India: Protection Of Domain Name As A Trademark

Last Updated: 14 July 2014
Article by Hemant Goyal and Mohit Porwal

The Internet Domain Names have now become much more than mere representing the websites of different companies on the Internet. Today, in this age of well-developed information technology and worldwide businesses through Internet, these domain names have attained the status of being business identifiers and promoters. Since the commercial activities on the Internet are to go on increasing day by day, the importance and usefulness of domain names too, are to be enhanced for the purposes of greater publicity, popularity, and profitability of businesses in all economic sectors. According to Bill Gates, the founder of Microsoft, "Domains have and will continue to go up in value faster than any other commodity ever known to man". Broadly, the functions of domain names are now quite similar to the functions of a trademark or service mark, for these purposes. Ours this very informative web-article offers rich and hugely beneficial and securing information regarding the registration and protection of the domain names as trademarks, with a view to help and serve people, companies, and professions pertaining to diverse occupational and economic fields.

Functions of A Domain Name and A Trademark

A Domain Name is a quite user-friendly form of an Internet Protocol (IP) address; the technical IP address of this being invisible to the viewers. Addresses to the Internet Web Servers are assigned and managed through the Domain Name System (DNS), the globally distributed internet database administered by ICANN. An example of a domain name is "inta.org". The name portion of a domain name [here, inta] is called as the Second-Level Name, and this unique and scintillating name is to be created or selected by the domain name applicant. The end portion of a domain name [here, .org] is termed as the Top-Level Domain (TLD); and is further classified into the categories of the Generic Top-Level Domains (gTLDs) and the Country-Code Top-Level Domains (ccTLDs). Some of the most common and popular categories of the top-level domains are .com; .org; .gov; .net; .in; etc.

Generally, a domain name performs the same functions online, which a trademark serves in the offline business dealings and transactions. While the trademark is striking graphic signifier of your product or company, the domain name is magnificent navigator to your company on the internet, and the virtual image of your business. Duly registered and protected trademark and domain name can offer the following main benefits: ---

  • A trademark or service mark promotes and protects your brand name, while a registered and protected domain name provides you protection against any unauthorized use of your domain name by any person or entity.
  • Trademark supports the face value of your business or profession, while a domain name increases access value of your business from any remote place of the world over.
  • A trademark (or service mark) makes your any product (or service) prominent in the concerned marketplace, while a domain name can also function to deliver your product or service to your customers worldwide.

Thus, a well-protected domain name is certainly immensely helpful for security, worldwide prominence, and profitability of a business, quite like an internationally protected trademark or service mark. Hence, proper registration and protection of both the trademark and domain name are advisable and imperative.

Can Internet Domain Names be Registered and Protected As Trademarks or Service Marks?

Yes, domain names can also be registered and protected as trademarks or service marks at the national and international levels, provided that the domain names do satisfy all conditions to be duly registered and protected like the trademark and service marks.

Any unique internet domain 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 or 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 and service marks. Again, for proper registration of a domain name as a trademark or service mark, this must be unambiguously unique from all other domains names and well-known trademarks on the internet, so that it does not mislead, confuse, or deceive customers of other companies engaged in the same or different fields, or violate public order or morality. Such cases may give rise to instances of trademark infringement litigation. Exclusive information about registration and protection of domain names as trademarks in India and abroad is provided in the sections below.

In this connection, the following judgment of the Honorable Supreme Courts of India is worth mentioning, which was extended in the case of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd. [Where the matter for consideration before this Apex Court of India was whether Internet Domain Names are recognizable as other Intellectual Properties such as Trademarks]: --- "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."

Trademark Protection Vs. Domain Name Protection

Trademarks or service marks 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:

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

Today, 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.

Protection of Domain Names in India

The protection of domain names in India has been deeply felt and approved by the law courts of the country, like the protection enjoyed by the trademarks or service marks; provided that the proposed domain name fulfils all requirements to be properly registered under the Indian trademark law. Any person or business or professional entity may obtain protection to his/her/its newly created domain name in entire India under the Trade Marks Act of 1999 and the Trade Marks Rules of 2002, and all amendments made in these so far. For the purpose of worldwide protection of registered domain names, the concerned people or entity has to follow the above-mentioned system or procedure. Here, it may be reiterated that a well-protected domain name will offer to the registrant all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. The rights to take rigorous and drastic actions against any infringement cases connected with the registered and protected domain name within the Indian jurisdictions, are essentially covered by these rights granted to the registrant of domain name by any regional Trademarks Office of India.

In this connection, the opinion and judgment of the law courts of India, essentially including the Apex Court, are expressed explicitly during the handling of many domain-name related law cases, particularly the cases of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd; and the Tata Sons Ltd. Vs Manukosuri and Others.

Conclusion

Through reading the above article, it is quite clear that importance of internet domain names has now increased manifold, both in connection with internet communication and business & commerce on the internet. As the internet is fast becoming an immensely popular and highly preferred platform for accelerated flow of business related information of all types, by people and entities in all economic fields, there is an imperative need for getting proper protection to the unique domain names, like trademarks and service marks. This increasingly desirable protection to the internet domain names as trademarks, is now quite achievable under the auspices of the ICANN and the WIPO. However, for the best possible, efficient, and rigorous protection of domain names at the level global, close harmonization of the trademark laws of individual countries worldwide, is also highly desirable.

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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