Tata Sons Ltd v Manu Kosuri

Facts

• Tata Sons Limited owned the registered trademark "TATA" (among India's most well-known marks)
• The defendants registered multiple domain names incorporating "Tata": tatainfotech.com, tatafinance.com, and others
• The defendants had no business connection with the Tata group
• The domains were either parked (inactive) or offered for sale
• Tata Sons filed suit for permanent injunction against use of the domain names and passing off

Issues

1. Whether registration of domain names incorporating a well-known trademark without authorization constitutes passing off
2. Whether cybersquatting (registering domains in bad faith for resale to trademark owners) is actionable under Indian law

Held

• The TATA mark is a well-known trademark with immense goodwill in India and abroad
• Registration of domain names incorporating "TATA" by persons with no connection to the group is prima facie bad faith
• Such registration constitutes passing off: it represents a false connection with the trademark owner
• The defendants were restrained from using, registering, or dealing in any domain name incorporating "TATA" or deceptively similar variants
• Cybersquatting is actionable under passing off principles without needing specific legislation

Ratio Decidendi

A well-known trademark is entitled to broad protection. Registration of domain names incorporating such marks by unconnected parties, especially when parked or offered for sale, establishes bad faith and passing off. The domain name system does not exist outside trademark law; it is subject to the same principles of honest commercial dealing.