Domain name protection in passing off: distinctiveness and secondary meaning justified interim restraint against deceptive online diversion.

A domain name can function like a trade mark and be protected in passing off if it has acquired distinctiveness, secondary meaning, reputation and goodwill through long and recognisable use. Where the defendant adopts a deceptively similar domain name in the same field and the record shows diversion of internet traffic, the use is likely to cause confusion and deception and may indicate deliberate bad faith. A descriptive or generic element may still gain protection through sustained distinct use. On these facts, the plaintiff established a prima facie case and interim restraint was granted against use of the impugned domain name or any deceptively similar mark, including hyperlinking to the defendant's website, pending the suit.

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Issues: Whether the plaintiff's domain name had acquired distinctiveness and secondary meaning so as to be protectable in passing off, and whether the defendant's use of a deceptively similar domain name and hyperlinking to its own website justified grant of an interim injunction.

Analysis: The domain name was treated as having the same function as a trade mark and was entitled to protection against passing off. The plaintiff had used the domain name for a substantial period, supported its claim of reputation and goodwill by press material and other records, and showed that the mark had become associated with its internet-based employment services. The defendant operated in the same field, adopted a very similar spelling, and the material on record indicated diversion of internet traffic from the plaintiff's site to the defendant's site. In such circumstances, the use of a similar domain name was held to create a likelihood of confusion and deception, with the adoption appearing deliberate and in bad faith. A descriptive or generic element could still acquire a secondary meaning through long and distinct user.

Conclusion: The plaintiff made out a prima facie case for protection, and the defendant was restrained from using the impugned domain name or any deceptively similar mark and from hyperlinking it to its own website pending disposal of the suit.

Ratio Decidendi: A domain name that has acquired distinctiveness and secondary meaning is protectable in passing off, and deliberate adoption of a deceptively similar domain name to divert internet traffic constitutes actionable confusion and bad faith warranting interim injunction.

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