India: Trademark Issues In Digital Era: An Overview

Last Updated: 23 April 2013
Article by Sugandha Nayak

Most Read Contributor in India, September 2016

With the globalization and commercialization of the Internet, Domain names have taken on a new connotation as business identifiers. When the internet was in its infancy, domain names were created to serve as useful mnemonic means of locating specific computer system on the Internet. Domain names are now highly visible in real space as well showing up on television com mercials, billboard, magazine ads, and even on the sides of buses etc. The basic structure of internet is Internet Protocol which is used for computer server communication in the numeric form and known as IP address in common parlance. Since these numeric IP addresses are not mesmeric, due to which it becomes tedious and difficult to remember such IP addresses. Introduction of domain names have played a great role in recollection and now considered as corporate asset. Thus, a domain name is an easy alternative for all numeric IP addresses and is known as the 'Domain Name System'.

Domain is a part of the Cyberspace which is a virtual world, which exists only in Computer memory. Cyberspace is a living organism; constantly changing as more people join the pioneers of this brave new world every moment. India has drastically moved in this direction and the laws in India towards these social changes have already been adopted.1 The advent of trademark can be traced back to the beginning of the trade itself. Due to human endeavors the manufacturers have started differentiating their goods from others; the manufacturers started symbolizing their goods with marks and logos. Now in today's time where people have less time to scrutinize a product/ goods the trademark helps them to go for the best buy at cheaper rate by comparatively spending lesser time.2 Thus in this era of information technology it becomes pertinent to address this issue of online infringement of trademark with utmost care and approach towards the correct solution and application of law for such protection.

Trademark and domain names

A domain name is part of the address and location of a site on the internet. While trademark have been around for a long time, domain names are comparatively a recent phenomenon attracting public attention.

Disputes over ownership of the domain names have arisen for a number of reasons. The domain name has been considered as akin to a trademark. Therefore those who own the mark for the no-internet business wish to use the same on the internet; it is seen as a valuable addition to the branding of goods or services as a whole. Trademark law is territorial whereas internet is global. Therefore, different business trading under the same mark in various parts of the world may have what they consider to be the same legitimate claim to a particular domain name, as no domain name can be identical therefore only business house can have a particular name.3

Domain Name Assignment Procedure

For the registration of domain name, a request is made to the organization having power to allocate the domain names. Before 1999 a company known as Network Solutions Inc. (NSI) was the only organization for the registration of the domain name under .com, . net, .org etc. To avoid arbitration between two parties who choose the same domain name, NSI decided to simplify the procedure by applying a first come, first serve arrangement with respect to allotment of such overlapping domain names. In this simple procedure introduced by NSI, there are no reasoning questions on applicant's right to adopt that particular domain name; rather they would simply allot the requested domain name if available with the organization.

Under this liberal policy, NSI created a procedure under which a third party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain names would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party's domain name. An owner of unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). Now the registrar of domain names are accredited by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit corporation formed specifically to control Internet Domain name management and similar functions. NSI continues to assign domain names, but now they are just one many domain name registrar.

Available Remedies

Initially the domain name disputes in United States were decided through Courts by applying three primary trademark laws.

  • Firstly, claim in traditional trademark infringement, which requires that the alleged infringing use cause a likelihood of consumer confusion.
  • Secondly the cause of action, which is to assertion that a domain name 'dilutes' the value of the mark.
  • Finally the claim proved is unfair competition, where the trademark is not federally registered. Due to the above lengthy process an alternative to court system was introduced commonly known as ICANN. It is an organization responsible to administer and manage the domain names. It also implemented the universal procedure known as Universal Dispute Resolution Procedure (UDRP) which will govern specific disputes related to the domain names. UDRP has been proved to be one of the most successful procedures which work as a model for arbitration proceeding with slight modifications. The most common disputes with are decided by the UDRP are cyber squatting and cyber piracy used by registrant of the domain name through illegal means.4

ICANN Uniform Domain Name Dispute Resolution Policy

In 1999, a new Uniform Domain Name Dispute Resolution Policy (UDNDRP) was promulgated by ICANN. It works under the close supervision by the U.S Department of Commerce. There is a great difference between the old NSI policy and the UDNDRP. The ICANN policy forbids registration of the domain name if:

i. The domain name is identical or confusingly similar to another's mark.

ii. The entity registering the domain name has no legitimate right to it.

iii. The domain name was registered and used in bad faith.

The disputes under ICANN rules are referred to one or three member administrative panel that decides the dispute promptly and publishes the decision. The administrative decision is final and binding on the registrar and registries subject to ICANN control, but it can be superseded by Court actions. The proceeding is fast and inexpensive, which can be conducted through e-mail with no personal appearances, and to require minimal production of documents. The policy permits the arbitrators to rule that the complaint was brought in bad faith to 'reverse hijack' the domain name or to harass the domain name holder. Relief for such conduct is confined to a declaration of abuse of the administrative proceeding.

In India, the domain name disputes are administered and managed by the Indian Domain Name Dispute Resolution Policy (commonly as .INDRP Registry). The INDRP has its own set of rules and policies under which the complaint is filed against the domain name infringement. The INDRP have their list of panel members to decide the complaints. The procedure is simple and rapid and inexpensive under the INDRP rules and policy which more or less works on the principles laid down the WIPO.


The network of computers called the internet, which had a modest beginning, has grown by leaps and bounds. The growth of the internet has been explosive; the number of internet has increased tremendously since its introduction. Due to which the crime rate is booming with double alacrity and thus to protect the interest of the millions of potential victims the protective laws have been made in the country and interestingly the redressal of complaint is quick and cheaper. The decision by the panel is always unbiased and the confidentiality level is high under such dispute resolution registry. It is the best way to solve the dispute within a less period of time without any hassle of litigation. This domain name dispute resolution has been proved to be the most excellent way of Alternative Dispute Resolution involving mediation and arbitration for domain name disputes. The issue concerning protection of domain names came up before the Supreme Court of India in the case of Satyam Infoway.


1. Mayuri Patel & Subhasis Saha, Trademark Issue in the era of internet, Journal of Intellectual Property Rights, Vol. 13 March 2008, pp118.

2. page.asp?article_id=2883 last retrieved on 02.04.2013

3. Ryder, Rodney, brands, Trademarks and advertising, Lexisnexis Butterworths, 2003

4. html last retrieved on 03.04.2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.