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."
According to the case of People Interactive (India) Pvt. Ltd. Vs. VivekPahwa&Ors. domain name is the internet equivalent of a physical or a territorial address. Identical to an address it directs the user to a particular part of the web where a domain name registrant stores and displays his information and also offers his services.
Trademarks can be any mark that can be represented in a graphical form and has the capability of differentiating a person's products and services from that of others and it may include shape of goods, packaging, designs and colour combinations. The owner of the trademark has the exclusive right in connection with his goods in order to distinguish it from his rivals.
Domain Names As Trademarks
To register domain names as trademarks, a domain name should fulfil all the conditions that are required to be registered as trademarks. Therefore, a domain name must be unique, capable of identifying itself, distinguish itself from the products of the competitor and also should act as a reliable source identifier of concerned goods and services in the internet."
#Case: Satyam Infoway Ltd. vs. Siffynet Solutions
In this case the dispute was as to whether domain names can be recognized as trademarks. To which the Supreme Court held that, "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."
Let's take an example of a more recent judgement-
#Case: Rajat Agarwal vs. Spartan Online
In 2017 the Calcutta High Court cited the Satyam case held that, " a domain name is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding Internet location."
The Court continued by arguing that a domain name must be peculiar and unique to the company in order to retain an exclusive identity. Unlike in the Satyam case, however, the court did not prohibit the Defendants from using spartanpoker.com, noting that the Plaintiffs only registered the domain name and did not invest in creating the web page, trade dress, or designing the mark, as well as the costs associated with its registration.
For a domain name to be properly licenced as a trademark, it must be unmistakably distinct from all other domain names and well-known trademarks on the internet, so as not to confuse or deceive consumers of other firms in the same or different fields, or to breach public order or morality. Instances of trademark infringement lawsuits can arise as a result of such situations.
Domain Name Protection in India
At the global level there is only one organization that deals with the registration of domain names as trademarks which is ICANN [Internet Corporation for Assigned Names and Numbers] along with the national and international protection under the directly concerned national trademarks law and diverse International Trademarks Treaties of the world. In India trademark protection is granted under the provision laid down under the Trademark Act, 1999. It specifically provides that a domain name should fulfil all the prerequisites to be properly registered under the act. After the domain name is registered the owner will have all those rights and rights and authorities that are availed by a trademark owner.
The rights consist of the following-
- Sue for Infringement- "Any person who violates a domain name which is registered as a valid trademark under the Trademarks Law will be held liable for infringement under section 29 of the Trademark Act, 1999."
- For Passing Off-"Even if a trademark owner who has not registered his mark is also entitled to protection of his mark given that he is a prior user,his mark has acquired distinctiveness and there is misrepresentation by anyone else with regard to his goods which is likely to deceive the relevant public."
#Case: Bigtree Entertainment v Brain Seed Sportainment
In this case the Delhi High Court in 2018 denied the owners of the website bookmyshow.com the interim injunction against the defendant's use of the website "bookmysports.com". According to the court the words book my of the plaintiff's trademark BOOKMYSHOW was descriptive not an arbitrary and also failed to prove that BOOKMY has acquired distinctiveness or secondary meaning.
#Case: Rediff Communications Ltd. v. Cybertooth& Another
In this case the Bombay High Court granted an injunction restraining the defendants from using the domain name 'Radiff' or any other similar name. it further also held that-
"When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons."
In contrast to a clear recognition of right under the UDNDR Policy, the Indian legal system puts greater importance on domain name protection. The Trademarks Act of 1999 has far-reaching implications, with the potential to have the world's strongest defence for domain names. The current condition necessitates the harmonious implementation of trademark law standards and domain name requirements. It is important to note that once the Supreme Court renders a decision and it reaches finality, it becomes binding on all people and institutions in India.
It cannot be reversed by proving the existence of astatutory provision' to the contrary. This is because no statutory provision can circumvent a "Constitutional provision," and the former must give way to the latter in the event of a dispute. When we consider the Supreme Court's decision in the Satyam case considering the foregoing debate, this settled legal position becomes important. The Supreme Court's numerous landmark decisions have given domain names the world's "strongest defence."
The trademark is mostly used to promote a product and make it available to potential customers. It seeks to communicate the essence of the product and, if possible, the nature of the product, as well as the brand name that has become well-known over time. At this point, other people are often tempted to pass off their products as those of the mark's original owner. As a result, in a passing off action, the plaintiff's right is asserted against the defendant's conduct that leads to, or is planned or calculated to lead to, fraud."
After going through various landmark judgements by Supreme Court and various High Courts it is clear that domain name plays a very vital role in the trade and commercial activity of an organization on the internet. There are various firms which solely work and trade through online platform and protection of their domain names is of paramount importance.
In this research work we had seen that protection is offered by trademark law in various jurisdictions individually but since the domain names transcend geographical boundaries it is essential to create a harmonious international law for the protection of domain names.
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.