Protection of Domain Name as a Trademark

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What is domain name?

Domain name is an identification string that defines a realm of administrative autonomy, authority or control within the internet. Domain names are formed by the rules and produces of the domain name system (DNS). Any name registered in the DNS is a domain name. In general, a domain name represents an internet protocol resource, such as a personal computer used to access the internet, a server computer hosting a website or the website itself or any other service communicated via the internet. There are only a limited number of such domains. For example, gov – government agencies, edu – educational institutions, org – organizations (non profit), com – commercial business, etc.

In simple terms, domain name is the address of a web site that is intended to be easily identifiable and easy to remember, such as yahoo.com. These user friendly addresses for websites help connect computers and people on the internet. Because they are easy to remember and use, domain names have become business identifiers and increasingly, even trademarks for the domain names – sony.com, for example, business attract potential customers to their websites.

What is trademark?

A Trademark is a word, phrase, symbol or design, or any combination thereof, which identifies and distinguishes the source of a good or service. The owner of an established trademark retains exclusive rights in its use and competitors are prohibited from using the same or similar mark to sell similar products or services. Trademark laws help businesses market their products and services by enabling consumers to associate the products they enjoy with a particular mark. The trademark functions as a guarantee to consumers that they will continue to receive consistency and quality in products they purchase.

The rapid increase in online business and advertising prompted a growing demand for domain names that are linked to particular businesses, goods or services. The scramble to reserve domain names has caused several disputes regarding trademark infringement. For example, some businesses that wished to use their established trademark as a domain name discovered that it had already been taken. Once a domain name has been chosen, the holder might be able to obtain trademark protection in order to prevent others from using the name. However, trademark rights in commercial domain names are more limited than trademark rights in other areas.

Domain Names Be Registered And Protected As A Trademark

Domain names can be registered and protected as trademark at national and international level, provided that the domain names do satisfy all conditions to be duly registered and protected like trademark. Any unique internet name which is capable of identifying and distinguishing goods or services of a company from that of other companies, and can also act as a reliable source identifier for the concerned goods and services on the internet, may be registered and thus protected as trademark, if it satisfies all other rules and requirements for registration which are commonly applicable to the trademarks. For proper registration of a domain name as a trademark, this must be unambiguously unique from all other domain names and well known trademarks on the internet, so that it does not mislead or deceive customers of other companies engaged in the same or different fields, or violate public order or morality. Such cases might give rise to instances of trademark infringement litigation.

In the case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd. , the dispute which arose was that whether internet domain names are recognizable as other intellectual properties such as trademark? To which the court held that:

"The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site, and distinguishes specific businesses or services of different companies. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high."

Another issue is the registration of names of popular brands with a slight spelling variation like pesi.com and radiff.com for the sole purpose of diverting traffic to their website through typing errors. ‘A significant purpose of a domain name is to identify the entity that owns the website.’ A domain name should not confuse the consumers as to the origins of the services or products defeating the principal of trademark law. In Rediff Communications Ltd. v. Cybertooth & Another , the Bombay High Court while granting an injunction restraining the defendants from using the domain name ‘RADIFF’ or any other similar name, held

“When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons.”

Again, in the case of Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta and Anr. , the website using the domain name, ‘Naukari.com’ was held to be confusingly similar to that of the plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie inference of bad faith.

Trademark v. Domain name

Trademarks are provided recognition and protection in only those national and international jurisdictions, where these are properly registered; these may not attain trademark protection worldwide. The domain names as trademarks or service marks are registered and protected at the entire global level supremely by only one organization which is ICANN [Internet Corporation for Assigned Names and Numbers], along with the national and international protection under the directly concerned national Trademark Law and diverse International Trademark Treaties of the world. Any national or international trademark law is not fully capable of protecting a domain name in countries of the world over. To meet this vital objective, the ICANN with support of the WIPO (World Intellectual Property Organization) prescribed the following two strong and strict measures --- a rigorous and censorious system of registration of domain names with accredited registrars [by ICANN] and an efficient and efficacious dispute resolution policy, named as the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy).

For a dispute resolution under the UDNDR Policy of October 1999, a person or entity may formally complain before the competent administration-dispute-resolution services providers [listed by ICANN under Rule 4(a)], that:

  • Any specified domain name is very strikingly or confusingly similar to a previously registered domain name or trademark of the complainant
  • Any accused domain name has been registered, and is blatantly being used in bad faith
  • There exists any certain case of trademark infringement against the complainant

The domain name registrars duly authorized by the ICANN, operate a dispute resolution procedure under the UDNDR Policy, for the purposes of providing efficient and rigorous remedy against bad faith and abusive registration of domain names which violate the trademark rights of the complainants.

Rule 4(b) has listed by way of illustration the following four circumstances as evidence of registration and use of a domain name in bad faith:

  • Circumstances indicating that the domain name owner/registrant has registered or the domain name owner/registrant has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
  • The domain name owner/registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
  • The domain name owner/registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • By using the domain name, the domain name owner/ registrant has intentionally attempted to attract, for commercial gain internet users, to its web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner/registrant web site or location or of a product or service on its web site or location

Since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require worldwide exclusivity but also that national laws might be inadequate to effectively protect a domain name.

The defense available to such a complaint has been particularized "but without limitation", in Rule 4 (c) as follows:

  • Before any notice to the domain name owner/registrant, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
  • The domain name owner/registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
  • The domain name owner/registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Trademarks Act, 1999

In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service marks respectively. A closer perusal of the provisions of the Act and the judgments given by the Courts in India reveals that the protection available under the Act is stronger than internationally required and provided. Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name for which registration is sought, does not infringes or violates someone else's rights. Thus, if the domain name, proposed to be registered, is in violation of another person’s “trademark rights”, it will violate Rule 2 of the Policy. In such an eventuality, the Registrar is within his right to refuse to register the domain name. This shows that a domain name, though properly registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a person successfully proves that he has “rights’ flowing out of the Act. This point is further strengthened if we read Rule 2 along with Rule 4(k), which provides the parties have a right to agitate before a court of competent jurisdiction, irrespective of the declaration or decision to the contrary by the ICANN. Thus, a contrary decision of an Indian Court of competent jurisdiction will prevail over the decision of ICANN. The rights and liability to be adjudicated under the Trademarks Act, 1999 can be sub-divided under the following groups:

a. Liability for infringement: A trademark on registration is endowed with strong protection under the Act. The Act allows the owner of the registered trademark to avail of the remedies of infringement and passing off. It must be noted that though the passing off remedy can be availed of irrespective of registration, the remedy of infringement can be availed of only if the trademark is registered properly as per the provisions of the Act. Thus, a person holding a domain name violating a registered trademark can be held liable for infringement under the provisions of the Act.

Liability for Passing off : The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that they are those of another person. The modern tort of passing off has five elements i.e.

  • a misrepresentation
  • made by a trader in the course of trade,
  • to prospective customers of his or ultimate consumers of goods or services supplied by him,
  • which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and
  • which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

The trademark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiff’s right is against the conduct of the defendant, which leads to or is intended or calculated to lead to deception.

The protection of domain name under the Indian legal system is standing on a higher footing as compared to a simple recognition of right under the UDNDR Policy. The ramification of the Trademarks Act, 1999 are much wider and capable of conferring the strongest protection to the domain names in the world. The need of the present time is to harmoniously apply the principles of the trademark law and the provisions concerning the domain names. It must be noted that the moment a decision is given by the Supreme Court and it attains finality, then it becomes binding on all the person or institutions in India.

It cannot be challenged by showing any ’statutory provision’ to the contrary. This is so because no statutory provision can override a ‘Constitutional provision’ and in case of a conflict, if any, the former must give way to the latter. This settled legal position becomes relevant when we consider the decision of the Supreme Court in Satyam case (supra) in the light of the above discussion. The various landmark judgments of the Supreme Court have conferred the ’strongest protection’ to the domain names in the world.

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