Delhi High Court restrains Chinese entity from using domain name

In ICICI Bank Ltd v Chuandong Xu (CS (OS) 2606/2008, December 22 2011), in the wake of an increase in cybersquatting cases involving non-Indian entities, the High Court of Delhi has restrained a Chinese entity from using the domain name ''. The High Court confirmed the findings on passing off and trademark infringement made in an earlier ex parte interim injunction, while noting the defendant's failure to contest the matter.
The High Court was not swayed by a prior decision of the WIPO Arbitration and Mediation Centre in which it was held that the domain name '' was not identical, or confusingly similar, to ICICI Bank’s trademark. The WIPO panellist had held that the defendant was making a legitimate use of the domain name because, among Chinese internet users, the term ‘icicigroup’ means a 'community of like-minded netizens with common interests' - the letter ‘i’ denotes ‘love’ (phonetic pronunciation 'ai'), while ‘cici’ can have a variety of meanings, including ‘pottery’, ‘phrases’ and ‘here’, all of which share the phonetic pronunciation ‘ci’.
The plaintiff in the present case (formerly known as the Industrial Credit and Investment Corporation of India and renamed ICICI Bank Limited in 1999) contended that it had acquired considerable goodwill and reputation in the trademark ICICI originating from its first use of the mark on January 5 1955 and from its substantial national and international success as a financial institution. The plaintiff further contended that the trademark ICICI had acquired the status of a well-known/famous mark under Indian law, and that it had a number of registrations for the ICICI mark in India and overseas, including a Chinese trademark registered prior to the registration of the domain name by the defendant.
In addition, the plaintiff claimed that ICICI Bank, together with its subsidiaries, constituted the ICICI Group (all of which used the trademark ICICI), and that its use of the ICICI mark in its domain name served as both its trademark/service mark on the internet and its online corporate identity.
The plaintiff further contended that the defendant had registered the domain name '' in bad faith and without authorisation in order to capitalise on the goodwill and reputation associated with the plaintiff’s mark. This contention was based on the fact that the defendant's domain name wholly incorporated the plaintiff’s trademark, thus making it confusingly similar to the plaintiff’s domain name, ''. The plaintiff was able to show the defendant's bad faith in registering the domain name by providing email correspondence in which the defendant demanded payment of $800,000 for transfer of the domain name to the plaintiff.
While placing reliance on Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd ((2004) 28 PTC 566 (SC)), the High Court found that the plaintiff’s mark ICICI was a well-known trademark under Section 2(1)(zg) of the Trademarks Act 1999 on account of its extensive global use and publicity. Further, the court held that the mark adopted by the defendant was identical to the plaintiff’s and that, based on its trademark registration in China, the plaintiff was the prior owner/user of the mark.
Consequently, and in light of the defendant's demand for a substantial payment to transfer the domain name to the plaintiff, the High Court held that the domain name had been registered in bad faith and constituted dishonest use of the plaintiff’s mark in order to exploit the goodwill and reputation associated with it.

This decision represents a significant victory for Indian trademark owners seeking to protect their trademarks on the internet and shows that the Indian judiciary is aware of the need to protect the online corporate identities of well-known businesses.
Gurpreet Singh Kahlon, Anand and Anand, New Delhi

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