A domain name as a trademark must be unique from all other well-known trademarks and domain names on the internet so that it does not deceive or mislead customers of other companies or violate morality or public order.

 In a case before the Supreme Court of India, in its judgement, ‘Satyam Infoway Ltd. vs Sifynet Solutions Pvt. Ltd.', the court held as follows – 

“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. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could find an action for passing off.”

Any internet-connected computer can be reached through a public IP address. Computers can handle such addresses easily, but people have a hard time finding out who is running the server or what service the website offers. IP addresses are hard to remember and can change over time. To solve all those problems, we use human-readable addresses called domain names. Domain names are a key part of the internet infrastructure. They provide a humanreadable address for any web server available on the internet.

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. No national or international trademark law is fully capable of protecting a domain name in countries all over 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).

This Uniform Domain Name Dispute Resolution Policy (the Policy) adopted by the ICANN, is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you.

In India, the Trademarks Act, 1999, confers protection to the domain names in the world. Thus, registered domain names can obtain the protection of trademark infringement, and the unregistered domain name can get the protection of passing off under the Act.

There are three elements that are used to determine if someone has engaged in domain name trademark infringement.

  1. If a person or business has prior rights granted in the trademark either through continually using it or having registered it;
  2. Commercial use, meaning that the person or business is actually using the domain name for commercial use; and
  3. The likelihood of confusion.

A domain name is not protected under any law in India however necessary precautions are mandatory to protect one's domain name and the same can be done by taking measures like paying attention to the administrative details; ensuring communications with your domain name registrar; locking the transfer of your domain etc.

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.

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.