India: Trademark Issues In Digital Era: An Overview

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.

Conclusion

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.

Footnotes

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

2. http://www.lawyersclubindia.com/articles/print_this_ page.asp?article_id=2883 last retrieved on 02.04.2013

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

4. http://cyber.law.harvard.edu/property00/domain/main. 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 Mondaq.com.

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

Authors
Similar Articles
Relevancy Powered by MondaqAI
Singhania & Partners LLP, Solicitors and Advocates
S.S. Rana & Co. Advocates
Chadha & Chadha IP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Singhania & Partners LLP, Solicitors and Advocates
S.S. Rana & Co. Advocates
Chadha & Chadha IP
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions