Sharad Baijal, Associate IPR Secure

Goodwill is of paramount importance in trade, and if anyone attempts to take undue commercial advantage of the goodwill earned by someone else, the wronged party may bring a legal action against the erring. Domain name is an area where trademarks law has an application precisely for this reason.

What is a Domain Name?

On the Internet each computer has a unique IP Address like 70.87.38.50, which is difficult for the humans to remember. The DNS handles Domain names (like www.ICTpolicy.org) and converts them to IP numbers. DNS allows the users to use memorable alphanumeric names to identify the network services such as the World Wide Web and email servers. It is a system that maps names (e.g., www.ICTPolicy.org ) to a string of four numbers separated by periods called IP addresses (e.g. 70.87.38.50). In the absence of the DNS the user would have to remember the IP Address string instead of the easily memorable Domain names. Domain names are also sometimes called the URL (Universal Resource Locator). DNS consists of root servers, top domain servers and a number of DNS servers located around the world. DNS involves two types of Top Level Domain names. One is the Generic domain names and others are based on country codes.

gTLDs – The Generic Top Level Domain Names include .com (for commercial), .org (for organization), .edu (for colleges and universities) , .gov    ( for government) , .net (for internet infrastructure), .int (for international organizations) , .biz (for business) , .info (for information), .name, .pro, .museum, .aero, .coop and .mobi are some of the new gTLDs that have been introduced.

ccTLDs – The Country Code Top Level Domain names include .au (for Australia); .in (for India); .uk (for United Kingdom); .us (for US), .cn (for China), .ph (for Philippines) ; .sg (for Singapore); .hk (for Hong Kong) etc.

Domain names are assigned on first come first serve basis and the domain name is unique. Domain names can be filed through accredited Registrars or their resellers like IPRSecure or on its website www.iprsecure.in . Since there is no procedure for examination of domain name applications, generic and descriptive names can also be registered as long as they are not identical with an existing Domain name.

Domain Name as a Trademark

A practice has slowly emerged amongst the business people, whereby the Domain name used by him “identifies and distinguishes” the services or goods offered, the source and sponsorship of such services or goods. Thus Domain names are being used in order to qualify as a trademark of the goods and services offered by the business people. Additional promotion such as advertising the Domain name or using the Domain name in a conspicuous manner – using the mark somewhere in the web page - apart from the address was sufficient to show the use of Domain name as Trade Mark. Thus Domain names emerged from being a simple protocol address to identifiers of business on the net and have given themselves the identifying capacity and have to be equated with distinctive signs. Thus, Domain names, lately, are made up of traditional Trade Marks owned by a company. The reason why most of the corporate entities adopt such a practice is that it makes it easier for a prospective customer to remember the Company’s World Wide Web address and log on to the site more quickly and avoid the exercise of search on the net.

If a Domain name that is picked and adopted, is not an existing Trade Mark of the company it may become a Trade Mark only after some use and advertising. Before adopting such name for its domain name, it is advised that the entity give some thought, as the proposed names may become a strength or a weakness as a Trade Mark.

As a result of the above development Domain names have increasingly come into conflict with Trade Marks, more particularly because of the lack of connection between the system of registering Domain names on one hand and the system of registering the Trade Marks on the other. The emergence of the dual function of a Domain name has challenged the conceptual base of intellectual property, especially the Trade Marks. The position has been exploited by persons or entrepreneurs in the form of cyber squatting or cyber trafficking – who have made it a practice to register a variety of Trade Marks and trade names as Internet Domain Names and for a resale to the Trade Mark owner at a “fair” price. While courts throughout the world have held these practices to be unlawful, and have issued injunctions against “cyber squatting” the problem is still acute in countries where litigation takes a very long time and/ or where the costs of litigation are exorbitant.

In India, till recently not much importance was given to the Domain name in relation to it being identified with the Trade Mark of the Company, though recently there have been some healthy developments in this field and Companies are actively protecting their Trade Marks and recovering the Domain names squatted by others through court procedures or the ADR procedures of the WIPO (World Intellectual Property Organization) under its Uniform Dispute Resolution Policy (UDRP). Similar ADR exists for the ccTLDs at the country level such as the .IN Dispute Resolution Policy.

The decision of the Indian Courts, holding that the “Internet Domain Names are entitled to be protected as Trade Mark” is a shot in the arm for the genuine entrepreneur who is on the internet and also those who propose to be on the internet. In this respect the famous case of Delhi High Court - Yahoo Inc. v. Akash Arora and another and that of the Bombay High Court – Rediff Communications Ltd  v. Cyberbooth and another are the most referred ones. The Courts have in the above cases held that Internet Domain Names are entitled to be protected as Trade Mark. The Court held “Internet Domain Names are of importance and can be valuable corporate asset. A Domain name is more than an Internet Address and is entitled to equal protection as Trade Mark. With the advancement and progress in technology, the services rendered on the sites have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the service rendered by others as his service.”

In Rediff  v. Cyberbooth referring to the law relating to passing-off as contemplated under the Trade and Merchandise Act, 1958 (43 of 1958), the Hon’ble Judge of the Bombay High Court has held that:

“The main bone of contention between the parties before me is whether the defendants by adopting the domain name “RADIFF” which is deceptively similar to the plaintiff mark/domain name “REDIFF” have been passing-off their services and goods as that of the Plaintiffs. To that end it would be appropriate to recapitulate some well established principles. The law relating to passing off is fairly well settled. The principle underlying the action is that no one is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried on by another man”.

In the light of the above decision Domain names can now function as Trade Mark and thus establish proprietary rights. Through this Judgment, the nexus between Trade Mark and Internet Domain name has been defined, thus enabling the Domain names to be protected as Trade Marks.

It is therefore, advised that every entrepreneur who wishes to retain his true global presence on the internet and who wishes to conduct a secure and profitable e-business on the internet should have, “his” Domain name as Trade Mark with the Registrar of Trade Marks and be proactive against Trade Mark and Domain Name piracy.