Fight over Oktatabyebye.com
Shamni Pande October 7, 2009
What’s in a name? Everything — especially if it is a brand fighting for its domain, as happened to be the case with Tata Sons that had raised objection to a Gurgaon-based travel portal MakeMyTrip creating a site called oktatabyebye.com.
In a judgment delivered recently, the World Intellectual Property Organisation (WIPO) has ruled in favour of Tata Sons, asking MakeMyTrip to transfer the domain to the former. The judgment noted that MakeMyTrip was not able to show why it needed to use the domain name in connection with offering goods or services.
This is by no means the first time that domain names have landed companies in trouble. In 2004, Satyam Infoway had successfully appropriated its right to the brand “Sify” when a company called Sifynet Solutions registered a domain name siffynet.com for itself. Then the Supreme Court had ruled in favour of Satyam, observing that people were likely to be mistakenly diverted to the wrong domain thinking they were going to Satyam’s offering.
Legal View: The recent ruling has led to considerable debate in the legal fraternity. MakeMyTrip has appealed in the Delhi High Court and the general view is that the concern of Tata Sons is not entirely valid as the term “TaTa” is also a colloquial way of saying “goodbye”: “It is a phrase that is commonly used in India.
The likelihood of anyone confusing it with the company name is remote,” feels Anuradha Salhotra, Partner, Lall Lahiri & Salhotra. “If the oktatabyebye is using goods and services similar to that of the Tata Group, then it is a threat. But the important thing is that this phrase does not appear as a standalone, but is part of a well recognised phrase,” says Salhotra. Hence, in many ways the ball is in Tata Sons’ court as it has to establish how the phrase may actually lead to confusion, she says.
How it’s used: An article on the website smartmoney.com tells readers: “Trading up gives you a wider seat, plus another five to seven inches of leg room.” And yes, the article was discussing airline seats in the business class vis-à-vis economy class.
What to use instead: In this context, it would probably be easier to use the term both airlines and techies use: “upgrading” instead of trading up.