Introduction
Businesses around the world have been adopting unique methods to make a mark on the internet. In the universal world of online platforms, the identification of goods becomes a tedious and confusing activity. Thus, to stand out in the crowd, products envisage adopting unique domain names.
Domain names not only act as a way to access products online but also provide unique identification to the same. However, their existence and legal validity have been facing a number of challenges. Their recognition and jurisdiction in the Indian territory is an issue worth discussing.
Domain Name vs Trademark
A domain name is a user-friendly internet protocol address that allows users to access the product and website from any corner of the world. A valid domain name consists of two parts, the Second-Level Domain and the Top-Level Domain. The former is the unique identification of a brand, through a distinctive name, i.e., Google, Amazon, Flipkart, etc. The latter forms the accessibility part of the domain name, through suffixes like.org, in., .gov, etc. A trademark is a special graphical representation of the product. It allows consumers to identify the product and prevent its misuse in the market.
A trademark promotes a brand name while a domain name protects it from unauthorized usage. A trademark identifies a brand while a domain name increases its accessibility. The territorial jurisdiction of trademark and domain name becomes a staunch difference between the two. A trademark is registered within a country, while a domain name is recognized throughout the world without any territorial bar on the same.
Current Position of Law in India
India was quick to adopt and accept the importance of domain names as a valid trademark representation. In the case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., the Supreme Court affirmatively answered the question of legal recognition of internet domains. The Court conferred domain names with equal intellectual property rights. It was held that domain names act as a distinguishing feature for products, and thus, are entitled to be recognized in the eyes of law.
Legal Obstacles
Domain names face a number of hurdles in their successful recognition. The consistent tussle between trademark owners and domain name owners makes it difficult for the courts to decide upon the rights of the parties. Furthermore, a number of international policies and frameworks guide domain names at a global platform. However, none of them are recognized by courts to have a binding effect. The issue of identical trademarks in different jurisdictions colliding with similar domain names in the virtual world continues to be unresolved. Cases of typo-squatting and misusing human mistakes have increased multi-fold in the past decade. The current article discusses two major legal obstacles in the world of domain names: Cybersquatting and Jurisdiction Issues.
Jurisdiction Issues
The mere recognition of domain names does not ensure their protection. Lack of any specific legislation to protect the internet identifiers of brands creates a vacuum of legal resorts. The Trademarks Act, 1999, has no extra-territorial jurisdiction. Thus, domain names find themselves remediless outside the Indian borders. Furthermore, the international statutes guiding domain names and trademarks, do not form a binding effect on Indian courts. Remedies under World Intellectual Property Organisation (WIPO), Internet Corporation for Assigned Names and Numbers (ICANN) and the Uniform Domain Resolution Policy (UNDP) do not apply to the jurisdiction of courts and cannot be included in the principle of res judicata.
The principle was reiterated by the Court in the case of Beiersdorf A.G. vs Ajay Sukhwani, while dealing with the tussle of a renowned trademark of "NIVEA". The Court, while deciding upon the issue, denied the defendant's argument of the issue already being settled by WIPO. The court reasoned that the decisions by international organizations do not form a stand similar to that of the arbitral award, and the same cannot be held to be binding on the parties or on the court. The petition of the plaintiff succeeded, providing him rights over the name and domain. Similarly, in the recovery suit of Citi Corp. vs Todi Investors, the Delhi High court allowed the recovery and the petition, enunciating that IN Dispute Resolution Policy (INDRP), does not exhaust the remedy of the parties.
Cybersquatting
The practice of obtaining domain names just for the purpose of re-selling them later to renowned brands has become a serious problem in the virtual world. The issue is escalated since there is no statutory or legal provision to control the practice. It thus takes a toll on the rights of individuals making the world of the internet susceptible to damage.
The courts have taken note of the malpractice and have tried to resolve the problem through judicial scrutiny. In the case Aqua Minerals Ltd. v. Pramod Borse, the court granted a permanent injunction to the domain name acquired by the defendants. The reasoning offered took into consideration not only the pecuniary damage suffered by the plaintiffs but also the mala fide intention of the defendants to extort money.
UDRP's remedy of cancellation of registration of domain names under bad faith has also been upheld by the courts in the cases of Tata Sons Ltd. v. Mannu Kosuri and Pen Books Pvt. Ltd. v. Padmaraj. Selling, purchasing, and re-selling domain names to make profits are practices condemned by the Courts but have no proper legal remedy in law.
Conclusion
India accepted domain names as an important part of trademark law at the early stages of its advancement. However, it continues to be at a cliff-hanger to provide domain name protection as a statutory protection. Courts have tried to resolve disputes through judicial intervention. But the courts also find themselves remediless with respect to jurisdictional and cybersquatting issues.
It is high time that India recognizes the potential harm associated with domain names. It is necessary for India to define the position of International Policies with respect to their binding nature and enforcement. It is also necessary for the legislature to enact a law that protects trademarks and domain names at an international level. The tussle of multiple jurisdictions needs a global effort to be resolved. Countries need to come together and define a law that protects trademarks in the virtual world and also becomes binding on all the signatory nations.
The Plight Of Domain Names In India
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