domain was not used in bad faith for deriving illegal benefits from the name TATA, the arbitrator ruled that the domain was confusingly similar to the mark ‘Tata’ and the respondent had no legitimate right to use the name. Moreover the Arbitrator had noted bad faith on the part of the respondent since the advertisement and offers on the home page of the disputed domain was from makemytrip.com, therefore the purpose of utilizing the domain name <oktatabyebye.com> appeared purely to funnel Internet traffic and thereby bring it to the website “www.makemytrip.com” for commercial gain.

This decision seems harsh, particularly since the domain was based on the colloquial context for the application of the term ‘Tata’ to mean farewell, neither was there  bad faith on part of the respondent towards misguiding the public.  Last heard the respondent had intended to appeal against transfer of the domain at the Indian Courts.

Read the press reports Medianama (here) and Business Standard (here) for more on this topic and the report by Indiatimes (here) on why Cybersquatters eye online travel market.

Another interesting fact tweeted by Cleartrip is that <makemytrip.com> has also cybersquatted on the domain <clearmytrip.net.in> (see here), now that’s called bad faith registration.