People Interactive, which runs Shaadi.com, has lost a case in court against Secondshaadi.com (defandant)* where it sought to have the latter stop using the domain name and deregister. In its petition, Shaadi also said that it was trying to get the Secondshaadi from “passing off” as their website.
Secondshaadi is a website which caters exclusively for people who wish to remarry while Shaadi.com is India’s second largest martimonial website. In Hindi, Shaadi is transliteration of the word for marriage.
The petitioners for Shaadi said that services under this mark and domain name have acquired substantial goodwill and repute and said that its domain name has all the characteristics of a trademark. As such, Shaadi said that its mark, has now gained a ‘secondary meaning’.
On 27th July 2007, Shaadi.com sent a cease-and-desist notice to the defendant. The company declined to comply. On 28th September 2013, Shaadi sent another demand.
“The Defendants’ domain name (Secondshaadi) is deceptively similar to the Plaintiff’s registered marks Shaadi.com and Shadi.com,” the petition read. However, the lawyers arguing for Shaadi conceded that its domain name was not inherently distinctive. “Considered in a vacuum, he says (counsel for Shaadi), it is purely descriptive of the services in question. This does not, he submits, by itself preclude the Plaintiff from claiming a monopoly over the mark, since it is well-settled that even a descriptive mark can attain distinctiveness, and is, therefore, capable of being used as a trade mark,” the court order read.
But the company said that through extensive and continuous use, it has achieved the necessary distinctiveness. Counsels argued that it is “household name” where people associate the name with matrimonial services associated with the website alone.
“There have, in fact, been instances, he says, where the Plaintiff has received inquiries and complaints from the contesting Defendants’ customers regarding services rendered under the mark SecondShaadi.com,” the order read.
Info Edge and Naukri domain name
The court however noted that in an earlier case, Info Edge, which owns job search portal Naukri.com, sought to take down a website with the domain name naukari.com. At the time, Info Edge too used the argument of ‘secondary significance’ but the court accepted it. The order explained that it was a clear-cut case of an attempted hijacking of the plaintiff’s business. The defendant in that case argued “the expression naukri.com was generic, incapable of protection, that evidence was required and that there was no evidence of bad faith.”
‘Words of common tongue cannot be monopolized’
The court noted that common words used every day cannot be monopolized. Words such as ‘soda’,’perfect’, ‘best’ and ‘number 1’ used to describe products and services can never become trade marks on their own, the court noted.
“They never acquire distinctiveness or a secondary meaning. They do not tell one man’s goods from another’s. They do not indicate origin. An expression in the second category, a merely descriptive term, is often used to describe some particular characteristic or ingredient,” it added.
“If shaadi-dot-com is a destination for Indians seeking matrimony, then, by the same token, secondshaadi-dot- com must be the destination for those seeking to repeat the experience,” the court summed up its order.
Read the order here.
*Disclaimer: Secondshaadi.com is owned by Accentium Web Private Limited which is run by Vivek Pahwa. Vivek Pahwa is a cousin of Nikhil Pahwa, MediaNama’s editor-in-chief.