1. Name of the Case: Satyam Infoway Ltd vs.

Sifynet solutions Pvt Ltd

2. Citation: 2004(3)AWC 2366 SC

Date of Judgment: 6 May 2004

3. Names of the judge/s :

 Ruma Pal, J.
 P. Venkatarama Reddi,

4. Facts in brief:

 In June 1999, Satyam Infoway Ltd, an IT service company, established in 1995 for
specializing in software development, software solution and related activities, had
registered several domain names for instance, ‘www.sifynet,' ‘www.sifymall.com,'
‘www.sifyrealestate.com' ‘sify' with ICANN and WIPO.
 Siffy.net Solutions Pvt. Ltd, who had been involved in network marketing since 2001
with the domain names, ‘www.siffynet.net' and ‘www.siffynet.com,' having it with
ICANN, were accused of claiming wide reputation and goodwill by using "."
 Satyam Infoway filed a suit with the City Civil Court Judge to obtain a temporary
injunction on the grounds claiming to be the original user of the "sify" trademark
upon knowledge of Siffy.net's use of the name "siffy."
 Upon respondents claim the High Court of Karnataka reversed the district court’s
order, saying that merely because Satyam Infoway was established earlier and had
earned a reputation under the domain name ‘Sify.'
 Considering where the balance of convenience lies an order couldn't be granted in its
favor.
 Since there was no similarity between the two businesses, therefore the High Court
stated that there was no question of consumers getting confused or misled.
 Satyam Infoway filed an appeal to the Supreme Court regarding the matter.
5. Provisions Involved:

 section 2(ZB)Trade Marks Act, 1999

 Law of passing off, Trade Marks Act, 1999

6. Issues:

1. Whether the legal norms applicable to other intellectual properties such as trade
marks, apply to internet domain names?
2. Whether a domain name can is capable of distinguishing the subject of trade or
service made available to target users of the internet?
3. Would the principles of passing off apply?
4. Whether the balance of convenience lie is established?

7. Arguments:

1. From the facts, the Courts had proceeded on the basis that the principles related to
passing off actions in connection with trademarks apply to the domain. However, the
respondent has alleged that a Domain Name is not similar to "property names" such as
Trade Marks. It was also produced that registration of a domain name with ICANN
did not result in any intellectual property right; and that it is like registration of a
company name which is a unique identifier of a company but without conferment of
no intellectual property rights.

2. The Court states that domain name as an address for internet communication along
with identification of an internet site. Under Section 2(z), a domain name may pertain
to the provision of services are listed. The fact that consumers looking for a particular
site is likely to associate a service provider with their domain names.1

1
Information Technology Law Diane Rowland and Elizabeth Macdonald 2nd Edition p. 251.
 3. As the phrase "passing off " means to not allow a party from passing off its goods or
services to the public as that of the plaintiff's.
Then the trader who can establish prior user will succeed If two trade rivals claim to have
individually invented the same mark.

The second element incorporated by a plaintiff in a passing off action is fraudulent

representation by the defendant to the public. If proved, relief would be granted to plaintiff.
This is done so that to erase any the likelihood of confusion in the minds of the public 2

The third element of passing off action is the loss of it.

4. Given the nature of the business, it is necessary to maintain an inde

pendent identity which a domain name requires. Upon the findings of the Court albeit prima
facie, on the dishonest representation of the appellant's trade name by the respondent,
the appellant is entitled to the relief it claims as the goodwill accumulated by the appellant
and the public association of the trade name Sify with the
appellant, in connection with the trade nam
e. The appeal was allowed, and the decision of the City Civil Court was affirmed.

8. Judgment:

 The Apex Court held that the Internet has developed into a mode of carrying on
commercial activity.
 The primary role of a domain name was to provide an electronic address for
businesses on the Internet, and but also doubles up as a business identifier.
 Under section 2(z) of the Trade Marks Act, a domain name could qualify as services
and be entitled.
 On “passing off," the Court discovered that even the slightest similarity of domain
name services which are different could result in the confusing the consumers.
 The Supreme Court confirmed the injunction order earlier granted by the district court
and allowed the appeal.

2
ARISTOC v. RYSTA. (1945) AC 68.
9. Application/Analysis:

1) The court posed it as a requirement passing off that Satyam Infoway would have to prove
to succeed.

Firstly, the services offered by Satyam Infoway, Satyam Infoway had to provide evidence
that goodwill in the name "Sify" had accumulated. It was so that It would be apparent for the
consumers who associate the name "Sify" with the services offered by Satyam
Infoway.3 Satyam Infoway proved that the name "Sify" acquired immense repute.

Secondly, Satyam Infoway had to prove that Sifynet Solutions, by using similar domain
names, had misrepresented its services to the consumers. Due to this, there is a likelihood of
confusion in the minds of the public consuming services offered by Sifynet Solutions Satyam
Infoway.

Thirdly, Satyam Infoway were required to show this causative risk of confusion to consumers
due to the use of same domain names.4

2) The court proceeded to distinguish between the nature of a trade mark and a domain
name. The court indicated that they could be identified primarily by the method of operation.

3) The Supreme Court reversed High Court decision here on the issue “balance of
convenience." The court held the domain name

The court also decreed the right to use the same domain names cannot be given to parties at a
time as in this case the adoption of a domain name was with a fraudulent intent to pass off its
services as those of Satyam Infoway's.

10. Conclusion:

3
 Authoritative Decision of Supreme Court of India on Domain Name Disputes,2012.
4
 Authoritative Decision of Supreme Court of India on Domain Name Disputes,2012.
 The decision was criticized by some in the legal circles but also appreciated for the
concreteness it brought about in respect to the law regulating domain name disputes. Some
legal circles contested it for failing to notice the important distinctions between trade marks
and domain names and for the belief that the Trade Marks legislation is not equipped to deal
with the myriad disputes in the internet realm. Further, inconsistencies in Information
Technology Act, 2000 is visible and that it has failed to fill in the lacunae related to domain
names under the Trade Marks Act,2005.