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India - High Court Holds Domain Name Similar to Trademark

In Titan Industries Limited v. Prashanth Koorapati & Others, the former, the Indian owners of the trademark TANISHQ, which had become well-known for jewelry and watches, filed a suit for passing-off and sought a permanent injunction restraining Prashanth Koorapati from using their registered domain name "tanishq.com" on the Internet.

Titan commenced the production and marketing of jewelry and watches in 1994 under the trademark TANISHQ, obtaining registrations in 23 countries. Prashanth Koorapati registered the domain name "tanishq.com" with Network Solutions Inc. (NSI). Titan disputed Prashanth Koorapati's domain name registration on the grounds that the registration would cause confusion and deceive the public and thus divert Titan's business to Prashanth Koorapati. Titan argued that Prashanth Koorapati would thus be able to earn profits based on the goodwill and well-established reputation of Titan's TANISHQ mark, thereby causing financial loss to Titan and damage to the goodwill and established world-wide reputation of Titan's TANISHQ mark.

The Delhi High Court issued an ex parte ad interim injunction restraining Prashanth Koorapati from registering a name, or operating any business, manufacturing, selling or offering for sale, or advertising any goods under the name TANISHQ or any other name deceptively similar thereto; or including the word TANISHQ as an essential feature of a domain name on the Internet; and from conducting any activities with the name TANISHQ that may lead to passing off the business and goods of Prashanth Koorapati as those of Titan. During the pendency of the dispute NSI placed Prashanth Koorapati's domain name registration "on hold" and the web page was never activated. Prashanth Koorapati has not appealed the Court's decision.

As the first such case in India, the Delhi High Court has in effect recognized that domain names and trademarks are analogous and has held that the unlawful use and registration of domain names containing the trademarks of third parties will not be permitted.


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