India: Domain Names: The New Virtual Address

"Domains have and will continue to go up in value faster than any other commodity ever known to man" — Bill Gates.

The use of internet at present times has increased manifold and has thus acquired a place in our everyday lives. Consequently,'Domain Names' which were initially mere addresses for communication over the internet are now increasingly being considered as the property and the new virtual address of the owner. A domain name is a word that identifies one or more Internet Protocol addresses (an identifier for a computer or device on a network). Domain names are used in URL (Uniform Resource Locator, the global address of documents and other resource on the World Wide Web).2 Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.3

A trade mark is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.4 Domain names, therefore, come within the purview of Trade Marks as they are capable of uniquely identifying or distinguishing the goods or services of one entity from another. Increasingly domain names are being used as tools for marketing consequently consumers are more likely to associate them to particular quality of goods or to the goods or services of a particular entity. Hence, a need for the protection of the domain names is imminent.

The domain name disputes related to the issue of trademark are sometimes termed as cyber squatting or reverse domain name hijacking. Both concepts are related to the misuse of the domain name, but there is a difference between them.

Cyber Squatting And Reverse Domain Name Hijacking: Difference

The concept of Reverse domain name hijacking at the first instance somewhat appears to be similar to that of cyber squatting, but when looked in entirety they have conceptual difference.

Reverse domain name hijacking (also sometimes called reverse cyber squatting) is when a trademark owner who wants to obtain a particular domain name, files a lawsuit against the domain name owner who has acquired the domain name legitimately (either before the trademark owner's mark became famous or distinctive or because of some other legitimate interest in the domain name) in order exert pressure against such owner to turn over the domain name to the trademark owner.

The district court of US in the case of Sporty'sFarmL.L.C v. Sportsman's Market Inc.5 noted;

"cyber squatting" occurs when a person other than the trademark holder registers the domain name similar to a well known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain name holder.

As long as cyber squatter owns the domain name, the trademark owner cannot register its own trademark as a domain name. In this sense the cyber squatter breaches the fundamental right of the trademark owner to use its trademark provided under the Trade Marks Act, 1999.

The basic line of difference between the two is that reverse domain name hijacking is a situation where a properly registered domain is stolen by another person. It is not necessary that this name is a trade mark as compared to cyber squatting.

Domain Name Protection:An International Insight

The Internet Corporation for Assigned Names and Numbers (ICANN) is a not for profit international regulatory authority of domain names and provides for the registration of domain names. It adopted the Uniform Domain Name Disputes Resolution policy (UDRP) which guides the dispute resolutions arising due to registration of domain names.

The ICANN establishes two kinds of disputes with reference to domain names which are:

(i) Disputes between the trade mark owners and domain name owners;

(ii) Disputes between two or more domain name owners.

The prominent rules entailed by the UDRP are as follows:

(a) Rule 2 entails that prior to the registration of a domain name; the applicant must prove that such registration would not be in violation of other entities' trade mark rights.

(b) Rule 4 (a) provides that :

(i) the domain name is confusingly similar to that of the complainant; and

(ii) the registrant does not possess any legitimate interest in the domain name; and

(iii) registration and usage of the domain name was done in bad faith;

are sufficient grounds for transfer of the disputed domain name to the complainant.

(c) Rule 4 (b) provides for cyber-squatting as an act done in bad faith. Act such as selling the disputed domain name to the competitor of the owner of the trade mark, registration of domain name primarily for commercial gain from the trade mark etc come under the purview of cyber-squatting.

(d) Rule 4 (k) provides that the owner of the domain name or the complainant can file a suit in a court of competent jurisdiction either prior to proceeding under the ICANN policy or subsequent to the conclusion of proceedings under the policy.

Defences In The Proceeding By The Respondent

The UDRP provides that certain actions shall not be held as infringement of domain names under Rule 4 (k). Such actions can be taken as defences against contentions of the complainant.They are as follows:

(i) Prior to the notice to the registrant of the domain name, the disputed domain name was in use in relation to the bonafide offering of goods or services;

(ii) The domain name owner has been generally known by the disputed domain name despite no trademark rights or service mark rights in connection with the disputed domain name;

(iii) The domain name is in use by the owner for legitimate and non-commercial purposes only.

In the case of Cardservice International Inc. v. McGee6 it was held that domain names cannot be regarded as mere address on the internet but serves the same function as trademarks. Hence, domain names should be granted the same protection as provided to trademarks under the law.

British Telecommunications Pic v. One in a Million Ltd.7

is a leading case where it was held that the law in relation to passing off was also relevant in case of infringement of domain names. The defendants in the instant case registered the names which were the well known trade names of the plaintiff, it was ruled that such registration was motivated by the goodwill of the trademark names. Hence the court of appeal upheld the order of injunction against the defendant.

Domain Name Protection: Indian Aspect

At present, no specific legislation deals with domain name disputes. However, the country code for top level domain name '.in' is governed by the '.IN' Domain Name Dispute Resolution Policy (INDRP) which is formulated on the principles of the UDNDR policy. A person can also move to the court against the misuse of his trademarks by filing a suit for infringement/ passing-off, if his trademark is registered by a third person in his name as domain name.

The Policies of INDRP are similar to the ICANN's UDRP policies further in the absence of specific legislations; Indian courts have relied on judicial precedents and foreign judgments in deciding various disputes regarding Domain Names in India.

Whether Trade Mark laws are applicable in domain names was answered in the affirmative in Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd.8 It was observed be the Hon'ble Court that since a domain name should necessarily be peculiar and unique it becomes necessary to maintain its exclusive identity. Hence, the Hon'ble Supreme Court held that Trade Mark Law is applicable to domain names, as a domain name falls within the meaning of the term 'services' as defined under Section 2(z) of the Trade Marks Act, 1999. Also, since a domain name could possess all the properties of a Trade Mark, remedies for an action of passing off are also available in respect of domain names.

The courts in various decisions have established that in order to establish passing off of a well known trademark, the conditions in Rule 4(a) in the UDNDR Policy should be fulfilled. In Hindustan petroleum Corporation Ltd

V. Mr Ram Swamy, arbitration proceedings were initiated under the INDR Policy against the impugned domain name 'hindustanpetroleum.co.in'. The second level domain name was similar to that of the respondents with the only difference being the top level domain name. It was held that such registration of domain names would leave well known marks unprotected hence mere difference in top level domain name cannot be used to the benefit of the owner of the impugned domain name.The impugned domain name was held to be confusingly similar to the domain name ' hindustanpetroleum.com' of the complainants and was held to be registered in bad faith.

In Acqua Minerals Ltd v. Promod Borsey and Anr9 the Hon'ble court opined that unless a person is able to establish bonafide intentions for registering a particular name, which has been in use previously for a long duration such that it has gained goodwill, as its domain name, it shall be presumed that the registration of such a name was with the intention to gain from the goodwill of the trade name. The plaintiff in the instant case was successful in obtaining an injunction against the defendant for using the mark BISLERI or BISLERI.COM as the plaintiff was its registered owner.

Also, common English words can be protected under Trade Mark laws if the trademark has acquired a secondary meaning and people only recognize goods and services of the owner from the trademark itself. Thus in General media Communications Inc v. Deepak Daftari10 a complaint to INDRP is filed by the complainant and the impugned domain name 'www. penthouse.in' was held to be confusingly similar to the domain name 'www.penthouse.com'. The contention by the respondent that the word penthouse was generic / common word was set aside by the arbitrator.

More recently in Tata Sons Ltd & Anr v Arno Palmen & Anr11 the Hon'ble High court of Delhi observed that it was a case of cyber squatting as the defendant registered the domain name in bad faith with the objective of selling the impugned domain name to the plaintiff. The Court hence granted an injunction in favour of the plaintiff against using the domain name 'WWW.TATAINFOTECH.IN' as it was held to be deceptively similar to the plaintiff's trademark 'TATA'. Also, the defendant no 2, Key- Systems GmBH was directed to cancel the registration of the impugned domain name in favor of the defendant.

Conclusion

Domain names are such an important tool in the modern business world that it has become the virtual address of an organization.They are secondary to none when its contribution is valued in the balance sheet of an organization in comparison to other assets, and hence, requires all protection in order to take the maximum benefits out of it. Even though there is no specific law which deals with the dispute related to the domain names, but the mechanism provided under INDRP for the settlement of disputes related to the domain names can help in protection of domain name in addition to protection under the common law and law of trademarks.

Footnote

1.Student of Symbiosis Law School and Intern at Singh and Associates.

2. Ananth Padmanabhan, INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT AND REMEDIES 233 (1st ed. 2012) [Hereinafter as INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT AND REMEDIES].

3. Available at http://www.wipo.int/about-ip/en/index. html retrieved on 11/12/2013 at 1:54 IST

4. Section 2 (zb) of the Trade Marks Act, 1999

5. 202 F.3d 489 493 (2d Cir.2000).

6. 2 42 USPQ 2d 1850

7. (1999) FSR 1 (CA)

8. 2002) 6 SCC 145

9.AIR 2001 Del 463

10.INDRP/466 dated 09/05/2013

11.2013(54) PTC 424 ( Del)

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.

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